Ex Parte Goodwin et al

Patent Trials and Appeals Board

May 2, 2019

14041707 - (D) (P.T.A.B. May. 2, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/041,707 09/30/2013
90487 7590 05/02/2019
Amer Sports Americas
1 Prudential Plaza
130 East Randolph Street, Suite 600
Chicago, IL 60601
FIRST NAMED INVENTOR
Ty B. Goodwin
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.
WTD-01510-US-NP 6034
EXAMINER
DUNHAM, JASON B
ART UNIT PAPER NUMBER
3684
MAIL DATE DELIVERY MODE
05/02/2019 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte TY B. GOODWIN, JEFFREY A. FLOOD,
and MARK A. FRITZKE
Appeal 2017-010611 1
Application 14/041,7072
Technology Center 3600
Before BRUCE T. WIEDER, AMEE A. SHAH, and
MATTHEWS. MEYERS, Administrative Patent Judges.
MEYERS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from a rejection of claims
1-5, 7-14, and 16-20. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 Our Decision references Appellants' Appeal Brief ("Appeal Br.," filed
April 6, 2017) and Reply Brief ("Reply Br.," filed August 10, 2017), and the
Examiner's Answer ("Ans.," mailed June 12, 2017) and Final Office Action
("Final Act.," mailed November 14, 2016).
2 Appellants identify Wilson Sporting Goods Co. as the real party in
interest. Appeal Br. 3.
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Application 14/041,707
CLAIMED INVENTION
Appellants' claims relate to a system and method of customizing a
baseball or softball bat (Spec. ,r,r 2-3).
Claims 1 and 11 are the independent claims on appeal. Claim 1,
reproduced below with bracketed notations added, is illustrative of the
claimed subject matter:
1. A method of producing a customizable ball bat using an
electronic device having a processor, a display operably
coupled to the processor, an input mechanism, and a memory
operably coupled to the processor, the method comprising:
[a] presenting to the user on the display of the electronic
device representations of a plurality of handle portions of the
ball bat, the plurality of handle portions varying from one
another according to at least one handle portion characteristic;
[b] receiving user input through the input mechanism
selecting the one of the plurality of handle portions;
[ c] presenting to the user on the display of the electronic
device representations of a plurality of barrel portions of the
ball bat, each of the barrel portions having an outer diameter
and a length, the plurality of barrel portions varying from one
another according to at least one barrel portion ornamental
characteristic and at least one functional characteristic;
[ d] receiving user input through the input mechanism
selecting the one of the plurality of barrel portions including the
selection of at least one ornamental characteristic and the
selection of at least one functional characteristic;
[ e] presenting to the user on the display of the electronic
device representations of a plurality of elements, the elements
configured to fixedly engage to the handle portion and to
fixedly engage to the barrel portion, the element separating the
handle portion from the barrel portion and including an inner
tubular wall for engaging the handle portion and a frusto-
conical shaped barrel engaging region for engaging the barrel
portion, the plurality of elements varying from one another
according to at least one ornamental element characteristic and
at least one functional element characteristic;
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[ fJ receiving user input through the input mechanism
selecting the one of the plurality of elements including the
selection of at least one ornamental characteristic and the
selection of at least one functional characteristic;
[g] presenting a representation of the ball bat in an
assembled state on the display with the selected handle portion,
barrel portion and element included in the representation;
[h] receiving user input through the input mechanism
confirming the selection of the handle portion, the barrel
portion and the element; and
[i] producing the customized ball bat with a handle
portion including the selected handle portion characteristic, a
barrel portion including the selected barrel portion
characteristics, and an element including the selected element
characteristics, the barrel portion at least partially overlapping
the element and the element at least partially overlapping the
handle portion.
REJECTION
Claims 1-5, 7-14, and 16-20 are rejected under 35 U.S.C. § 101 as
directed to a judicial exception without significantly more.
ANALYSIS
Patent-Ineligible Subject Matter
Appellants argue claims 1-5, 7-14, and 16-20 as a group (Appeal
Br. 8-11; Reply Br. 1--4). We select independent claim 1 as representative.
The remaining claims stand or fall with claim 1. See 37 C.F.R.
§ 4I.37(c)(l)(iv).
Under 35 U.S.C. § 101, an invention is patent-eligible if it claims a
"new and useful process, machine, manufacture, or composition of matter."
35 U.S.C. § 101. Yet, subject matter belonging to any of the statutory
categories may, nevertheless, be ineligible for patenting. The Supreme
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Court has interpreted § 101 to exclude laws of nature, natural phenomena,
and abstract ideas, because they are regarded as the basic tools of scientific
and technological work, such that including them within the domain of
patent protection would risk inhibiting future innovation premised upon
them. Ass 'nfor Molecular Pathology v. Myriad Genetics, Inc., 569 U.S.
576, 589 (2013).
Of course, "[a]t some level, 'all inventions ... embody, use, reflect,
rest upon, or apply'" these basic tools of scientific and technological work.
Alice Corp. v. CLS Bank Int 'l, 573 U.S. 208, 217 (2014) (internal citation
omitted). Accordingly, evaluating ineligible subject matter, under this
judicial exclusion, involves a two-step framework for "distinguish[ing]
between patents that claim the buildin[g] block[ s] of human ingenuity and
those that integrate the building blocks into something more, thereby
transform[ing] them into a patent-eligible invention." Id. (internal quotation
marks and citation omitted). The first step determines whether the claim is
directed to judicially excluded subject matter (such as a so-called "abstract
idea"); the second step determines whether there are any "additional
elements" recited in the claim that ( either individually or as an "ordered
combination") amount to "significantly more" than the identified judicially
excepted subject matter itself. Id. at 217-18.
The USPTO recently published revised guidance on the application of
§ 101, in accordance withjudicial precedent. USPTO, 2019 Revised Patent
Subject Matter Eligibility Guidance, 84 Fed. Reg. 50, 57 (Jan. 7, 2019)
("2019 Revised Guidance"). Under the 2019 Revised Guidance, a claim is
"directed to" an abstract idea, only if the claim recites any of (1)
mathematical concepts, (2) certain methods of organizing human activity,
and (3) mental processes -without integrating such abstract idea into a
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"practical application," i.e., without "apply[ing], rely[ing] on, or us[ing] the
judicial exception in a manner that imposes a meaningful limit on the
judicial exception, such that the claim is more than a drafting effort designed
to monopolize the judicial exception." Id. at 53-55. A claim so "directed
to" an abstract idea constitutes ineligible subject matter, unless it recites an
additional element ( or combination of elements) amounting to significantly
more than the abstract idea. Id. at 56.
With regard to the first step of the Alice framework, the Examiner
determines that independent claim 1 is directed towards "the abstract idea of
customizing a ball bat" (Final Act. 3; Ans. 6). More particularly, the
Examiner states that exemplary independent claim 1
recites, in part, a method for customizing a ball bat comprising:
( 1) presenting to the user representations of a plurality of handle
portions of the ball bat, (2) receiving user input selecting the one
of the plurality of handle portions, (3) presenting to the user
representations of a plurality of barrel portions of the ball bat, ( 4)
receiving user input selecting the one of the plurality of barrel
portions, ( 5) presenting to the user representations of a plurality
of elements, ( 6) receiving user input selecting the one of the
plurality of elements, (7) presenting a representation of the ball
bat in an assembled state (8) receiving user input confirming the
selection and (9) producing the customized ball bat. The steps
outlined in claim 1 represent the abstract idea of customizing a
ball bat, such as by receiving user input of selected ball bat
features and generating a presentation of the customized ball bat.
(Final Act. 2-3).
When viewed through the lens of the 2019 Revised Guidance, the
Examiner's analysis depicts the claimed subject matter as one of the
ineligible "[ c ]ertain methods of organizing human activity" that include
"commercial ... interactions," such as "advertising, marketing or sales
activities or behaviors" and "business relations," as well as "managing
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personal behavior or relationships or interactions between people (including
social activities, teaching, and following rules or instructions)" under
Prong One of Revised Step 2A. See 2019 Revised Guidance, 84 Fed. Reg.
at 51-52.
In response to the Examiner's determination, Appellants argue that
independent claim 1 is "not directed toward an abstract idea, rather they are
directed toward a method and a system to improve existing technology"
(Appeal Br. 9; Reply Br. 2). More particularly, Appellants argue that
Claims 1 and 11 are directed toward a method and a system of
structural details for producing a customizable ball bat that
includes a unique element that is fixedly engaged to the handle
portion and the barrel portion of the bat. The element separates
the handle portion from the barrel portion and includes an inner
tubular wall for engaging the handle portion and a frusto-conical
shaped barrel engaging region for engaging the barrel portion.
Additionally, the barrel portion at least partially overlaps the
element, and the element at least partially overlaps the handle
portion. These limitations are not abstract ideas but rather
provide for a unique construction of a multi-piece ball bat.
(Appeal Br. 9; Reply Br. 2).
Under the first prong of step 2A of the 2019 Revised Guidance, we
first determine if the claims recite an abstract idea. In this regard, we note
that the Specification is titled "SYSTEM FOR CUSTOMIZING A BALL
BAT." The Specification discloses that "[t]he present invention relates to an
element for coupling a handle portion to a barrel portion of a ball bat, and a
system and method of customizing a ball bat" (Spec. ,r 2). According to the
Specification, "[t]he cost of many existing bat constructions can be very
high due to the complexity of the construction, the cost of the materials, and
the time required to produce the finished ball bat" and "[t]he wide variety of
bat constructions and materials can make it difficult for bat retailers to know
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which bats to stock" (id. ,r 4). Thus, "[a] need exists for bat configurations
that provide exceptional performance, durability and reliability
characteristics without excessive material and/or manufacturing costs" (id.
,r 5). To address this need, the present invention "provide[s] an efficient,
easy to use tool, system or method that would allow a user to customize his
or her bat and obtain a bat that matches that player's particular needs
including design, skill level, performance and durability" (id.).
Consistent with this description, independent claim 1 recites broadly a
method for "producing a customizable ball bat" including a series of steps
for presenting a user with customizable options and receiving the user's
selections for each of the customizable options. More particularly,
independent claim 1 includes steps for [a] "presenting ... a plurality of
handle portions of the ball bat," [b] "receiving user input,"
[c] "presenting ... a plurality of barrel portions of the ball bat,"
[ d] "receiving user input," [ e] "presenting ... a plurality of elements" ( e.g.,
"the element separating the handle portion from the barrel portion"),
[f] "receiving user input," [g] "presenting a representation of the ball bat in
an assembled state on the display" according to the user's selections,
[h] "receiving user input ... confirming the selection[s]," and [i] "producing
the customized ball bat" based on the user's selections.
Upon reviewing the Specification and the claim as whole, as
summarized above, we agree with the Examiner that exemplary independent
claim 1 is directed to a series of steps for "customizing a ball bat," and thus,
directed to a form of marketing and sales activities. Here, exemplary
independent claim 1 simply runs a user through a bat-customization process
by presenting a user with several customizing options, receiving the user's
selection for each of the options, presenting a representation of the ball bat
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based on the user's selections, receiving a confirmation based on the
representation, and "producing the customized ball bat." Because
independent claim 1 recites marketing and sales activities, it recites
fundamental economic practices and/or commercial interactions that, under
the Guidance, fall under the category of "certain methods of organizing
human activity." Thus, exemplary independent claim 1 recites an abstract
idea. See Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 715 (Fed Cir.
2014) (holding that claim "describ[ing] only the abstract idea of showing an
advertisement before delivering free content" is patent ineligible); In re
Ferguson, 558 F.3d 1359, 1364 (Fed Cir. 2009) (holding methods "directed
to organizing business or legal relationships in the structuring of a sales
force ( or marketing company)" to be ineligible).
Next, we tum to the second prong of step 2A of the 2019 Revised
Guidance and determine whether the claims recite a practical application of
the recited judicial exception. Here we look to see if, for example, (i) any
additional elements of the claims reflects an improvement in the functioning
of a computer or to another technological field, (ii) an application of the
judicial exception with, or by use of, a particular machine, (iii) a
transformation or reduction of a particular article to a different state or thing
(iv) or a use of the judicial exception in some other meaningful way beyond
generally linking the use of the judicial exception to a particular
technological environment. See 2019 Revised Guidance, 84 Fed. Reg. at 55;
See also MPEP § 2106.05(a}-(c), (e}-(h).
Appellants argue that the present claims "are directed toward a
method and a system to improve existing technology" (Appeal Br. 9; Reply
Br. 2). However, we find no indication in the Specification that the present
invention improves a computer or other technology, invokes any assertedly
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inventive programming, requires any specialized computer hardware or
other inventive computer components (see, e.g., Spec. ,r,r 67-87), i.e., a
particular machine, or that the claimed invention is implemented using other
than generic computer components to perform generic computer functions.
See DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245, 1256 (Fed.
Cir. 2014) ("[A]fter Alice, there can remain no doubt: recitation of generic
computer limitations does not make an otherwise ineligible claim patent-
eligible.") (see also Ans. 6-7). Instead, we agree with the Examiner that
"any improvement found in the claim is to the method of performing the
commercial activity itself (i.e. customizing a ball bat)" (id. at 6; see also
Final Act. 3--4). Thus, the "improvement" to which Appellants refer is a
business improvement rather than an improvement to a technological or
technical field (see OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359,
1363 (Fed. Cir. 2015) ("[R]elying on a computer to perform routine tasks
more quickly or more accurately is insufficient to render a claim patent
eligible.") (see also Ans. 7).
Appellants also argue that the present claims "transform the unique
group of selections into a unique customized ball bat" inasmuch as
exemplary independent claim 1 "produc[ es] the customized ball bat"
(Appeal Br. 10-11; Reply Br. 3--4). However, we find no indication in the
Specification that the claimed invention effects a transformation or reduction
of a particular article to a different state or thing. Here, as the Examiner
points out:
there is no disclosure of the physical production of the ball bat
recited in [Appellants'] claims or [S]pecification. Specification
paragraph [ 007 4] states that "the device interface 214 can
transfer the selected information or process selection information
to a retailer, manufacturer, or supplier of the customized bat for
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processing." As such, [limitation [i]] is merely the transmission
of the user's selections to a third party, not the physical creation
of the ball bat.
(Ans. 9 ( emphases omitted); see also Final Act. 3). Nor do we find anything
of record, short of attorney argument, that attributes any improvement in
computer technology and/or functionality to the claimed invention or that
otherwise indicates that the claimed invention "appl[ies], rel[ies] on, or
us[ es] the judicial exception in a manner that imposes a meaningful limit on
the judicial exception, such that the claim is more than a drafting effort
designed to monopolize the judicial exception." See 2019 Revised
Guidance, 84 Fed. Reg. at 54.
Turning to Step 2B of the of the 2019 Revised Guidance, we
determine whether the additional elements (1) add a specific limitation or
combination of limitations that is not well-understood, routine, and
conventional activity in the field, which is indicative that an inventive
concept may be present or (2) simply appends well-understood, routine,
conventional activities previously known to the industry, specified at a high
level of generality, to the judicial exception, which is indicative that an
inventive concept may not be present. See 2019 Revised Guidance, 84 Fed.
Reg. at 56.
The Examiner determines under step two in the Alice framework that
"Claim 1 does not include additional elements sufficient to amount to more
than the judicial exception" (Final Act. 3). More particularly, the Examiner
states that limitations [ a ]-[h] "are directed to mere data gathering and
transmission" (Final Act. 3), and as discussed above, limitation [i] merely
"[t ]ransmit[ s] the selected customized features of the ball bat to a
manufacturer" which "again amounts to mere data transmission" (id.).
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In response, Appellants argue that independent claim 1 "provide[ s] an
'inventive concept' that improves technology by providing a method and
system of assembling a unique multi-piece ball bat that includes a novel
element" (Appeal Br. 9-10 (citing McRO, Inc. v. Bandai Namco Games Am.
Inc., 837 F.3d 1299 (Fed. Cir. 2016)).
However, Appellants do not point to anything in the claims that
resembles the improvement to the technical field of computer animation that
was not simply the use of a generic computer in McRO. Appellants do not
direct our attention to anything in the Specification to indicate that the
present invention provides an improvement in the computer's technical
functionality. The claims do not recite assembling a bat, but merely
"producing" that can comprise manual selection based on the data gathered.
See Spec. para. 74--75. The claims also fail to include any technical element
or details for implementing the steps, and the "improvement" to which
Appellants refer is a business improvement rather than a technological one.
Appellants also argue that the present claims are similar to those at
issue in Trading Technologies Int'!, Inc. v. CQG, Inc., 675 F. App'x 1001
(Fed. Cir. 2017) because
the use of the unique element separating the barrel portion of the
bat from the handle portion of the bat provides the bat with a
unique construction, and the method and system of the pending
claims significantly enhances the ability of a user to customize a
bat that is ideal for his or her particular application or organized
league. The pending claims provide a solution to users by
significantly increasing the level of customization of the ball bat.
(Appeal Br. 10; see also Reply Br. 3--4). We cannot agree.
In Trading Technologies, the district court found that the claimed
devices "have no 'pre-electronic trading analog,"' and "do not simply claim
displaying information on a graphical user interface." Trading Techs., 675
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Fed. Appx. at 1004. The court concluded "the claimed subject matter is
'directed to a specific improvement to the way computers operate,' ... for
the claimed graphical user interface method imparts a specific functionality
to a trading system 'directed to a specific implementation of a solution to a
problem in the software arts."' Id. at 1006. We distinguish the claims
before us from those in Trading Technologies, because, unlike in Trading
Technologies, independent claim I merely guides a user through a bat
customization process and then "produc[ es] the customized ball bat" by
"transfer[ing] the selection information or process selection information to a
retailer, manufacturer or supplier of the customized bat for processing" (see
Spec. ,r 74). Here, the Specification describes that "[i]f the information is
being provided to a retailer, for example the retailer can review its stock and
select the bat components having the feature characteristics specified by the
user" (id. ,r 7 5), and as such, "producing" may simply comprise manual
selection based on the information provided. Thus, independent claim 1
does not overcome a problem associated with prior art user interfaces or
improve the way computers operate, but rather, addresses a business
problem relating to the customization of bats using generic computer
systems operating in their ordinary capacity (cf Spec. ,r,r 67-87; Ans. 9-10).
We are not persuaded, on the present record, that the Examiner erred
in rejecting independent claim 1 under 35 U.S.C. § 101. Therefore, we
sustain the Examiner's rejection of independent claim 1, and claims 2-5,
7-14, and 16-20, which fall with independent claim 1.
DECISION
The Examiner's rejection of claims 1-5, 7-14, and 16-20 under
35 U.S.C. § 101 is affirmed.
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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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