Ex Parte HOUSE

Patent Trial and Appeal Board

Dec 7, 2018

13840455 (P.T.A.B. Dec. 7, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/840,455 03/15/2013
25225 7590 12/11/2018
MORRISON & FOERSTER LLP
12531 HIGH BLUFF DRIVE
SUITE 100
SAN DIEGO, CA 92130-2040
FIRST NAMED INVENTOR
Tom HOUSE
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.
717162000100 9129
EXAMINER
ARYANPOUR, MITRA
ART UNIT PAPER NUMBER
3711
NOTIFICATION DATE DELIVERY MODE
12/11/2018 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):
PatentDocket@mofo.com
EOfficeSD@mofo.com
pair_mofo@firsttofile.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte TOM HOUSE
Appeal2017-009133 1
Application 13/840,455
Technology Center 3700
Before HUBERT C. LORIN, NINA L. MEDLOCK, and
BRADLEY B. BAY AT, Administrative Patent Judges.
PERCURIAM.
DECISION ON APPEAL
STATEMENT OF THE CASE
Tom House ("Appellant") appeals under 35 U.S.C. § 134(a) from the
Examiner's final rejection of claims 1-5. 2 We have jurisdiction under
35 U.S.C. § 6(b ).
We AFFIRM but denominate our affirmance as a NEW GROUND
OF REJECTION.
1 Our Decision references Appellant's Appeal Brief ("App. Br.," filed
Dec. 22, 2016), Reply Brief ("Reply Br.," filed June 13, 2017), the
Examiner's Answer ("Ans.," mailed Apr. 13, 2017), and the Final Office
Action ("Final Act.," mailed Dec. 22, 2015).
2 Claims 6-19 are withdrawn. See App. Br. 28-29, Claims Appendix.
Appeal2017-009133
Application 13/840,455
THE INVENTION
According to the Specification, the invention relates to "training and
evaluation programs" that "provide both strength and speed training,
reducing the risk of injury while enhancing performance." Spec. ,r 78.
Claim 1, reproduced below with indentation added for clarity, is the
sole independent claim, and representative of the subject matter on appeal.
1. A method of training, the method comprising:
performing a group of throws in a kneeling position,
wherein performing the group of throws
comprises performing a set of throws for each of a
plurality of balls with different weights,
wherein performing the set of throws
comprises throwing a first throw modality
and throwing a second throw modality, and
wherein the first throw modality
comprises holding the ball throughout the
throw and the second throw modality
comprises releasing the ball during the throw,
wherein holding the ball throughout
the throw comprises holding the ball until at
least a deceleration of a forward motion of the
ball,and
wherein releasing the ball during the
throw comprises forward movement of the
ball when the ball is not in contact with a
person performing the method;
repeating the group of throws in a rocker position; and
repeating the group of throws in a run-and-gun position.
App. Br. 27, Claims Appendix.
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THE REJECTIONS
Claims 1-5 are rejected under 35 U.S.C. § 101 as being directed to
judicially-excepted subject matter.
Claims 1-5 are rejected under 35 U.S.C. § 102(b) as anticipated by, or
alternatively under 35 U.S.C. § 103(a) as obvious over "NPL3 (baseball
drills), [and/or] NPL 4 (Weighted ball for baseball drills)," and Corley
(US 4,943,055, iss. July 24, 1990).
ANALYSIS
The re} ection of claims 1-5 under 3 5 U.S. C. § 101 as being directed to
judicially-excepted subject matter.
Appellant argues claims 1-5 as a group. App. Br. 3-15; Reply Br. 2-
12. We select independent claim 1 as representative for this group. Thus,
claims 2-5 stand or fall with claim 1. See 37 C.F.R. § 4I.37(c)(l)(iv).
Preliminary observation
Although there is no requirement that a claim construction analysis
precede a patentability determination (see, e.g., Bancorp Servs., L.L. C. v.
Sun life Assurance Co. of Can. (U.S.), 687 F.3d 1266, 1273 (Fed. Cir. 2012)
("[C]laim construction is not an inviolable prerequisite to a validity
determination under § 101. ") ), we find it necessary to do so here.
3 Dr. John Bagonzi, The Effects of Graded Weighted Baseballs on the
Velocity & Accuracy of a Thrown Baseball, The Pitching Professor
(hereinafter "NPL (baseball drills)").
4 Steven Ellis, Baseball Pitching Mechanic (hereinafter "NPL (Weighted
ball for baseball drills)").
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At the beginning of the examination of this application, the Examiner
characterized originally filed claims 1-5 as "drawn to a method of training a
baseball pitcher with specific instruction[s]for the pitcher to perform."
Requirement for Restriction/Election, mailed Sept. 24, 2014, p. 2 ( emphasis
added). At that time, this characterization accurately reflected the language
of independent claim 1. 5 Original claim 1 recited a method of training a
baseball pitcher comprising three steps: "instructing the pitcher to perform
a group of throws in a kneeling position"; "instructing the pitcher to repeat
the group of throws in a rocker position; and instructing the pitcher to repeat
the group of throws in a run-and-gun position." Spec., p. 25 (emphasis
added). Based on this language of the claim, the Examiner rejected
claims 1-5 under 35 U.S.C. ,r,r 112, second paragraph, 101, and 102(b) or, in
the alternative, 103(a). See Non-Final Office Action, mailed Mar. 18, 2015.
5 1. A method of training a baseball pitcher, the method comprising:
instructing the pitcher to perform a group of throws in a
kneeling position, wherein performing a group of throws
comprises performing a set of throws for each of a plurality of
balls with different weights, wherein performing a set of throws
comprises throwing a first throw modality and throwing a
second throw modality, and wherein the first throw modality
comprises holding the ball throughout the throw and the second
throwing modality comprising releasing the ball during the
throw;
instructing the pitcher to repeat the group of throws in a
rocker position; and
instructing the pitcher to repeat the group of throws in a
run-and-gun position.
Spec., p. 25.
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Claims 1-5 were then amended to read as they now appear before us
on appeal; notably, the terms "baseball pitcher" and "pitcher" were deleted
from original claim 1. See Amendments to the Claims, filed Sept. 18, 2015,
p. 3.6
Notwithstanding the amendment broadened the scope of original
claim 1, Appellant argues against the rejections as if amended claim 1 still
included the terms "baseball pitcher" and "pitcher."
The Examiner provides no basis why she does not consider
a transformation of a plurality of baseballs to be a
transformation to another state. As noted, the state of each ball
is changed during the throwing motion: starting from a state of
rest, each ball gathers energy from the pitchers arm and is then
either released and thrown through the air (the release modality)
or decelerates as it held during the deceleration of the pitcher's
arm (the hold modality).
Amendment in Response to Non-Final Office Action under 37 C.F.R.
§ 1.111, p. 9 ( emphasis added).
In the Final Office Action, the Examiner responds to Appellant's
arguments with a similarly narrow view of claim 1 's scope, which does not
account for Appellant's amendment deleting the terms "baseball pitcher"
and "pitcher" from the claim. See Final Act. 3--4, 6. For example, the
Examiner states: "In this case, 'the method for training a baseball pitcher' is
not considered to be tied to a particular machine." Id. at 3.
6 The Appellant's explanation was that "[c]laims 1, 2, 4, and 5 are amended
to clarify what one of skill in the art would understand by 'holding the ball
throughout the throw' and 'releasing the ball during the throw,' to correct
typographical errors, and to address ,r 112 rejections." Amendment in
Response to Non-Final Office Action under 37 C.F.R. § 1.111, filed
Sept. 18, 2015, p. 7.
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In the subsequent Amendment After Final Action Under 37 C.F.R.
§ 1.116 (filed June 20, 2016), Appellant's arguments rely on an even
narrower construction of claim 1. For instance, Appellant argues that
"'holding the ball throughout the throw' adds an unconventional step that
confines the claim to a particular useful exemplary application, namely
training a pitcher's arm to be stronger, healthier, and to throw faster." Id.
at 11 ( emphasis added).
Id.
Baseball is a multi-billion dollar sport with elaborate training
programs for youths and professionals alike; however, this two
throw modality was never a part of any routine pitching
program prior to invention by the Applicant.
Appellant's Appeal and Reply Briefs go even further in narrowly and
improperly construing claim 1. See, e.g., App. Br. 24 ("Applicant has
changed baseball."); id. at 23-26 (discussing the Examiner's alleged failure
to consider the Appellant's evidence of secondary considerations as to
alleged physical improvements to baseball pitchers). See also Reply Br. 5
("The transformation of a pitcher's arm alone is sufficient regardless of
whether any machine is involved in the process."). The Examiner's Answer
nowhere clarifies that independent claim 1 is broader than argued and that
Appellant's arguments do not correspond with the scope of the claim; rather,
the Examiner maintains the narrow view presented in the Final Office
Action. See, e.g., Ans. 3--4 ("With regards to appellant's assertion that the
claimed steps are not a mental process -- it is well established in the exercise
and sports art such as baseball, the trainee/user may carry out the act of
pitching or batting without actually throwing or hitting a ball.").
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Neither the Appellant nor the Examiner has focused on the language
of the claim. From the outset, positions have been taken that are not
commensurate in scope with what is claimed. The competing positions we
are now tasked to review are rooted in a construction of claim 1 that the
language of the claim does not possess.
Claim construction
"The § 101 inquiry must focus on the language of the Asserted Claims
themselves." Synopsys, Inc. v. Mentor Graphics Corp., 839 F.3d 1138, 1149
(Fed. Cir. 2016) (emphasis added). See Accenture Global Servs., GmbH v.
Guidewire Software, Inc., 728 F.3d 1336, 1345 (Fed. Cir. 2013)
( admonishing that "the important inquiry for a § 101 analysis is to look to
the claim"); see also Content Extraction & Transmission LLC v. Wells
Fargo Bank, Nat'! Ass 'n, 776 F.3d 1343, 1346 (Fed. Cir. 2014) ("We focus
here on whether the claims of the asserted patents fall within the excluded
category of abstract ideas."). 7
Claim 1 recites a "method of training" comprising performing a group
of throws in each of three positions, the group of throws "compris[ing]
performing a set of throws for each of a plurality of balls with different
weights." App. Br. 27, Claims Appendix.
Although the claim calls for the use of "a plurality of balls with
different weights," the Specification describes the invention in broader
7 See also Giles S. Rich, The Extent of the Protection and Interpretation of
Claims-American Perspectives, 21 INT'L REV. INDUS. PROP. & COPYRIGHT
L. 497, 499 (1990) ("To coin a phrase, the name of the game is the claim.").
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terms; that is, the training method may be performed using other objects.
The Specification, for example, provides:
• Figure 2 (performing group of exercises using "First Object," "Second
Object," "Third Object");
• Spec. ,r 26 ("performing a set of exercises for each of a first object, a
second object, and a third object, wherein the first, second, and third
objects have different weights");
• ,r 39 ("the first object, second object, and third object of the twentieth
example are respectively a first elongated object, a second elongated
object, and a third elongated objected");
• ,r 40 ("the first, second, and third elongated objects of the thirty-third
example are baseball bats");
• ,r 41 ("the first, second, and third elongated objects of the thirty third
example are golf clubs");
• ,r 81 ("training program may include performing a set of exercises in a
first modality and a second modality using objects of different
weights");
• ,r 84 ("Objects of different weights may be used to train further the
accelerators and decelerators.");
• ,r 85 ("In a baseball bat swing example, the training may incorporate a
28 oz, a 34 oz, or a 40 oz bat.");
• ,r 100 ("three golf clubs could be used ... a driver shaft for light, a
five iron for medium, and a sand wedge for heavy"); and
• ,r 103 (Besides "baseball and golf, the training methods described
herein could be used in any rotational sport, including, but not limited
to, softball, cricket, basketball, American football, javelin, shot put,
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discus, soccer, water polo, Olympic handball, tennis, badminton,
lacrosse, volley ball, bowling, field hockey, and ice hockey.").
Accordingly, claim 1 defines a "method of training" comprising performing
a group of throws in each of three positions, the group of throws
"compris[ing] performing a set of throws for each of a plurality of balls with
different weights." More generally, the claimed method is performed via a
"plurality of [objects] with different weights" which can be represented as X
andY.
For the "set of throws," claim 1 calls for two steps: (1) "throwing a
first throw modality" and (2) "throwing a second throw modality," which are
further defined:
( 1) "the first throw modality comprises holding the ball
throughout the throw ... compris[ing] holding the ball until at
least a deceleration of a forward motion of the ball"; and,
(2) "the second throw modality comprises releasing the ball
during the throw ... compris[ing] forward movement of the
ball when the ball is not in contact with a person performing the
method."
Put more simply, the "set of throws" comprises (1) holding an object
throughout a throw until at least a deceleration of a forward motion of the
object, and (2) releasing the object during the throw when it is not in contact
with a person performing the method.
These two throwing steps are performed for each of objects X and Y
and in each of a (A) kneeling, (B) rocker, and (C) run-and-gun position.
Claim 1, thus, broadly covers a training method comprising
performing steps (1) and (2) for each of objects X and Yin in each of
positions (A), (B) and (C); where,
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(1) = holding an object throughout a throw until at least a deceleration
of a forward motion of the object;
(2) = releasing the object during the throw when it is not in contact
with a person performing the method;
X = an object at a first weight;
Y = an object at a second weight;
(A)= a kneeling position;
(B) = a rocker position; and,
(C) = a run-and-gun position.
Claim breadth
The sheer breadth of claim 1 is self-evident.
For starters, claim 1 does not specify who or what performs steps (1)
and (2) with objects X and Y at positions (A), (B), and (C). Claim 1
reasonably broadly covers any person(s), device(s), or combination(s)
thereof, capable of performing the method, as claimed. The method, as
claimed, could, for example, be performed by a robot. Even if we assume
claim 1 is intended to be limited to persons capable of performing the steps,
claim 1 does not require a single person to perform all the steps. Each step
could, for example, be performed by a different person.
Claim 1 covers any reasonable way of performing steps (1) and (2).
In that regard, arm-movement is not necessarily required. Steps (1) and (2)
could be accomplished using one's wrists alone. A person's hands need not
touch the objects. A racquet or a pitching machine could be used to perform
or assist in performing steps (1) and (2). Furthermore, the objects could be
thrown underhanded, and claim 1 puts no limit on the force to be applied or
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the orientation of the objects' travel once thrown. The objects could move
in a curve or end-over-end as in a juggling action.
Furthermore, steps (1) and (2) could be accomplished using the same
movement. For example, moving one's wrist forward while holding the
object, stopping the forward movement, and then releasing the object so as
to drop it forward satisfies steps (1) and (2).
As for objects X and Y, claim 1 puts no limit on their size, shape, or
material. Even when limited to balls, as long as X and Y have different
weights, any ball is within the scope of the claim. Thus, the claim covers,
for example, a ping pong ball for X and a beach ball for Y.
Claim 1 puts no limit on the order with which the three positions (A),
(B), and (C) and the two throwing steps (1) and (2) must be performed. For
example, the two steps performed in the kneeling position could be
performed simultaneously while the others could be performed in
success10n.
Claim 1 puts no time limit on completing the "training" method. It
could be performed over succeeding days, weeks, or years. One step could
be performed one day and another performed another day.
Claim 1 puts no limit on where or when to perform the method.
Claim 1 does not specify how holding the ball is performed. It could
include holding a football by the laces or holding a bowling ball using the
finger holes.
These are but a few of the many variables the claimed "method of
training" does not specify. Claim 1 covers repeating two particular
movements with two different objects in three different positions by anyone
or anything under any condition. In effect, claim 1 covers every practical
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application of steps (1) and (2) with objects X and Y at positions (A), (B),
and (C).
Claims 2-5 are also exceedingly broad in scope.
Having determined the broadest reasonable construction of claim 1 is
a training method performed by steps (1) and (2) for each of objects X and Y
in each of positions (A), (B), and (C), we now tum to the Examiner's
rejection.
Comment on the Examiner's Bilski-based analysis
The Non-Final and the Final Office Actions were mailed on March
18, 2015 and December 22, 2015, respectively, well after the date of
decision in Alice Corp. v. CLS Bankint'l, 134 S. Ct. 2347 (2014), i.e., June
19, 2014. However, neither § 101 rejection raised in these Office Actions
mentions Alice. Instead, the rejections rely on the "machine-or-
transformation test" articulated in In re Bilski, 545 F.3d 943 (Fed. Cir. 2008)
( en bane). The Examiner does state that
the Supreme Court stated in Bilski [Bilski v. Kappas, 130 S. Ct.
3218 (2010)] that the "machine-or-transformation test" is a
"useful and important clue" and "investigative tool" for
determining whether some claimed methods are statutory
processes, but it "is not the sole test for deciding whether an
invention is a patent-eligible 'process."'
Final Act. 3. But that is precisely how the Examiner applies the "machine-
or-transformation test," i.e., as the sole test and not simply a clue. No other
factor is discussed in the rejection. Cf Interim Guidance for Determining
Subject Matter Eligibility for Process Claims in View of Bilski v. Kappas,
Memorandum to Patent Examining Corps, Robert W. Bahr, Acting
Associate Commissioner For Patent Examination Policy, July 27, 2010.
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Since June 25, 2014, examiners have been tasked to follow the two-
step framework identified in Alice for determining whether claimed subject
matter is judicially-excepted from patent-eligibility under 35 U.S.C. § 101.
See Preliminary Examination Instructions in view of the Supreme Court
Decision in Alice Corporation Pty. Ltd. v. CLS Bank International, et al.,
Memorandum to Patent Examining Corps, Andrew H. Hirshfeld, Deputy
Commissioner For Patent Examination Policy, June 25, 2014; MPEP 2106
(Rev. Aug. 2017). Only in the Response to Arguments section of the
Examiner's Answer (mailed April 13, 2017) does the Examiner follow,
belatedly, the Alice two-step framework.
Application of the Alice framework
Alice identifies a two-step framework for determining whether
claimed subject matter is judicially excepted from patent eligibility under
35 U.S.C. § 101.
According to step one of the Alice framework, "[ w ]e must first
determine whether the claims at issue are directed to a patent-ineligible
concept," such as an abstract idea. Alice, 134 S. Ct. at 2355.
Under step one, the Examiner determined that the claims are directed
to (a) "a method of training" (Final Act. 2), (b) a "method for training a
baseball pitcher [which] falls under 'a general concept' i.e. a teaching
concept which requires memorization, repetition and following instructions"
(id. at 3), (c) "mental process" (Ans. 4), and (d) "a method of training
comprising performing a group of throws in a kneeling position using a
plurality of balls with different weights, and repeating the group of throws in
a rocker position and in a run-and-gun position" (Ans. 6-7).
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In our view, the last characterization ( d) most accurately describes
what claim 1 is "directed to."
The "directed to" inquiry [] cannot simply ask whether the
claims involve 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-after all, they take place in the physical world.
See Mayo, 132 S. Ct. at 1293 ("For all inventions at some level
embody, use, reflect, rest upon, or apply laws of nature, natural
phenomena, or abstract ideas.") 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." Internet Patents
Corp. v. Active Network, Inc., 790 F.3d 1343, 1346 (Fed. Cir.
2015); see Genetic Techs. Ltd. v. Merial L.L.C., 818 F.3d 1369,
1375, 2016 WL 1393573, at *5 (Fed. Cir. 2016) (inquiring into
"the focus of the claimed advance over the prior art").
Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1335 (Fed. Cir. 2016).
The claim's focus is an important consideration. Here, claim 1, as a
whole, is focused on a series of movements involving at least two objects of
different weights repeated in three different positions; that is, steps (1) and
(2) with objects X and Y at positions (A), (B), and (C). Cf In re TL!
Communications LLC Patent Litigation, 823 F.3d 607, 613 (Fed. Cir. 2016)
(the claims' focus "was not on an improved telephone unit or an improved
server.").
What the Specification discloses about the invention is also an
important consideration. "The 'abstract idea' step of the inquiry calls upon
us to look at the 'focus of the claimed advance over the prior art' to
determine if the claim's 'character as a whole' is directed to excluded
subject matter."' Affinity Labs of Texas, LLC v. DirectTV, LLC, 838 F.3d
1253, 1257 (Fed. Cir. 2016) (quoting Elec. Power Grp., LLC v. Alstom S.A.,
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830 F.3d 1350, 1353 (Fed. Cir. 2016); see also Enfzsh, 822 F.3d at 1335,
quoted in Apple, Inc. v. Ameranth, Inc., 842 F.3d 1229, 1241 (Fed. Cir.
2016).
In that regard, the Background section of the Specification discusses
the problem, which is that "[i]njuries are prevalent in every sport. Injuries
can strike every athlete, but for professional athletes, the pressure to enhance
performances brings an increased risk of injury." Spec. ,r 2. See also id.
,r 74 ("athletes in some sports are more prone to injury than others, even
when the sports use similar biomechanics"). According to the Specification,
the inventor solved this problem with "training and evaluation programs
described here [ for providing] both strength and speed training, reducing the
risk of injury while enhancing performance." Id. ,r 78. Sixty training
examples are disclosed by Appellant. Id. ,r,r 7----67. We find the first
example, which describes positions (A), (B), and (C), most closely aligns
with the claimed subject matter. See id. ,r 7.
In light of the Specification's description of the problem and solution,
the advance over the prior art by Appellant's claimed invention is a training
program, whereby a series of movements involving throwing objects of
different weights are repeated in three different positions for reducing risk of
injury and enhancing performance. Thus, given the focus of claim 1, as a
whole, is performing steps (1) and (2) with objects X and Y at positions (A),
(B), and (C), and, in light of the advance over the prior art, claim 1 is
properly characterized as being "directed to" a training method in which
steps (1) and (2), performed with at least two objects X and Y of different
weights, are repeated in three different positions (A), (B), and (C). Cf
Intellectual Ventures I LLC v. Erie Indemnity Company, 850 F.3d 1315,
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1328 (Fed. Cir. 2017) ("the heart of the claimed invention lies in creating
and using an index to search for and retrieve data ... an abstract concept.").
We now tum to the question of whether training by (1) and (2) with X
and Y at (A), (B), and (C) to which claim 1 is "directed to" is a patent-
ineligible concept, i.e., a law of nature, a natural phenomenon, or an abstract
idea. See Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66,
73 (2012).
Training by (1) and (2) with X and Y at (A), (B), and (C) is not a law
of nature (e.g., a scientific truth or mathematical expression of it (see
Mackay Radio and Telegraph Co. v. Radio Corporation of America,
306 U.S. 86, 94 (1939)) and does not appear to be a natural phenomenon
(i.e., a "naturally occurring thing[ ]" (Ass 'n for Molecular Pathology v.
Myriad, 133 S. Ct. 2107, 2116 (2013) (emphasis added)). Accordingly, the
remaining question is whether this concept is an abstract idea.
Arguably, training by steps (1) and (2) with objects X and Y at
positions (A), (B), and (C) is a method of organizing human activity. Cf
Alice, 134 S. Ct. at 2356-57:
The concept of risk hedging we identified as an abstract idea in
that case [Bilski] cannot be described as a "preexisting,
fundamental truth." The patent in Bilski simply involved a
"series of steps instructing how to hedge risk." 561 U.S., at
599, 130 S. Ct. 3218. Although hedging is a longstanding
commercial practice, id., at 599, 130 S. Ct. 3218, it is a method
of organizing human activity, not a "truth" about the natural
world "'that has always existed,'" Brief for Petitioner 22
(quoting Flook, supra, at 593, n. 15, 98 S. Ct. 2522).
This is so because training by (1) and (2) with X and Y at (A), (B), and (C)
is an exercise, and exercising is a longstanding human activity. Because
claim 1 organizes a longstanding human activity into a series of instructions,
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claim 1 is properly characterized as being directed to a method of organizing
human activity.
Step two is "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."' Alice, 134 S. Ct. at 2355 (quoting Mayo, 566 U.S. at 73).
Under Alice step two, the Examiner determined "[t]he claims do not
include additional elements that are sufficient to amount to significantly
more than the judicial exception" in part because the claims do not satisfy
the "machine-or-transformation test." Ans. 5. According to the Examiner:
The claims are directed to a method or process that does
not transform underlying subject matter (such as an article or
materials) to a different state or thing, nor are the claims tied to
a particular machine. . . . In this case, "the method for training
a baseball pitcher" is not considered to be tied to a particular
machine because it does not require that the method be
implemented by a particular machine. The [S]pecification sets
forth that the training steps can be carried-out by performing a
set of throws for each of a plurality of balls with different
weights. The plurality of balls with different weights is not
considered by this examiner to qualify as a "particular
machine[,]" nor do the plurality of balls transform to another
state. The plurality of balls do not transform a particular article.
The method for training a baseball pitcher falls under "a general
concept" i.e. a teaching concept which requires memorization,
repetition and following instructions. The plurality of balls do
not implement the process steps, but are merely a means upon
which the process operates.
Final Act. 2-3 ( emphasis in original). See also Ans. 3 ("[I]mproving muscle
strength through repetition of training and practice regiment is not
considered patentable subject matter" and "[a] ball traveling through air is
not considered [a] 'transformation."'). We agree.
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Claim 1 does not include an element or combination of elements
sufficient to ensure that the claimed method in practice amounts to
significantly more than the patent-ineligible concept of training by (1) and
(2) with X and Y at (A), (B), and (C) itself. We see nothing in claim 1 that
transforms this concept into an inventive application. The use of balls for X
and Y, which are themselves well known and conventional, does not add
anything significant. At best, the use of balls limits the claimed concept to a
particular field of use. See Affinity Labs, 838 F.3d at 1259 ("[L]imiting the
field of use of the abstract idea to a particular existing technological
environment does not render the claims any less abstract.") ( citing Alice,
134 S. Ct. at 2358). We do not find that claim 1 includes an element or
combination of elements circumscribing the patent-ineligible concept it is
directed to so as to integrate the concept into an inventive application.
We also believe claim 1 raises a preemption concern.
The Supreme Court has characterized preemption as a driving concern
for patent eligibility. See Alice, 134 S. Ct. at 2354 ("See, e.g., Bilski, supra,
at 611-612, 130 S. Ct. 3218 (upholding the patent "would pre-empt use of
this approach in all fields, and would effectively grant a monopoly over an
abstract idea")). See also id. at 2358 ("the pre-emption concern ...
undergirds our § 101 jurisprudence"). Although preemption is not a separate
patent-eligibility test, "[t]he Supreme Court has made clear that the principle
of preemption is the basis for the judicial exceptions to patentability."
Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir.
2015) (citing Alice, 134 S. Ct. at 2354).
The Court in Diehr [ ] drew a distinction between those claims
that "seek to pre-empt the use of' a fundamental principle, on
the one hand, and claims that seek only to foreclose others from
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using a particular "application" of that fundamental principle,
on the other. 450 U.S. at 187, 101 S. Ct. 1048. Patents, by
definition, grant the power to exclude others from practicing
that which the patent claims. Diehr can be understood to
suggest that whether a claim is drawn only to a fundamental
principle is essentially an inquiry into the scope of that
exclusion; i.e., whether the effect of allowing the claim would
be to allow the patentee to pre-empt substantially all uses of
that fundamental principle. If so, the claim is not drawn to
patent-eligible subject matter.
In re Bilski, 545 F.3d at 953. Accordingly, "preemption may signal patent
ineligible subject matter." Ariosa, 788 F.3d at 1379. "What matters is
whether a claim threatens to subsume the full scope of a fundamental
concept, and when those concerns arise, we must look for meaningful
limitations that prevent the claim as a whole from covering the concept's
every practical application." CLS Banklnt'l v. Alice Corp., 717 F.3d 1269,
1281 (Fed. Cir. 2013) (Lourie, J., concurring).
As we explained above under "Claim breadth," claim 1 covers
repeating two arguably similar movements with at least two differently
weighted objects (e.g., balls) of any shape, size or type in three different
positions by anyone or anything under any condition. In effect, claim 1
covers every practical application of (1) and (2) with X and Y at (A), (B),
and (C).
The method of claim 1 is not limited to instances that solve a problem,
for example, "reducing the risk of injury while enhancing performance."
Spec. ,r 78. Rather, claim 1 is so broadly claimed that it amounts to no more
than a series of instructions to be performed for any reason. The effect is to
tie up anyone or anything from performing the recited steps for any purpose
at all. Claim 1 would foreclose all future applications of steps (1) and (2)
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with objects X and Y at positions (A), (B), and (C), be they innovative or
not, and therefore is not patent-eligible. Cf Mayo, 566 U.S. at 86-87:
And so there is a danger that the grant of patents that tie up
their use will inhibit future innovation premised upon them, a
danger that becomes acute when a patented process amounts to
no more than an instruction to "apply the natural law," or
otherwise forecloses more future invention than the underlying
discovery could reasonably justify. See generally Lemley,
Risch, Sichelman, & Wagner, Life After Bilski, 63 Stan. L.
Rev. 1315 (2011) (hereinafter Lemley) ( arguing that § 101
reflects this kind of concern); see also C. Bohannan & H.
Hovenkamp, Creation without Restraint: Promoting Liberty and
Rivalry in Innovation 112 (2012) ("One problem with [process]
patents is that the more abstractly their claims are stated, the
more difficult it is to determine precisely what they cover.
They risk being applied to a wide range of situations that were
not anticipated by the patentee"); W. Landes & R. Posner, The
Economic Structure of Intellectual Property Law 305-306
(2003) (The exclusion from patent law of basic truths reflects
"both ... the enormous potential for rent seeking that would be
created if property rights could be obtained in them and ... the
enormous transaction costs that would be imposed on would-be
users [of those truths]").
The presence here of the basic underlying concern that these
patents tie up too much future use of laws of nature simply
reinforces our conclusion that the processes described in the
patents are not patent eligible, while eliminating any temptation
to depart from case law precedent.
Appellant's arguments regarding the Alice step one determination
The arguments set forth on pages 3-7 of the Appeal Brief relating to
the procedure for determining whether claimed subject matter is patent-
ineligible for falling in the judicial-exceptions under 35 U.S.C. § 101 as to
Alice's two-step analytical framework are fully addressed above.
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On page 7 of the Appeal Brief ("ii. Even if the Examiner had
provided aprimafacie subject matter rejection, Claims 1-5 are
patentable under Step 1 of Mayo"), the Appellant begins with a reiteration
of what is required for a determination under step one of the Alice
framework. We have no disagreement with what is said there.
Appellant argues claims 1-5 neither fall within any of the four
categories of abstract ideas (i.e., (1) Fundamental economic practices, (2)
Certain Methods of Organizing Human Activity, (3) An Idea Of Itself, and
( 4) Mathematical relationships/formulas) nor resemble any of the cases cited
by the Examiner. App. Br. 7. We disagree for the reasons discussed above.
Claim 1 is appropriately considered as directed to a certain method of
organizing human activity, which due to its breadth, resembles the cited
cases for the concern over the claims' degree of preemption of future
innovation.
Appellant argues, "[c]laims 1-5 disclose a personally adaptive
therapeutic program that provides exemplary benefits of increased arm
strength, health, and pitching speed .... This therapeutic method, therefore,
is not an abstract idea." App. Br. 7-8. This is not an accurate
characterization of what the claims describe. There is nothing in the claim
language about a "personally adaptive therapeutic program." As discussed
earlier, the claims describe a series of steps instructing how to train; that is,
performing steps (1) and (2) with objects X and Y at positions (A), (B), and
(C).
Appellant argues, "[ o ]n the other hand, the claimed subject matter
resembles claims that the Federal Circuit recently deemed 'precisely the type
of claim that is eligible for patenting.' Rapid Litigation Mgmt. v.
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CellzDirect, Inc., No. 15-1570, slip op. at *8 (July 5, 2016) (citing Alice,
134 S. Ct. at 2354)." App. Br. 8. We disagree because there is no similarity.
Rapid Litigation involves "a new and useful method of preserving
hepatocyte cells." Rapid Litigation, 827 F.3d 1042, 1048 (Fed. Cir. 2016).
It is enough in this case to recognize that the claims are simply
not directed to the ability of hepatocytes to survive multiple
freeze-thaw cycles. Rather, the claims of the '929 patent are
directed to a new and useful laboratory technique for preserving
hepatocytes. This type of constructive process, carried out by
an artisan to achieve "a new and useful end," is precisely the
type of claim that is eligible for patenting. Alice, 134 S. Ct. at
2354 (quoting Gottschalkv. Benson, 409 U.S. 63, 67, 93 S. Ct.
253, 34 L.Ed.2d 273 (1972)).
Id. "At step one [ ] it is not enough to merely identify a patent-ineligible
concept underlying the claim; we must determine whether that patent-
ineligible concept is what the claim is 'directed to.' Here, the plain claim
language shows that it is not." Id. at 1050. We find no parallel between the
claims in Rapid Litigation and claim 1 discussed above.
No other persuasive arguments have been presented. Thus, Appellant
does not persuade us of error in the Examiner's conclusion under Alice step
one.
Appellant's arguments regarding the Alice step two determination
Appellant asserts that "[a] method that transforms or reduces a
particular article 'to a different state or thing' constitutes patentable subject
matter by adding significantly more." App. Br. 9 ( citing "Diamond v. Diehr,
450 U.S. 175, 184 (1981); Gottschalkv. Benson, 409 U.S. 63, 70 (1972);
2014Interim Guidance, Page 74,624; MPEP §2106."). We agree.
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Although "[t]he machine-or-transformation test is not the sole test for
deciding whether an invention is a patent-eligible 'process,"' "[t]his Court's
precedents establish that the machine-or-transformation test is a useful and
important clue, an investigative tool, for determining whether some claimed
inventions are processes under [section] 101." Bilski v. Kappas, 561 U.S.
593, 604 (2010). See also Benson, 409 U.S. at 70 ("Transformation and
reduction of an article 'to a different state or thing' is the clue to the
patentability of a process claim that does not include particular machines.").
It is appropriate to consider (as the Examiner did) the machine-or-
transformation test in reaching a determination under step two.
While the Supreme Court has held that the machine-or-
transformation test is not the sole test governing § 101 analyses,
Bilski, 561 U.S. at 604, 130 S. Ct. 3218, that test can provide a
"useful clue" in the second step of the Alice framework, see
Bancorp Servs., L.L.C. v. Sun Life Assurance Co. of Can.,
687 F.3d 1266, 1278 (Fed. Cir. 2012) (holding that the
machine-or-transformation test remains an important clue in
determining whether some inventions are processes under
§ 101), cert. denied, 573 U.S.--, 134 S. Ct. 2870, 189 L. Ed.
2d 832 (2014). A claimed process can be patent-eligible under
§ 101 if: "( 1) it is tied to a particular machine or apparatus, or
(2) it transforms a particular article into a different state or
thing." In re Bilski, 545 F.3d 943, 954 (Fed. Cir. 2008) (en
bane), aff'd on other grounds, Bilski, 561 U.S. 593, 130 S. Ct.
3218.
Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 716 (Fed. Cir. 2014).
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But here we fail to see in the claims any particular article being
transformed 8 or reduced "to a different state or thing." Appellant argues that
"[c]laims 1-5 transform[] a pitcher's shoulder and transform[] the ball's
position and velocity." App. Br. 10.
The shoulder-transformation argument, however, is not commensurate
in scope with what is claimed. For the reasons explained above in the
"Claim construction" section, the claims are not limited to training a pitcher,
let alone training that impacts a pitcher's shoulder. Claim 1 does not recite a
"pitcher's shoulder" "pitching arm" "user's arm" "decelerator muscles" or
' ' ' '
"accelerator muscles," which are alleged to be transformed.
The ball-transformation argument (id. at 10-11) is also unpersuasive.
We do not see how changing a ball's position or velocity transforms or
reduces the ball "to a different state or thing." Unlike in Diehr, where "[t]he
process operated on a computerized rubber curing apparatus and transformed
raw, uncured rubber into molded, cured rubber products" (In re Bilski,
545 F.3d at 954), the raw material here (i.e., the ball) is not "transformed."
The ball remains the same. Notably, the central purpose of the claimed
training method is not to transform a ball.
This transformation must be central to the purpose of the
claimed process. But the main aspect of the transformation test
that requires clarification here is what sorts of things constitute
"articles" such that their transformation is sufficient to impart
patent-eligibility under § 101. It is virtually self-evident that a
8 "Transform" is ordinarily defined as "a: to change in composition or
structure[;] b: to change the outward form or appearance of[;] c: to change in
character or condition: CONVERT." Merriam-Webster.com accessed
June 11, 2018.
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process for a chemical or physical transformation of physical
objects or substances is patent-eligible subject matter.
Id. at 962.
Appellant contends:
Claim 1 adds the specific limitation of "holding the ball
throughout the throw" to the first throw modality, which was
not well-understood, not routine, and not conventional in the
field at the time of the invention. Moreover, "holding the ball
throughout the throw" adds an unconventional step that
confines the claim to a particular useful exemplary application,
namely providing therapy to a pitcher's arm to make it stronger,
healthier, and to throw faster. Nowhere in the cited art is this
first throw modality taught, nor is there any teaching of a
method comprising both the first and second throw modalities.
Baseball is a multi-billion dollar sport with elaborate training
and rehabilitation programs for youths and professionals alike;
however, this two throw modality was never a part of any
routine program prior to invention by Applicant.
App. Br. 11.
We are unpersuaded. There are a number of problems with this
contention and the associated arguments (id. at 11-12), not the least of
which is that many are not commensurate in scope with what is claimed.
And whether a movement is unconventional or undisclosed in the prior art is
not dispositive of patent eligibility. A finding of novelty or nonobviousness,
for example, does not automatically lead to the conclusion that subject
matter is patent eligible. "Groundbreaking, innovative, or even brilliant
discovery does not by itself satisfy the § 101 inquiry." Ass 'n for Molecular
Pathology, 133 S. Ct. at 2117.
Appellant argues: "Claims 1-5 amount to significantly more than an
abstract idea because they apply the method 'with, or by use of, a particular
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machine.'" App. Br. 12. This argument is premised upon interpreting the
claim phrase "plurality of balls with different weights" as referring to a
"particular machine." That is not correct. "The Supreme Court has defined
the term 'machine' as 'a concrete thing, consisting of parts, or of certain
devices and combination of devices.' Burr v. Duryee, 68 U.S. (1 Wall.) 531,
570 (1863). This 'includes every mechanical device or combination of
mechanical powers and devices to perform some function and produce a
certain effect or result.' Corning v. Burden, 56 U.S. 252, 267 (1853)." In re
Nuijten, 500 F.3d 1346, 1355 (Fed. Cir. 2007). Neither the claims nor the
Specification requires that the balls comprise any parts, and thus, the
claimed balls cannot be properly construed as machines.
Ostensibly as support for its position that a plurality of balls is a
particular machine, Appellant cites Ex parte Bard, Appeal 2011-009704
(PTAB Aug. 22, 2013) and Ex parte Palmer, Appeal 2012-003262 (PTAB
March 02, 2015), two non-precedential decisions in which the Board
reversed rejections under 35 U.S.C. § 101. App. Br. 13. What a different
panel did in a different situation under a different set of facts has little
bearing on how this case should be disposed of. Nevertheless, we do not
find that those decisions support Appellant's contention that "the claimed
'plurality of balls with different weights' satisfies the machine-or-
transformation test" (App. Br. 13). Ex parte Bard involved a method of
training a player via a "foot-shaped support" that "consists of various parts,
including heel, toe, insole and outsole regions and first and second incline
surfaces." Slip op. 5 (emphasis added). Ex parte Palmer involved "a deck
of fifty-six cards comprising the standard fifty-two rank and suit cards with
the addition of four cards of rank '1' in each of the standard suits." Slip op.
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at 2 ( emphasis added). We do not see, and Appellant does not explain, how
"a plurality of balls with different weights" ( claim 1) is comparable to the
particular foot-shaped support at issue in Ex parte Bard or the particular
deck of fifty-six cards with unique card markings that was at issue in Ex
parte Palmer.
In our view, the Federal Circuit's precedential decision in In re Smith,
815 F.3d 816 (Fed. Cir. 2016) is instructive, at least with respect to the
second step of the Alice/Mayo framework. Under step two of Alice/Mayo,
the court noted that "[t]he claims here require shuffling and dealing
'physical playing cards."' Id. at 819. The court concluded that "Li]ust as the
recitation of computer implementation fell short in Alice, shuffling and
dealing a standard deck of cards are 'purely conventional' activities" that do
not amount to an "inventive concept" under Alice/Mayo step two ( citing
Alice, 134 S. Ct. at 2358-59). According to Appellant, Smith is
distinguishable "because the present claims include a non-conventional two
throw modality that includes a first throw where the pitcher holds the ball
throughout the throw and a second throw modality where the pitcher releases
the ball during the throw." Reply Br. 10. But holding a ball for the duration
of a throwing motion and throwing the ball are well-known, routine, and
conventional practice. For example, in a baseball game, pitchers will
sometimes "fake" a throw to a base without releasing the ball ( e.g., when a
runner is leading off from the base).
As discussed above, Appellant's argument that " [ c] laims 1-5 amount
to significantly more than an abstract idea because they improve a
therapeutic process for enhancing the functionality of shoulder muscles"
(App. Br. 14) (emphasis omitted) is not commensurate in scope with what is
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claimed. No other persuasive arguments having been presented, we are not
persuaded of error under Alice step two that claim 1 does not include an
element or combination of elements circumscribing the patent-ineligible
concept it is directed to so as to integrate the concept into an inventive
app li cation.
Accordingly, we find the Examiner's conclusion that representative
claim 1, and claims 2-5 which fall with claim 1, are directed to patent-
ineligible subject matter under 35 U.S.C. § 101 is proper. Cf LendingTree,
LLC v. Zillow, Inc., 656 F. App'x 991, 997 (Fed. Cir. 2016) ("We have
considered all of LendingTree's remaining arguments and have found them
unpersuasive. Accordingly, because the asserted claims of the patents in suit
are directed to an abstract idea and do not present an 'inventive concept,' we
hold that they are directed to ineligible subject matter under 35 U.S.C. §
101.").
In view of the foregoing, we sustain the rejection under § 101.
Because our reasoning departs substantially from that of the Examiner, we
denominate our affirmance as a new ground of rejection.
The rejection of claims 1-5 are rejected under 35 U.S. C. § 102(b) as
anticipated by, or alternatively under 35 U.S.C. § 103(a) as obvious over
"NPL (baseball drills), [and/or] NPL (Weighted ball for baseball drills),"
and Corley.
Anticipation
A claim is anticipated only if each and every element as set forth in
the claim is found, either expressly or inherently described, in a single prior
art reference. Verdegaal Bros. v. Union Oil Co. of California, 814 F .2d 628,
631 (Fed. Cir. 1987). The Examiner has not explained how all of the
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limitations of claims 1-5 are found in a single prior art reference.
Accordingly, the anticipation rejection is not sustained.
Obviousness
A rejection based on 35 U.S.C. § 103 clearly must rest on a factual
basis. The Examiner has the initial burden of supplying the factual basis for
the rejection and may not resort to speculation, unfounded assumptions, or
hindsight reconstruction to supply deficiencies in its factual basis. In re
Warner, 379 F.2d 1011, 1017 (CCPA 1967).
We agree with the Appellant (see App. Br. 20) that the Examiner has
not provided articulated reasoning with rational underpinnings for
combining the cited references to arrive at the claimed invention without
impermissible hindsight. The Examiner does not provide any objective
reason to combine the teachings of the cited references. See In re Kahn,
441 F.3d 977, 988 (Fed. Cir. 2006) ("[R]ejections on obviousness grounds
cannot be sustained by mere conclusory statements; instead, there must be
some articulated reasoning with some rational underpinning to support the
legal conclusion of obviousness.") ( quoted with approval in KSR Int 'l Co. v.
Teleflex Inc., 550 U.S. 398,418 (2007)). As such, we do not sustain the
Examiner's rejection of claim 1 under 35 U.S.C. § 103(a).
For the same reasons, we also do not sustain the rejection of
dependent claims 2-5. Cf In re Fritch, 972 F.2d 1260, 1266 (Fed. Cir.
1992) ("[D]ependent claims are nonobvious if the independent claims from
which they depend are nonobvious.").
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DECISION
The rejection of claims 1-5 under 35 U.S.C. § 101 is affirmed but
denominated as a new ground of rejection.
The rejection of claims 1-5 under 35 U.S.C. § 102(b) is reversed.
The rejection of claims 1-5 under 35 U.S.C. § 103(a) is reversed.
This decision contains a New Ground of Rejection pursuant to
37 C.F.R. § 4I.50(b). 37 C.F.R. § 4I.50(b) provides "[a] new ground of
rejection pursuant to this paragraph shall not be considered final for judicial
review." 37 C.F.R. § 4I.50(b) also provides that Appellant, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new ground of rejection to
avoid termination of the appeal as to the rejected claims:
( 1) Reopen prosecution. Submit an appropriate amendment of
the claims so rejected or new evidence relating to the claims so
rejected, or both, and have the matter reconsidered by the
examiner, in which event the proceeding will be remanded to
the examiner. . . .
(2) Request rehearing. Request that the proceeding be reheard
under§ 41.52 by the Board upon the same record ....
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; 37 C.F.R. § 4I.50(b)
30