Ex Parte HENDRIKS et al

Patent Trial and Appeal Board

Jul 5, 2018

14202796 (P.T.A.B. Jul. 5, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
14/202,796 03/10/2014 MONIQUE HENDRIKS
24737 7590 07/09/2018
PHILIPS INTELLECTUAL PROPERTY & STANDARDS
465 Columbus A venue
Suite 340
Valhalla, NY 10595
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.
2013P00516US01 3246
EXAMINER
LANE, DANIELE
ART UNIT PAPER NUMBER
3715
NOTIFICATION DATE DELIVERY MODE
07 /09/2018 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):
patti. demichele@Philips.com
marianne.fox@philips.com
katelyn.mulroy@philips.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MONIQUE M. HENDRIKS, AART VAN HAL TEREN,
andLUWANG 1
Appeal2017-008715
Application 14/202,796
Technology Center 3700
Before WILLIAM A. CAPP, ERIC C. JESCHKE, and
FREDERICK C. LANEY, Administrative Patent Judges.
CAPP, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants2 seek our review under 35 U.S.C. § 134(a) of the final
rejection of claims 1-15. We have jurisdiction under 35 U.S.C. § 6(b ).
We AFFIRM.
1 The subject application identifies Koninklijke Philips N.V. as the
Applicant.
2 Appellants identify Koninklijke Philips N.V. as the real party in interest.
Br. 3.
Appeal2017-008715
Application 14/202, 796
THE INVENTION
Appellants' invention is an automated life coach. Spec. i-fi-f l-3.
Claim 1, reproduced below, is illustrative of the subject matter on appeal.
1. An apparatus for increasing the likelihood of inducing
behavior change in a lifestyle management program for a user,
which apparatus is arranged to:
sense, at a processor, at least one behavior parameter of a
user;
store, in a database, a quality of at least one behavior
parameter of the user;
identity, by the processor, at least one intention-behavior
gap based on the sensing of the at least one behavior parameter;
generate, by the processor, and using a genetic algorithm, a
personalized, quantified profile of the at least one intention-
behavior gap of the user;
provide, by the processor, and via a user interface, at least
one action that the user can accept or reject; and
vary, by the processor, the personalized, quantified profile
based on the at least one action accepted or rejected by the user.
THE REJECTIONS
The Examiner relies upon the following as evidence in support of the
rejections:
Tran
Cuthbert
US 2008/0004904 Al
US 2013/0216989 Al
Jan.3,2008
Aug.22,2013
The following rejections are before us for review:
1. Claims 1-15 are rejected under 35 U.S.C. § 112(a) for failure to
comply with the written description requirement.
2. Claims 1-15 are rejected under 35 U.S.C. § 112(b) as indefinite for
failing to particular point out and distinctly claim the subject which the
inventors regard as the invention.
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3. Claims 1-15 are rejected under 35 U.S.C. § 101 as directed to
ineligible subject matter.
4. Claims 1-15 are rejected under 35 U.S.C. § 103 as being
unpatentable over Cuthbert and Tran.
OPINION
Section l l 2(a)- Written Description
The Examiner determines that a newly added limitation to claims 1
and 14, directed to "storing, in a database, a quality of at least one behavior
parameter of the user," is not supported by the Specification and, therefore,
constitutes impermissible new matter. Final Action 3.
Appellants do not challenge, address or even mention this ground of
rejection in the Appeal Brief. See generally Br. The Examiner takes note of
this lack of opposition in the Answer. Ans. 12.
Under the circumstances, we deem Appellants to have waived the
right to argue against this ground of rejection. See Hyatt v. Dudas, 551
F.3d 1307, 1314 (Fed. Cir. 2008) ("When the appellant fails to contest a
ground of rejection to the Board, ... the Board may treat any argument with
respect to that ground of rejection as waived."). Accordingly, we summarily
sustain the Examiner's Section 112(a) rejection of claims 1-15.
Section 112 (b) - Indefiniteness
The Examiner determines that the term "quality of at least one
behavior parameter" in claims 1 and 14 is a relative term that renders the
claims indefinite. Final Action 3. The Examiner states that "quality" is not
defined by the claims and further states that the Specification does not
provide a standard for ascertaining the requisite degree. Id. Consequently,
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according to the Examiner, one of ordinary skill in the art would not be
reasonably apprised of the scope of the invention. Id. The Examiner further
considers that dependent claims 2-13 and 15 are infected by the deficiencies
in their respective parent claims and are, therefore, rejected under the same
rationale. Id.
Appellants argue that the disputed term is "well-understood" in view
of the pending claims and Specification. Br. 10. According to Appellants:
"quality of at least one behavior parameter"
means
"a value of at least one behavior parameter."
Id. Appellants contend that, because the claimed "quality" is stored in a
database, it plainly refers to the "value" of a behavior parameter. Id.
Appellants direct our attention to passages in the Specification where
a database stores factor implication values 3202. Id. (citing Spec. i-f 106).
Appellants also refer to the Specification as disclosing that "action
properties" are stored in database 3222 along with predicted context
properties that are stored in database 3224. Id. (citing Spec. i-f 123).
The Examiner disputes Appellants' position that "a quality of at least
one behavior parameter" is "well-understood" to mean "a value of at least
one behavior parameter." Ans. 13. The Examiner observes that "[t]he
alleged support in the specification provided by the Appellant makes no
reference to behavior parameters nor to a quality of at least one behavior
parameter." Id. Referring to the only example of an actual "behavior
parameter" disclosed in the Specification, the Examiner states:
The specification does however provide examples of behavior
parameters to be "such as whether the user 1102 is walking,
running or at rest, etc. (specification, pg. 45, para. 246)." Thus,
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Id.
a "quality" of the user "walking, running or at rest, etc." is
ambiguous at best, particularly when the specification is
completely silent to the term "quality". Therefore, since the
term itself is ambiguous in light of the specification, it is further
indefinite as to how a "quality" could be stored.
The controlling statute provides, in pertinent part, that:
The specification shall conclude with one or more claims
particularly pointing out and distinctly claiming the subject
matter which the inventor or a joint inventor regards as the
invention.
35 U.S.C. § 112(b ). The test for definiteness under Section 112 is whether
"those skilled in the art would understand what is claimed when the claim is
read in light of the specification." Orthokinetics, Inc. v. Safety Travel
Chairs, Inc., 806 F.2d 1565, 1576 (Fed. Cir. 1986) (citations omitted).
"There is no requirement that the words in the claim must match those used
in the specification disclosure," In re Skvorecz, 580 F.3d 1262, 1268-69
(Fed. Cir. 2009); MPEP § 2173.05(e). However, the PTO can properly
reject a claim as indefinite if the claim is ambiguous, vague, incoherent,
opaque, or otherwise unclear. In re Packard, 751 F.3d 1307, 1311 (Fed.
Cir. 2014 ). Section 112 places the burden of precise claim drafting on the
applicant. See In re Morris, 127 F.3d 1048, 1056-57 (Fed. Cir. 1997).
Careful and straightforward claim drafting by prosecuting
attorneys and agents, and rigorous application by examiners of
the statutory standard to particularly point out and distinctly
claim the subject matter regarded to be the invention, see 35
U.S.C. § 112, i-f 2 (2000), serve an important public notice
function.
Predicate Logic, Inc. v. Distributive Software, Inc., 544 F.3d 1298, 1300
(Fed. Cir. 2008). Thus, during patent prosecution when claims can be
amended, ambiguities should be recognized, scope and breadth of language
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explored, and clarification imposed. See In re Zietz, 893 F .2d 319, 321 (Fed.
Cir. 1989).
In the instant case, the word "quality" does not appear anywhere in
the Specification, whether in relation to a "behavior parameter" or any other
context. See generally Spec. The Specification is replete with references to
sensing a behavior parameter, but there is no accompanying disclosure as to
how such sensation is converted to either a cognizable qualitative or
quantitative "value" that is capable of being stored in a database. Spec.
i-fi-f 13-15. Appellants do not direct our attention to any passage in the
Specification that identifies a "behavior parameter," recognizable as such.
See generally Br. The only "behavior parameter," recognizable as such, that
we have been able to locate in the Specification is "whether the user 1102 is
walking, running[,] or at rest." Spec. i1246. The Specification fails to teach,
describe, or explain how sensing whether a user is walking, running, or
resting, is converted into either a qualitative or quantitative value that can be
stored in a database.
Thus, it is unclear as to what constitutes a "quality" or "value" of a
"behavior parameter." Moreover, it is equally unclear how such a behavior
parameter can be reduced to something that can be stored and processed by a
computer system. 3 A claim is properly rejected as indefinite if it is
ambiguous, vague, incoherent, opaque, or otherwise unclear. Packard, 751
F .3d at 1311. A satisfactory response to such a rejection "can take the form
of a modification of the language identified as unclear, a separate definition
of the unclear language, or, in an appropriate case, a persuasive explanation
3 For example, are expressions of "anger" or 'joy" considered to be
"behavior parameters" and, if so, how are relative degrees of anger or joy
reduced to "values" that can be stored in and processed by a computer?
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for the record of why the language at issue is not actually unclear." Id.
Here, Appellants response to the rejection fails to clarify the meaning of
"quality" as it applies to a behavior parameter. Id. We sustain the
Examiner's Section 112(b) rejection of claims 1-15.
Patent Eligibility under 35 USC§ 101
The Supreme Court has set forth "a framework for distinguishing
patents that claim laws of nature, natural phenomena, and abstract ideas
from those that claim patent-eligible applications of those concepts." Alice
Corp. Pty. Ltd. v. CLS Bank Int'!, 134 S. Ct. 2347, 2355 (2014) (citing Mayo
Collaborative Servs. v. Prometheus Labs, Inc., 566 U.S. 66, 72-73 (2012)).
According to the Supreme Court's framework, we must first determine
whether the claims at issue are directed to one of those concepts. Id. If so,
we must secondly "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. The Supreme Court characterizes the second step of the
analysis as "a search for an 'inventive concept' - i.e., an element or
combination of elements that is 'sufficient to ensure that the patent in
practice amounts to significantly more than a patent upon the [ineligible
concept] itself."' Id. (brackets in original) (quoting Mayo, 566 U.S.
at 72-73).
With respect to the first step, the Examiner determines that the claims
are directed to an abstract idea. According to the Examiner, the claims are
directed to a method of organizing human activity. Final Action 4.
According to the Examiner, managing intrapersonal activities, such as
human behavior, is commonly performed by a mental health professional,
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life coach, or physical trainer. Id. The Examiner further finds that the
claims represent an idea of itself, which is an abstract idea. Id. The
Examiner further finds that the claims are directed to a mathematical
relationship or formula, which is also an abstract idea. Id.
With respect to the second step of the Alice/Mayo analysis, the
Examiner finds:
The claims do not include additional elements that are
sufficient to amount to significantly more than the judicial
exception because the additional elements or combination of
elements in the claims are simply a generic recitation of a
processor, a memory, a user interface, and a computer that
serve to merely link the abstract idea to a processing device that
are well understood, routine, and conventional activities
previously known to the pertinent industry.
Id. at 4--5.
Regarding step 1, Appellants argue that the claims are not "directed
to" an abstract idea. Br. 11. Appellants analogize the instant case to that
Enfish, LLC v. Microsoft Corp., 822 F.3d 1327 (2016). In response, the
Examiner faults Appellants for not identifying and explaining how Enfish
applies to the facts of this case. Ans. 15-16.
It is well settled that an idea, in and of itself, is not patentable.
Gottschalk v. Benson, 409 U.S. 63, 67 (1972). An abstract idea does not
become nonabstract by limiting the invention to a particular technological
environment. Intellectual Ventures I LLV v. Capital One Bank, 792 F.3d
1363, 1367 (Fed. Cir. 2015); see also Affinity Labs of Texas, LLC v.
DirecTV, LLC, 838 F.3d 1253, 1259 (Fed. Cir. 2016) (Merely limiting the
field of use of the abstract idea to a particular existing technological
environment does not render the claims any less abstract); see also Alice,
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134 S.Ct. at 2358 (the fact a computer exists in the physical realm is beside
the point).
Appellants' Enfzsh argument is not persuasive. In Enfzsh, the court
determined that "the claims at issue ... are not directed to an abstract idea
within the meaning of Alice. Rather, they are directed to a specific
improvement to the way computers operate." Id. at 1336.
In contrast, Appellants' claim 1 is directed to an apparatus that is
arranged to perform six functional limitations "at" or "by" a processor,
namely: (1) sense; (2) store; (3) identity [sic "identify"]; (4) generate; (5)
provide; and ( 6) vary. The processor merely implements, on a computer, the
abstract idea of organizing human behavior in the form of life coaching
activities. Thus, the claims in this case fall into a familiar class of claims
directed to the patent ineligible concept of an abstract idea. See Electric
Power Group, LLC v. Alstom S.A., 830 F.3d 1350, 1353 (Fed. Cir. 2016).
The focus of the asserted claims ... is on collecting
information, analyzing it, and displaying certain results of the
collection and analysis. We need not define the outer limits of
"abstract idea," or at this stage exclude the possibility that any
particular inventive means are to be found somewhere in the
claims, to conclude that these claims focus on an abstract idea.
Id. The courts treat analyzing information by steps people go through in
their minds, or by mathematical algorithms, without more, as essentially
mental processes within the abstract idea category. Id. at 1354 (citing TL!
Commc'ns LLC Patent Litig., 823 F.3d 607, 613 (Fed. Cir. 2016)). The
courts treat claims to organizing human activity as an abstract idea as the
Examiner correctly finds (Final Act. 4--5). See Alice, 134 S.Ct. at 2356
(hedging is method of organizing human activity); Voter Verified, Inc. v.
Election Sys. & Software LLC, 887 F.3d 1376, 1385 (Fed. Cir. 2018)
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(fundamental human activity of voting). Furthermore, merely displaying the
results of abstract processes of collecting and analyzing information, without
more, is abstract as an ancillary part of such collection and analysis. Electric
Power Group, 830 F.3d at 1354 (citing Content Extraction & Transmission
LLC v. Wells Fargo Bank, Nat 'l Ass 'n, 776 F.3d 1343, 1347 (Fed. Cir.
2014)). The Examiner is correct in determining that claims 1-15 are
directed to an abstract idea.
Next, Appellants take the position that the claims contain patentable
subject matter because they are limited so as not to preempt a significant
amount of inventive activity. Br. 13-14 ("Applicant seeks only to foreclose
others from the use of that particular idea in conjunction with the particular
configured apparatus and particular configured method"). In response, the
Examiner points out that "preemption" is not a standalone test for patent
eligibility and that any preemption concerns have been addressed through
the application of the Alice/Mayo two-step framework. Ans. 15. We agree
with the Examiner on this point as "the absence of complete preemption
does not demonstrate patent eligibility." Ariosa Diagnostics, Inc. v.
Sequenom, Inc., 788 F.3d 1371, 1379 (2015).
Regarding step 2 of the Alice/Mayo analysis, Appellants next argue
that the claimed apparatus and method alleviate shortcomings of existing
automated coaching methods. Br. 16. "Advantages of the present
application over existing automated coaching systems include, for example,
low cost and providing support throughout the day (as opposed to for
example once a week, when using a human coach)." Id. at 17. Appellants
analogize the claimed invention to a hypothetical rubber molding process
used as an example in the PTO's 2014 interim guidelines. Id. at 17-19.
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Appellants' arguments with respect to step 2 or the "something more"
step of the Alice/Mayo analysis are not persuasive. At the outset, we do not
find life coaching to be analogous to rubber molding. Appellants'
Specification discloses that their invention is facilitated by a "computer
resource 201" that may be a server, computer, or another device that
provides "computing capability." Spec. i-f 94. Appellants disclose a "client
device 102" that may be coupled to a network and is configured to
communicate with an activity monitor 105. Id. i-f 95. Client device 102 may
include a computer system in the form of a desktop computer, a laptop
computer, a tablet computer, a personal digital assistant, a mobile device, a
smart phone, a gaming console, or "other devices with like capability." Id.
i-f 96. The client device 102 executes applications such as a browser to
access web pages or other network content. Id. The client device may also
execute applications other than a browser such as email, instant messaging,
and other unspecified applications. Id. Appellants' network 104 includes
the internet, intranets, extranets, wired networks, wireless networks, wide
area networks, local area networks, and other unspecified but "suitable"
networks. Id. i-f 97. The computing resource 201 and client device 102 each
include a processor and memory. Id. i-f 98. The processor is configured to
process any of the steps or functions of computer resource 201, system 200,
or any of the modules, units or components thereof. Id. i-f 99. The processor
may be comprised of single integrated circuit or use a plurality of integrated
circuits that are connected together. Id. Appellants' memory 108 may
include both volatile and nonvolatile memory and data storage components
including RAM, ROM, hard disk drives, USB flash drives, memory cards,
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optical disk drives, and magnetic tapes. Id. i-f 100. The memory 108 may
store instructions that are executable by the processor. Id. i-f 102.
In short, the computer implementation of Appellants' abstract idea is
described at a high level of generality that presumes familiarity on the part
of the reader. Appellants do not cite or otherwise direct our attention to any
teaching disclosure in the Specification that purports to show that computer
implementation of the abstract idea is performed in a manner that transcends
well-understood, routine, and conventional computer technology. Alice, 134
S.Ct. at 2359. There is nothing in the description of the computer
equipment, software, and user interface components that purports to be a
breakthrough or advancement in computer technology. Id.
A patent applicant is required to submit a specification that contains a
written description of the invention in "full, clear, concise, and exact terms."
35 U.S.C. § 112(a). Generally, for purposes of the Alice/Mayo analysis, a
specification demonstrates the well-understood, routine, conventional nature
of step 2 "additional elements" when it describes them in a manner that
indicates they are sufficiently well-known that they need not be described
with particularity to satisfy 35 U.S.C. § 112(a).4 That is certainly the case
here. Under the circumstances, we agree with the Examiner that Appellants'
competitive activity challenge system does not require anything outside of a
generic computer. Final Action 4. Indeed, Appellants do not argue that
their invention requires, discloses, or claims more than generic computers
4 Memorandum from the U.S. Patent & Trademark Office, Changes in
Examination Procedure Pertaining to Subject Matter Eligibility, Recent
Subject Matter Eligibility Decision (April 19, 2018).
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that may be coupled to a generic network, such as the internet. See
generally Br.
It is now well settled that mere recitation of a generic computer cannot
transform a patent-ineligible abstract idea into a patent-eligible invention.
See Alice, 134 S.Ct. at 2358. Thus, merely stating an abstract idea while
adding the words "apply it" is not enough to confer patent eligibility. Id.
[I]f that were the end of the § 101 inquiry, an applicant could
claim any principle of the physical or social sciences by reciting
a computer system configured to implement the relevant
concept.
Id. at 2359.
In accordance with the foregoing legal principles, we have considered
whether the claim elements, both individually and "as an ordered
combination," "'transform the nature of the claim' into a patent-eligible
application." See id. at 2355. We are not persuaded that using a computer
system to automate the manual and mental tasks typically performed by a
human "life coach" satisfies the "significantly more" criteria under the
second prong of Alice/Mayo. Id. at 2359. Essentially, all Appellants have
done here is use generic computer data gathering, processing, and display
technology to automate the functions of a "life coach" or similar mental
health processional. As in Alice, "each step does no more than require a
generic computer to perform generic computer functions." Id.
We have considered Appellants' remaining arguments and find them
to be without merit. Accordingly, we sustain the Examiner's Section 101
rejection of claims 1-15.
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Unpatentability of Claims 1-15
over Cuthbert and Tran
We do not reach the obviousness rejections because an affirmance of
the lack of written description rejection disposes of all claims on appeal. See
37 C.F.R. § 41.50(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). It is
not necessary to address the obviousness of claims, which contain a
limitation not described by the specification, as filed. Ex parte Smith, Case
No. 2008-5902, 2008 WL 4998624 (BPAI Nov. 24, 2008)
DECISION
The decision of the Examiner to reject claims 1-15 for lack of written
description under 35 U.S.C. § 112(a) is affirmed.
The decision of the Examiner to reject claims 1-15 as indefinite under
35 U.S.C. § 112(b) is affirmed.
The decision of the Examiner to reject claims 1-15 as being directed
to unpatentable subject matter under 35 U.S.C. § 101 is affirmed.
We do not reach the Examiner's art rejection. See 37 C.F.R.
§ 41.50(a)(l).
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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