10787486 (P.T.A.B. Nov. 28, 2014)

Ex Parte Levin

Patent Trial and Appeal BoardNov 28, 2014

10787486 (P.T.A.B. Nov. 28, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE 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 APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO. 10/787,486 02/24/2004 Robert Levin SES 2539.1.1 6761 2147 7590 12/01/2014 GRACE J FISHEL 2200 WEST PORT PLAZA DRIVE SUITE 202 ST. LOUIS, MO 63146 EXAMINER COLLINS, DOLORES R ART UNIT PAPER NUMBER 3711 MAIL DATE DELIVERY MODE 12/01/2014 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 ROBERT LEVIN ____________________ Appeal 2012-008049 Application 10/787,486 Technology Center 3700 ____________________ Before: STEFAN STAICOVICI, LYNNE H. BROWNE, and THOMAS F. SMEGAL, Administrative Patent Judges. BROWNE, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Robert Levin (Appellant) appeals under 35 U.S.C. § 134 from the Examiner’s decision rejecting claim 1 under 35 U.S.C. § 101 as being directed to non-statutory subject matter. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. CLAIMED SUBJECT MATTER Claim 1, reproduced below, is directed to a method for increasing a student’s vocabulary. Appeal 2012-008049 Application 10/787,486 2 1. An educational method for increasing a student’s vocabulary comprising the steps of: identifying a first expression consisting of a commonly known person, place, thing, event, title, phrase, or quote consisting of one or more words in tangible form; obscuring said words by substituting one or more of said words with lesser known words to form a second expression; presenting the second expression to a student in tangible form to decipher using his vocabulary knowledge of said lesser known words; providing said student with one or more definitions in tangible form of the lesser known words which definitions serve as clues for deciphering the second expression back into the first expression: and, scoring the student based on the number of the definitions in tangible form used to decipher the second expression back into the first expression whereby said student learns the lesser known words and adds them to his vocabulary by actively using said definitions of the lesser known words in deciphering the second expression back into the first expression. OPINION The Examiner determines that “[n]one of the steps [of independent claim 1] are performed by a machine, but rather are performed by a human being.” Ans. 6. The Examiner notes that “the fact that no particular machine is required to perform the claimed method steps, nor do the steps result in any transformation of a particular article [sic], are indicators that applicant is attempting to patent an abstract idea.” Id. The Examiner concludes that “Claim 1 is ineligible subject matter because the claimed limitations include no recitation or insufficient recitation of a machine or transformation, [is] not directed to a proper application of a law of nature, and is just a mere statement of a general concept.” Id. Appeal 2012-008049 Application 10/787,486 3 While Appellant admits that “claim 1 does not satisfy the machine-or- transformation test;” Appellant argues that claim 1 “reads on a practical application of an abstract idea in a manner that does not preempt the abstract idea.” App. Br. 10; Reply Br. 2. In support of this argument, Appellant notes that “[t]he method accomplishes a practical application, i.e., the method produces a ‘useful, concrete and tangible result’ which can be tested: The student may be given an examination to determine whether the new words have in fact been learned.” App. Br. 10. Appellant further admits that “[t]eaching is an abstract idea;” but, then argues that the “method is patentable subject matter because the patent claim is to a practical application of the abstract idea.” App. Br. 11; see also Reply Br. 2. Appellant further argues that “[w]hile no article or physical object is transformed into a different state, the claimed method produces a useful, concrete and tangible result.” App. Br. 11. 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'l., 134 S. Ct. 2347, 2355 (2014) (citing Mayo Collaborative Servs. v. Prometheus Labs, Inc., 132 S. Ct. 1289, 1294 (2012). According to the Supreme Court’s framework, we must first determine whether the claims at issue are directed to one of those concepts (i.e., laws of nature, natural phenomena, and abstract ideas). 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 Appeal 2012-008049 Application 10/787,486 4 ‘sufficient to ensure that the patent in practice amounts to significantly more than a patent upon the [ineligible concept] itself.”’ Id. Claim 1 includes five steps for increasing a student’s vocabulary. These steps include: (1) identifying an expression consisting of commonly known words, (2) substituting one or more words with lesser known words, (3) presenting the expression with the substituted words to a student, (4) providing the student with definitions of the lesser known words, and (5) scoring the student. See App. Br. 12, Clms, App’x. Like the claim at issue in Ultramercial, “[t]his ordered combination of steps recites an abstraction” as it has no particular concrete or tangible form. Ultramercial, Inc. and Ultramercial LLC v. Hulu , LLC and Wildtangent, Inc., 2014 WL 5904902, 4 (Fed. Cir. 2014). Although, the step of scoring the student “add[s] a degree of particularity, the concept embodied by the majority of the limitations describes only the abstract idea” of increasing the student’s vocabulary. Id. Thus, the Examiner correctly determined that the steps of claim 1 are not “performed by a machine, but rather are performed by a human being.” Ans. 6. This determination supports the Examiner’s conclusion that claim 1 is directed to patent-ineligible subject matter. Our reviewing court, relying on Supreme Court precedent, has “consistently ‘refused to find processes patentable when they merely claimed a mental process standing alone and untied to another category of statutory subject matter[,] even when a practical application was claimed.”’ CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1372 (Fed. Cir. 2011) (quoting In re Comiskey, 554 F.3d 967, 980 (Fed. Cir. 2009)). “Such a method that can be performed by human thought alone is merely an abstract idea and is not patent-eligible Appeal 2012-008049 Application 10/787,486 5 under § 101.” Id. at 1373. Thus, in accordance with the first step in the Alice analysis we determine that claim 1 is directed to an abstract idea. “The second step in the [Alice] analysis requires us to determine whether the claims do significantly more than simply describe that abstract method.” Ultramercial at 5 (citing Mayo at 1297). Our reviewing court instructs us that “[w]e must examine the limitations of the claims to determine whether the claims contain an ‘inventive concept’ to ‘transform’ the claimed abstract idea into patent-eligible subject matter. Alice at 2357 (quoting Mayo at 1298). The transformation of an abstract idea into patent- eligible subject matter “requires ‘more than simply stat[ing] the [abstract idea] while adding the words ‘apply it.’” Id. (quoting Mayo at 1294). Those “additional features” must be more than “well-understood, routine, conventional activity.” Mayo at 1298. The limitations of claim 1 do not transform the abstract idea of increasing a student’s vocabulary because the claims simply instruct the practitioner to implement the abstract idea with routine, conventional activity, such as by using paper and pencil. None of the five recited steps viewed “both individually and ‘as an ordered combination,’” transform the nature of the claim into patent-eligible subject matter. See Alice, 134 S.Ct. at 2355 (quoting Mayo, 132 S.Ct. at 1297, 1298). Appellant’s contention that “the method [of claim 1] produces a ‘useful, concrete and tangible result’” because “the students [can] be given an exam[]” (App. Br. 10) is not well taken. Claim 1 makes no reference to any sort of testing including an exam. Moreover, even if an exam were administered, such “post solution” activity would be insufficient to transform the claimed abstract idea into patent-eligible subject matter. Appeal 2012-008049 Application 10/787,486 6 Additionally, although not dispositive, the Examiner correctly determined that claim 1 includes “no recitation or insufficient recitation of a machine or transformation.” Ans. 6. Appellant does not contest this determination. App. Br. 10. According to Supreme Court precedents, “the machine-or-transformation test is a useful and important clue, an investigative tool, for determining whether some claimed inventions are processes under § 101,” but “is not the sole test for deciding whether an invention is a patent-eligible ‘process.”’ Bilski v. Kappos, 130 S. Ct. 3218, 3227 (2010). Claim 1 does not recite any machine, and, as discussed supra, merely recites steps for increasing a student’s vocabulary. Thus, claim 1 does not require any machine implementing a process or a particular transformation of matter. For these reasons, we sustain the Examiner’s decision rejecting claim 1 under 35 U.S.C. § 101 as being directed to patent ineligible subject matter. DECISION The Examiner’s rejection of claims 1 is AFFIRMED. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED Ssc