Ex Parte Bovard et al

Patent Trial and Appeal Board

Aug 29, 2018

13743809 (P.T.A.B. Aug. 29, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/743,809 01/17/2013
26875 7590 08/31/2018
WOOD, HERRON & EV ANS, LLP
2700 CAREW TOWER
441 VINE STREET
CINCINNATI, OH 45202
UNITED ST A TES OF AMERICA
FIRST NAMED INVENTOR
Christopher C. Bovard
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.
HILB-877US 9116
EXAMINER
GARG, YOGESH C
ART UNIT PAPER NUMBER
3625
NOTIFICATION DATE DELIVERY MODE
08/31/2018 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):
usptodock@whe-law.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte CHRISTOPHER C. BOVARD, PAUL HOLZMAN,
DANIEL G. MEISER, ILIJA ROJDEV, and
CHRISTOPHER M. WESSEL
Appeal2017-004194
Application 13/743,809
Technology Center 3600
Before JAMES R. HUGHES, ERIC S. FRAHM, and
MATTHEW J. McNEILL, Administrative Patent Judges.
FRAHM, Administrative Patent Judge.
DECISION ON APPEAL
Appeal2017-004194
Application 13/743,809
STATEMENT OF THE CASE
Introduction
Appellants 1 appeal under 35 U.S.C. § 134(a) from a rejection of
claims 1-20. Claims 21-36 were withdrawn in response to a restriction
requirement. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
Exemplary Claim
Appellants' disclosed invention relates to merchandising and
personalizing caskets at the point of purchase. Spec. ,r 2. Claim 1,
reproduced below, is illustrative of the claimed subject matter:
1. A method of merchandising caskets by a casket seller at
the point of purchase of a casket purchaser comprising:
displaying a plurality of untrimmed caskets from which
the purchaser may select, each casket of the plurality of caskets
being of a different material, color, or design,
displaying a plurality of packaged casket interior trim
component sets from which the purchaser may select, each set of
the plurality of sets containing trim components being of a
different material, color, or design, and
installing the casket interior trim components of the
purchaser selected set into the purchaser selected casket.
The Examiner's Rejections
Claims 1-20 stand rejected under 35 U.S.C. § 101 as being directed to
patent-ineligible subject matter.
1 According to Appellants, the real party in interest is Batesville Services,
Inc. App. Br. 4.
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Claims 1-20 stand rejected under 35 U.S.C. § I03(a) as being
unpatentable over Riga (US 7,107,222 B 1, issued Sept. 12, 2006), Calhoun
et al. (US 6,742,231 Bl, issued June 1, 2004), and Official Notice.
ANALYSIS
Patent-Ineligible Subject Matter
Under 35 U.S.C. § 101, a patent may be obtained for "any new and
useful process, machine, manufacture, or composition of matter, or any new
and useful improvement thereof." The Supreme Court has "long held that
this provision contains an important implicit exception: Laws of nature,
natural phenomena, and abstract ideas are not patentable." Alice Corp. Pty.
Ltd. v. CLS Bankint'l, 134 S. Ct. 2347, 2354 (2014) (quotingAss'nfor
Molecular Pathology v. Myriad Genetics, Inc., 569 U.S. 576, 589 (2013)).
The Supreme Court, in Alice, reiterated the two-step framework
previously set forth in Mayo Collaborative Services v. Prometheus
Laboratories, Inc., 566 U.S. 66 (2012), "for distinguishing patents that claim
laws of nature, natural phenomena, and abstract ideas from those that claim
patent-eligible applications of those concepts." Alice, 134 S.Ct. at 2355.
Assuming that a claim nominally falls within one of the statutory categories
of machine, manufacture, process, or composition of matter, the first step in
the analysis is to "determine whether the claims at issue are directed to one
of those patent-ineligible concepts." Id. For example, abstract ideas
include, but are not limited to, fundamental economic practices, methods of
organizing human activities, an idea of itself, and mathematical formulas or
relationships. Id. at 23 55-57. If the claim is directed to a judicial exception,
such as an abstract idea, the second step is to determine whether additional
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elements in the claim "'transform the nature of the claim' into a patent-
eligible application." Id. at 2355 (quoting Mayo, 566 U.S. at 78). This
second step is described as "a search for an "'inventive concept"'-i.e., an
element or combination of elements that is ' ... significantly more than ...
the [ineligible concept] itself."' Id. at 23 55 ( alteration in original) ( quoting
Mayo, 566 U.S. at 72-73).
Appellants contend the method of independent claim 1 cannot be
performed in the human mind, and further contend the method is not patent
ineligible simply because it can be performed manually. See App. Br. 10-
11. According to Appellants, "whether or not the steps 'can be perceived
mentally' is of no moment-the claims call for the steps to actually be
performed'' because a "selected untrimmed casket is physically transformed
by installing the casket interior trim components," and Appellants are "not
required to recite 'computers' or 'tools' to satisfy 35 U.S.C. 101." Reply Br.
4--5. We are not persuaded by Appellants' arguments.
Neither question of whether a claimed method includes mental
processes or includes manual steps is alone dispositive of patent eligibility.
Rather, the two step inquiry for determining patent eligibility, as stated
above, asks whether a claim is directed to a patent-ineligible concept----e.g.
an abstract idea-and if so, whether the claim includes an inventive concept
that is significantly more than the patent-ineligible concept itself. See Alice,
134 S.Ct. at 2355. Here, the Examiner finds claim 1 is directed to the
abstract idea of merchandising caskets at the point of purchase. See Final
Act. 8; Ans. 3--4. Appellants have not specifically and persuasively argued
the Examiner erred in identifying the abstract idea embodied by claim 1.
Accordingly, even if we agreed with Appellants that claim 1 does not
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embody a solely mental process (see App. Br. 10), Appellants have not
shown the Examiner erred in finding claim 1 is directed to the idea of
merchandising caskets, and that merchandising caskets is an abstract idea.
Further, the Examiner finds claim 1 does not include significantly
more than the abstract idea itself. See Final Act. 9; Ans. 4--5. We agree
with the Examiner because claim 1 does not recite any particular way of
displaying caskets or trim components, or installing trim components in
caskets, let alone recite ways of displaying or installing that are
representative of an inventive concept. Even if we were to interpret claim 1
as being limited to manual display and installation steps, Appellants'
argument that manual steps do not preclude patent eligibility (see App. Br.
10-11) is unavailing. That is, while the existence of manual steps does not
foreclose patent eligibility, it does not guarantee it either. See, e.g., In re
Smith, 815 F.3d 816, 819 (Fed. Cir. 2016) (holding that "shuffling and
dealing a standard deck of cards" did not "bring the claims within patent-
eligible territory"); In re Brown, 645 Fed.Appx. 1014, 1017 (Fed. Cir. 2016)
(non-precedential) ("We hold that step ( e ), using scissors to cut hair, is
insignificant post-solution activity."). In this case, Appellants have not
identified any manual steps that provide significantly more than the abstract
idea of merchandising caskets, namely, because no manual steps are
specifically recited in claim 1 in such a way as to define an inventive
concept.
Appellants present similar arguments for independent claim 11. See
App. Br. 11-12. We are not persuaded by these arguments for similar
reasons to those discussed above regarding independent claim 1. In
particular, we disagree with Appellants' characterization of claim 11 as
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"physically manipulating tangible objects to accomplish stated utilitarian
goals." (App. Br. 12). The claim 11 steps of "selecting a casket" and
"selecting a packaged casket interior trim component set" can be purely
mental processes, such as making mental notes, and the step of "directing
that the casket interior trim components ... be installed" encompasses
making a verbal command. In other words, nothing in claim 11 requires any
physical steps be taken aside from human thought and speech.
Accordingly, we are not persuaded the Examiner erred in rejecting
claims 1-20 as being directed to patent-ineligible subject matter.
Obviousness
Claims 1, 2, 11, and 12
Regarding independent claim 1, Appellants contend "[ n Jone of the
specific method steps recited in claim 1 is remotely taught or suggested by
Riga," "Calhoun clearly supplies none of the deficiencies of Riga," and the
Examiner's reliance on Official Notice similarly "supplies none of the
deficiencies of Riga and Calhoun." App. Br. 14. Appellants also contend
there is no apparent reason to combine the references other than improper
hindsight. App. Br. 15. We are not persuaded by Appellants' arguments.
Appellants have not specifically explained why any particular claim
limitations are missing from the Examiner's cited references. Rather,
Appellants summarize the claim limitations and broadly assert that "Riga
teaches nothing more than the prior art old way of merchandising caskets,
including displaying various caskets, interior trims, and exterior ornaments,"
and that the other references fail to cure the deficiencies of Riga. App. Br.
14. Absent a specific explanation of the shortcomings of the references vis-
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a-vis claim 1, we find Appellants fail to show error in the Examiner's
findings.
Further, Appellants have not addressed the Examiner's reasons for
combining Riga, Calhoun, and the well-known elements for which the
Examiner relied upon Official Notice. The Examiner concludes one would
have combined Calhoun's teaching of installing trim components in a casket
with Riga to "give a personalized/customized look and feel to the casket as
per the purchaser's requirements." Final Act. 11; Ans. 9. The Examine
further concludes one would have combined the Officially Noticed elements
of packaged component sets with Riga and Calhoun "so that the purchaser
can see and decide which one to select to personalize the casket." Ans. 9.
Appellants' arguments fail to specifically explain any shortcomings with the
Examiner's stated reasons supporting the proposed combination.
Regarding independent claim 11, Appellants present similar
arguments as presented for independent claim 1. See App. Br. 16-17. We
are not persuaded by these arguments for the same reasons discussed above.
Regarding claims 2 and 12, Appellants contend "[n]othing in the cited
combination teaches or suggests casket interior trim component sets
packaged in a container that is at least in part transparent to permit the
purchaser to view the trim components through the container." App. Br. 18.
However, the Examiner has relied on Official Notice for the transparent
packaging feature, in particular citing Bisbal et al. (US 2005/0045499 Al,
published Mar. 3, 2005) and Alldredge-Howard et al. (US 2007 /0065049
Al, published Mar. 22, 2007). Appellants do not specifically explain the
shortcomings of the Examiner's reliance on Official Notice, as supported by
Bisbal and Alldredge-Howard.
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We are, therefore not persuaded the Examiner erred in rejecting
claims 1, 2, 11, and 12 as obvious over Riga, Calhoun, and Official Notice.
Claims 3-10 and 13-20
Appellants contend the Examiner has failed to make a prima facie
case of obviousness regarding the limitations recited in each of claims 3-10
and 13-20. App. Br. 18-10. The Examiner responds by finding the
limitations are non-functional descriptive material, and are thus not due any
patentable weight. Ans. 11-13. In the Reply Brief, Appellants argue the
Examiner must give patentable weight to all limitations in claims 3-10 and
13-20. Reply Br. 5---6.
We find that the limitations in claims 3-10 and 13-20 do not recite
non-functional descriptive material. Rather, each of the limitations at
issue----e.g., "a mattress cover, a pillow cover, a big body, a small body, and
an overthrow," as recited in claim 3-recite distinct objects to be installed in
a casket, not merely labels or information. Cf King Pharmaceuticals, Inc. v.
Eon Labs, Inc., 616 F.3d 1267, 1278 (Fed. Cir. 2010) (holding that an
otherwise anticipated method claim does become patentable by including "a
step of 'informing' someone about the existence of an inherent property of
that method"). Accordingly, each of the limitations in claims 3-10 and 13-
20 must be given patentable weight. However, the Examiner has not made
specific findings showing where each of the limitations of claims 3-10 and
13-20 can be found in the cited references.
We are, therefore, constrained by the record to find the Examiner
erred in rejecting claims 3-10 and 13-20 as obvious.
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CONCLUSIONS
Under 35 U.S.C. § 101, the Examiner did not err in rejecting claims
1-20 as being directed to patent-ineligible subject matter.
Under 35 U.S.C. § 103(a), the Examiner did not err in rejecting claims
1, 2, 11, and 12, but did err in rejecting claims 3-10 and 13-20.
DECISION
We affirm the Examiner's decision to reject claims 1-20. See 37
C.F.R. § 4I.50(a)(l) ("The affirmance of the rejection of a claim on any of
the grounds specified constitutes a general affirmance of the decision of the
examiner on that claim, except as to any ground specifically reversed.").
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 41.50(±).
AFFIRMED
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