Ex Parte Bickel et al

Patent Trial and Appeal Board

Sep 7, 2018

14476269 (P.T.A.B. Sep. 7, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/476,269 09/03/2014
63649 7590 09/11/2018
DISNEY ENTERPRISES, INC.
C/0 FARJAMI & FARJAMI LLP
26522 LA ALAMEDA A VENUE, SUITE 360
MISSION VIEJO, CA 92691
FIRST NAMED INVENTOR
Bernd Bickel
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www .uspto.gov
ATTORNEY DOCKET NO. CONFIRMATION NO.
0260393 4547
EXAMINER
FERNSTROM, KURT
ART UNIT PAPER NUMBER
3711
NOTIFICATION DATE DELIVERY MODE
09/11/2018 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
docketing@farj ami. com
farjamidocketing@yahoo.com
ffarj ami @farj ami. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte BERND BICKEL, GA URA V BHARAJ,
BERNHARD THOMASZEWSKI, and STELIAN COROS
Appeal2017-009436
Application 14/476,269 1
Technology Center 3700
Before MICHAEL L. HOELTER, MICHELLE R. OSINSKI, and
JEREMY M. PLENZLER, Administrative Patent Judges.
PLENZLER, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant seeks our review under 35 U.S.C. § 134 of the Examiner's
Final Decision rejecting claims 1-7, 9-17, and 19-22 under 35 U.S.C. § 101
and claims 21 and 22 under 35 U.S.C. § l 12(a). We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM.
1 Appellant is the Applicant, Disney Enterprises, Inc., a wholly owned
subsidiary of The Walt Disney Company, identified by the Appeal Brief as
the real party in interest. Appeal Br. 2.
Appeal2017-009436
Application 14/476,269
CLAIMED SUBJECT MATTER
Claims 1 and 11 are independent, with claims 2-7, 9, 10, 12-17, and
19-22 depending from claim 1 or 11. Claim 1 is representative of the claims
on appeal, and is reproduced below:
1. A system comprising:
a memory storing a software application; and
a processor configured to execute the software application to:
receive a character design from a user, the character design
having walking mechanisms including one or more of
mechanical assemblies, gears, linkages and geometric shapes
that are connectable to build a walking machine;
determine optimal design parameters for the walking
mechanisms based on the character design;
alter one or more of the walking mechanisms of the
character design based on the optimal design parameters for use
by the walking machine to walk in a stable manner; and
generate instructions for a machine to build the one or
more altered walking mechanisms of the walking machine.
OPINION
Enablement
The Examiner rejects claims 21 and 22, which depend from claims 1
and 11, respectively, under 35 U.S.C. § 112(a) for failure to comply with the
enablement requirement. Claim 21 recites that "[ t ]he system of claim 1
further compris[ es] the machine [ to build the one or more altered walking
mechanisms of the walking machine], wherein the machine is configured to:
receive the instructions; and build the one or more altered walking
mechanisms of the walking machine." Claim 22 is similar to claim 21,
reciting that "[ t ]he method of claim 11 further compris[ es]: receiving, by the
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Application 14/476,269
machine [to build the one or more altered walking mechanisms of the
walking machine], the instructions; and building, by the machine, the one or
more altered walking mechanisms of the walking machine." That is, claims
21 and 22 add a machine that builds another machine based on instructions,
at the most basic and broadest level possible.
We agree with Appellant that a machine that builds another machine
based on instructions ( at the basic level of detail recited in the claims) is
well-known in the art. See Appeal Br. 6-7. Accordingly, we agree that the
Examiner erred in the rejection of those claims based on lack of enablement
under 35 U.S.C. § 112(a).
Patent Eligibility
Appellant argues claims 1-7, 9-17, and 19-22 as a group. 2 Appeal
Br. 7-15. We select claim 1 as representative. Claims 2-7, 9-17, and 19-22
stand or fall with claim 1. See 37 C.F.R. 4I.37(c)(l)(iv).
Under 35 U.S.C. § 101, we must first identify whether an invention
fits within one of the four statutorily provided categories of patent-
eligibility: "processes, machines, manufactures, and compositions of
matter." Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 713-714 (Fed. Cir.
2014). Here, claim 1 falls within one of those categories. Section 101,
however, "contains an important implicit exception [to subject matter
eligibility]: Laws of nature, natural phenomena, and abstract ideas are not
2 In its arguments, Appellant recites the limitations of claims 21 and 22
(Appeal Br. 15), which does not amount to separate argument for those
claims. See 37 C.F.R. 4I.37(c)(l)(iv) ("A statement which merely points
out what a claim recites will not be considered an argument for separate
patentability of the claim."). Nevertheless, we note, as explained in our
discussion of the enablement rejection, those claims simply add features that
Appellant acknowledges were well-known, routine, and conventional.
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Application 14/476,269
patentable." Alice Corp. Pty. Ltd. v. CLS Bankint'l., 134 S. Ct. 2347, 2354
(2014) ( citing Assoc. for Molecular Pathology v. Myriad Genetics, Inc., 133
S. Ct. 2107, 2116 (2013) (internal quotation marks and brackets omitted)).
In Alice, the Supreme Court reiterated the framework set forth previously in
Mayo Collaborative Servs. v. Prometheus Labs, 132 S. Ct. 1289, 1293
(2012) "for distinguishing patents that claim laws of nature, natural
phenomena, and abstract ideas from those that claim patent-eligible
applications of these concepts." Alice, 134 S. Ct. at 2355. We first
"determine whether the claims at issue are directed to one of those patent-
ineligible concepts." Id. If so, we "consider the elements of each claim both
individually and 'as an ordered combination' to determine whether the
additional elements 'transform the nature of the claim' into a patent-eligible
application." Id. (quoting Mayo, 132 S. Ct. at 1298, 1297).
The Examiner characterizes claim 1 as "directed to a system and
method for altering walking mechanisms of a character" and determines that
"[ e Jach of these steps amounts to mental activity," which is an abstract idea.
Final Act. 4. We agree. See CyberSource Corp. v. Retail Decisions, Inc.,
654 F.3d 1366, 1372-73 (Fed. Cir. 2011) ("[U]npatentable mental
processes" include "steps [that] can be performed in the human mind, or by
a human using a pen and paper."). Appellant does not dispute this
understanding of the claim, and there is no dispute as to any underlying fact
findings. Rather, Appellant argues that claim 1 is somehow similar to those
found to be patent-eligible by the Federal Circuit in Enfzsh, LLC v. Microsoft
Corp., 822 F.3d 1327 (Fed. Cir. 2016). Appeal Br. 8-11.
To be clear, claim 1 is nothing like those at issue in Enfzsh. In Enfish,
the claim at issue was directed to a data storage and retrieval system for a
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computer memory. E'nfish, 822 F.3d at 1336----37. The court noted that
"[ s ]oftware can make non-abstract improvements to computer technology
just as hardware improvements can[.]" Enfish, 822 F.3d at 1335. The court
put the question as being "whether the focus of the claims is on [a] specific
asserted improvement in computer capabilities ... or, instead, on a process
that qualifies as an 'abstract idea' for which computers are invoked merely
as a tool." Id. at 1335-36. In Enfzsh, the court found that the "plain focus of
the claims" was on "an improvement to computer functionality itself, not on
economic or other tasks for which a computer is used in its ordinary
capacity." Id. at 1336.
Here, claim 1 is effectively drawn to an idea, itself. There is no detail,
whatsoever, as to how the character design is optimized, just that "walking
mechanisms of the character design [ are altered] based on the optimal design
parameters for use by the walking machine to walk in a stable manner," in
some unspecified way, with instructions also generated in some unspecified
manner for another unspecified machine to build the walking mechanisms.
Claim 1 involves no improvement to the computer itself. Appellant admits
as much, noting that rather than an improvement to the computer, itself,
"claim 1 is aimed at improving another technology area by generating
instructions for a machine to build walking mechanisms." Appeal Br. 10.
We also agree with the Examiner that there is nothing further in the
claim that transforms the nature of the claim into a patent-eligible
application of the abstract idea. See Final Act. 5 ("The claims ... requir[ e]
no more than ... generic computer components to perform generic computer
functions that are well-understood, routine and conventional activities
previously known to the industry."). Again, we note that there is no dispute
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that the steps in claim 1 can be performed in the human mind, or by a human
using a pen and paper. Appellant alleges that "claim 1 goes beyond the mere
concept of simply receiving and optimizing parameters" because it
"combines various steps to generate instructions for a machine to build one
or more altered walking mechanisms of the walking machine, such that the
walking machine can walk in a stable manner." Appeal Br. 13; see also id.
at 15 ("claim 1 recites a specific algorithm that generates instructions for a
machine to build the one or more altered walking mechanisms of the
walking machine.").
Because the claim lacks any specificity, Appellant has not persuaded
us that claim 1 is directed to anything more than "a process that qualifies as
an 'abstract idea' for which computers are invoked merely as tool." Enfzsh,
822 F.3d at 1336. Appellant identifies nothing that transforms the nature of
claim 1 into a patent-eligible application of the abstract idea. For at least
these reasons, we are not apprised of Examiner error in the rejection of
claims 1-7, 9-17, and 19-22 under 35 U.S.C. § 101.
DECISION
We REVERSE the Examiner's decision to reject claims 21 and 22
under 35 U.S.C. § 112(a).
We AFFIRM the Examiner's decision to reject claims 1-7, 9-17, and
19-22 under 35 U.S.C. § 101.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED
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