Ex Parte Highet et al

Patent Trial and Appeal Board

Jan 31, 2019

14860542 (P.T.A.B. Jan. 31, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
14/860,542 09/21/2015 Danuta Highet
35161 7590 01/31/2019
DICKINSON WRIGHT PLLC
1825 Eye St., NW
Suite 900
WASHINGTON, DC 20006
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.
66866-9 8652
EXAMINER
BALDOR!, JOSEPH B
ART UNIT PAPER NUMBER
3711
MAIL DATE DELIVERY MODE
01/31/2019 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 DANUTA HIGHET and ROBERTA CAHN
Appeal2017-010805
Application 14/860,542
Technology Center 3700
Before JAMES P. CALVE, BRANDON J. WARNER, and
ARTHUR M. PESLAK, Administrative Patent Judges.
WARNER, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Fogus, Inc. ("Appellant") 1 appeals under 35 U.S.C. § 134(a) from the
Examiner's decision rejecting claims 12-16 and 19-22, which are all the
pending claims. Appeal Br. 1, 5. We have jurisdiction over the appeal
under 35 U.S.C. § 6(b ).
We REVERSE.
Fogus, Inc. is the applicant, as provided in 37 C.F.R. § 1.46, and is
identified as the real party in interest. Appeal Br. 3.
Appeal2017-010805
Application 14/860,542
CLAIMED SUBJECT MATTER
Appellant's disclosed invention "relates to an incrementally-sized
standard-sized eating-ware system and processes for weight management."
Spec., p. 1, 11. 13-14. Claim 12, reproduced below with emphasis added, is
the sole independent claim and is representative of the subject matter on
appeal.
12. A method, comprising:
selecting a plate with a surface area within a range of
11-13 in2 and designating the selected plate as a zero on a
whole-number numerical index;
selecting a plate increment between 1/16-inch and 1 inch;
starting at one, designating a whole number (N) in the
index to correspond with a plate having a first dimension equal
to the plate increment plus a first dimension of a corresponding
plate (N-1 );
providing a series of different-sized plates, each
successive-sized plate's first dimension differing from its series
neighbor by the plate increment;
on each of the series of different-sized plates, marking an
indicia representing the plate's relative position in a hierarchical
order of the index;
assigning a value of zero on the whole-number numerical
index to a utensil with an ellipsoid circumscribing a food-
carrying portion of the utensil, the ellipsoid having equal minor
radii of 0.25 inches and a major radius of 0.5 inches;
selecting a positive utensil increment of 0.025 inches or
less[], the increment being an increment of a minor radius of an
ellipsoid with equal minor radii and a major radius equal to
1.5 times the minor radii plus 0.125 inches, the ellipsoid
circumscribing a food-carrying portion of a utensil;
providing a series of different-sized eating utensils, each
successive-sized utensil differing from its series neighbor by the
utensil increment;
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starting at one, designating a whole number (N) in the
index to correspond with a utensil having a first minor radius
equal to the utensil increment plus the minor radius of a
corresponding utensil (N-1 ); and
on each of the series of different-sized utensils, marking
an indicia representing the utensil's relative position in the
hierarchical order of the index using the same indicia that the
plates are marked with.
EVIDENCE
The Examiner relied on the following evidence in rejecting the claims
on appeal:
Montesi
Matson
us 4,043,203
US 7,044,739 B2
REJECTIONS
The following rejections are before us for review: 2
Aug. 23, 1977
May 16, 2006
I. Claims 12-16 and 19-22 stand rejected under 35 U.S.C. § 101
as being directed to patent-ineligible subject matter. Final
Act. 3-5; Ans. 2--4.
II. Claims 12-16 and 19-22 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Matson and Montesi. Final
Act. 6-9; Ans. 4--8.
2 We note that a rejection of claims 12 and 19 under 35 U.S.C. § 112,
second paragraph, as being indefinite has been withdrawn by the Examiner
and thus is not before us for review as part of the instant appeal. Ans. 8; see
also Final Act. 2-3.
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Application 14/860,542
ANALYSIS
Rejection I - Ineligible Subject Matter
The Examiner rejects claims 12-16 and 19-22 under 35 U.S.C. § 101
as being directed to a judicial exception without significantly more, asserting
that the claims are directed to "an abstract idea in the form of mental or
abstract steps for correlating and defining relationships between numbers
and plates/utensils." Final Act. 3; see id. at 3-5; Ans. 2--4.
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. v. CLS Bankint'l, 134 S. Ct. 2347, 2355 (2014) (emphasis added)
(citing Mayo Collaborative Servs. v. Prometheus Labs., Inc., 132 S. Ct.
1289, 1294 (2012)). Under that framework, we first "determine whether the
claims at issue are directed to one of those patent-ineligible concepts"-i.e.,
a law of nature, a natural phenomenon, or an abstract idea. Id. ( citing Mayo,
132 S. Ct. at 1296-97).
The Federal Circuit has instructed that "[t]he 'directed to' inquiry ...
[ does not] simply ask whether the claims involve [ or encompass] a patent-
ineligible concept, because essentially every routinely patent-eligible claim
involving physical products and actions involves a law of nature and/or
natural phenomenon." Enfzsh, LLC v. Microsoft Corp., 822 F.3d 1327, 1335
(Fed. Cir. 2016). Rather, "the 'directed to' inquiry applies a stage-one filter
to claims, considered in light of the specification, based on whether 'their
character as a whole is directed to excluded subject matter."' Id. ( citing
Internet Patents Corp. v. Active Network, Inc., 790 F.3d 1343, 1346 (Fed.
Cir. 2015)).
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It is only after the claims have been determined to be "directed to" a
patent-ineligible concept that we 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." Alice, 134 S. Ct. at 2355 ( quoting Mayo,
132 S. Ct. at 1298, 1297).
Although not explained in the rejection, the Examiner-presumably
under the first step of the Alice framework----concludes that the claims are
directed to an abstract idea, stating that "[t]he inventive concept of the
claims is directed to [an] abstract concept in the form of relationships
between plate surface areas/utensil sizes and corresponding whole number
values," which the Examiner asserts is a concept that "is not patent eligible."
Ans. 4. However, simply because the present claims "include" these
relationships, the Examiner has not sufficiently shown that the claims, as a
whole, are "directed to" an abstract idea itself. Rather, as Appellant
explains, the present claims include the application of such relationships in
the provision of particularly-sized series of both plates and eating utensils.
See Appeal Br. 11-13; Reply Br. 1-2; see also Appeal Br., Claims App.
Upon review of the record before us, the claims are directed to a
method that expressly recites providing a series of specifically-sized plates
(the plates being particularly size-incremented relative to one another), as
well as providing a series of specifically-sized eating utensils (the utensils
also being particularly size-incremented relative to one another), where
indices of the respective series of plates and utensils are marked on the same
scale. See Appeal Br., Claims App. This is not merely an abstraction;
rather, it is a concrete implementation of a method that requires providing
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particular physical things-namely, the respective series of specific,
incrementally-sized plates and utensils-not just any generic dishware that
the Examiner mentions as being conventional.
Although the Examiner may be correct that generic "plates and
utensils would be used in nearly every diet system as they are common
eating components" (Ans. 4), the claims do not merely recite generic plates
and utensils, as explained above (see Appeal Br., Claims App.). In other
words, while generic plates and utensils may be conventional, the record
does not establish that the same could be said for the respective series of
specific, incrementally-sized plates and utensils, where indices of the
respective series of plates and utensils follow the same scale, as recited in
the claims.
As to the initial abstract idea determination here, and critical to our
resolution of the issue before us for review, we agree with Appellant's
argument that the plain language of the claims "recites more than [a] method
of organizing human activity and more than an alleged abstract idea itself."
Appeal Br. 12. Thus, even though the claims involve relationships between
whole numbers and plates/utensils, the rejection presented fails the initial
threshold step of explaining why the claims, as a whole, are "directed to"
nothing more than an abstract idea itself.
In light of this deficiency, we do not sustain the Examiner's rejection.
Rejection II - Obviousness
As discussed above, the claims here require providing a series of
specifically-sized plates (the plates being particularly size-incremented
relative to one another), as well as providing a series of specifically-sized
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Application 14/860,542
eating utensils (the utensils also being particularly size-incremented relative
to one another), where indices of the respective series of plates and utensils
are marked on the same scale. See Appeal Br., Claims App. In rejecting the
claims, the Examiner relies on a combination of teachings from Matson and
Montesi. See Final Act. 6-9; Ans. 4--8.
As the requisite articulated reasoning for combining the teachings
from these individual references, the Examiner states that it would have been
obvious to provide Matson' s series of plates with the feature of "selecting
and providing a series of eating utensils as taught by the controlled
nutritional system of Montesi for the purpose of further providing for precise
measurements of food portions." Final Act. 7-8. But this reasoning, which
is based on evidence from dissociated series of plates and utensils, does not
adequately account for the fact that the claims recite that the indices of the
respective series of specifically-sized plates and utensils are made according
to the same scale.
In short, we agree with Appellant that the rejections do not
sufficiently explain why a person of ordinary skill in the art would have
combined these disparate teachings to provide both a series of plates and a
series of utensils, with each series having a constant and indexed size
increment, where both of the respective series use the same index. See
Appeal Br. 13-16; Reply Br. 2--4.
Stated another way, the Examiner has not sufficiently articulated
reasoning based on rational underpinnings as to why one skilled in the art
would have been prompted to combine the teachings of Matson and Montesi
in the manner proposed. See KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398,
418 (2007) (stating that "[r]ejections on obviousness grounds cannot be
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sustained by mere conclusory statements; instead, there must be some
articulated reasoning with some rational underpinning to support the legal
conclusion of obviousness" ( quoting In re Kahn, 441 F .3d 977, 988 (Fed.
Cir. 2006))). Moreover, in response to Appellant's arguments, the Examiner
does not provide any additional explanation as to why such individual
teachings would be combined to arrive at the same index being used for both
a series of incrementally-sized plates and a series of incrementally-sized
utensils. See Ans. 12-13.
Although we agree with the Examiner that marking the index values
on each of the plates and utensils, by itself, would be insufficient to convey
patentability (see Final Act. 8-9; Ans. 13), the underlying structural
limitations of the respective series of incrementally-sized plates and
incrementally-sized utensils (which the markings simply label for
convenience) must be accounted for. In other words, setting aside the
Examiner's printed matter position with respect to the marking alone, a
reason to arrive at the two series being physically sized according to a
common index remains unexplained.
Rejections based on obviousness must rest on a factual basis; in
making such a rejection, the Examiner has the initial burden of supplying the
requisite factual basis and may not, because of doubts that the invention is
patentable, resort to speculation, unfounded assumptions, or hindsight
reconstruction to supply deficiencies in the factual basis. See In re Warner,
379 F.2d 1011, 1017 (CCPA 1967). Here, absent improper hindsight
reconstruction, we do not see a sufficient reasoned explanation based on a
rational underpinning as to why one of ordinary skill in the art would have
been led to modify Matson with Montesi to use the same index for the
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respective series of plates and utensils, and a reason for such modification is
not otherwise evident from the record.
A sustainable obviousness rejection needs to explain the reasoning by
which those findings support the Examiner's conclusion of obviousness.
Perfect Web Techs., Inc. v. InfoUSA, Inc., 587 F.3d 1324, 1328-30 (Fed. Cir.
2009). In this case, the rejections fail to meet this required standard.
Accordingly, based on the record before us, the Examiner has not met
the burden of establishing a proper prima facie case of obviousness. On this
basis, we do not sustain the Examiner's rejection.
DECISION
We REVERSE the Examiner's decision rejecting claims 12-16
and 19-22 under 35 U.S.C. § 101 as being directed to patent-ineligible
subject matter.
We REVERSE the Examiner's decision rejecting claims 12-16
and 19-22 under 35 U.S.C. § 103(a) as being unpatentable over Matson and
Montesi.
REVERSED
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