Ex Parte Mottola

Patent Trial and Appeal Board

Dec 15, 2016

12776938 (P.T.A.B. Dec. 15, 2016)

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.
12/776,938 05/10/2010 Sergio Michelangelo Mottola 10084.0001/P001 3361
24998 7590
Blank Rome LLP
1825 EYE STREET NW
Washington, DC 20006-5403
12/19/2016 EXAMINER
HAIDER, FAWAAD
ART UNIT PAPER NUMBER
3627
NOTIFICATION DATE DELIVERY MODE
12/19/2016 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
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#IPDocketing-DC @BlankRome.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte SERGIO MICHELANGELO MOTTOLA
Appeal 2015-0021541
Application 12/776,93 82
Technology Center 3600
Before HUBERT C. LORIN, JAMES A. WORTH, and
BRUCE T. WIEDER, Administrative Patent Judges.
WORTH, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 1—10, 12—16, 19-21, 73, and 76—78. We have
jurisdiction under 35 U.S.C. §§ 134 and 6(b).
We AFFIRM.
1 Our decision refers to the Appellant’s Appeal Brief (“Appeal Br.,” filed
June 2, 2014) and Reply Brief (“Reply Br.,” filed Dec. 1, 2014), and the
Examiner’s Final Office Action (“Final Act.,” mailed Oct. 7, 2013) and
Answer (“Ans.,” mailed Oct. 1, 2014).
2 According to Appellant, the real party in interest is Ideando Limited
(Appeal Br. 1).
Appeal 2015-002154
Application 12/776,938
Introduction
Appellant’s disclosure relates to “a method and system for ordering,
preparing, managing and pricing food and beverages” (Spec. 1,11. 12—13).
Claims 1,15, 73, and 76 are the independent claims on appeal.
Claim 1, reproduced below, is illustrative of the subject matter on appeal:
1. A computerized method of ordering a meal based
on calculation and comparison of nutritional values of the
meal, the method comprising:
(a) providing a database comprising:
records representative of a plurality of food or
beverage ingredients;
records representative of values of at least two
nutritional principals of a reference amount of each
ingredient; and
records representative of a plurality of recipes,
wherein at least one ingredient is associated with each
recipe; these records allowing a user to build an order for
a meal including at least one recipe and at least two
ingredients;
(b) providing a user interface operationally
connected to said database and programmed for
displaying nutritional information and for receiving the
order for the meal;
(c) using the user interface to receive a selection of
at least one recipe;
for each selected recipe, (d) using the user interface
to receive a user selection of at least one ingredient to be
a part of said recipe;
for each selected ingredient (e) using the user
interface to receive an amount thereof; steps (d) and (e)
being performed until a proposed order for a meal is
created comprising at least two ingredients;
for each selected ingredient, (f) using a processor to
access said database to acquire at least two of said values
of nutritional principles, the nutritional principals for
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which values are acquired being the same nutritional
principals for all the selected ingredients;
(g) using the processor to calculate at least two total
nutritional values, each total nutritional value being given
by a summation of terms, each term corresponding to one
of the selected ingredients, and each term being
calculated by multiplying the respective values of
nutritional principals acquired from the database by the
user’s selected amount of the respective ingredient;
(h) using the user interface to display the total
nutritional values only once steps (c), (d) and (e) have
been performed and said proposed order for a meal is
created, and before the user interface can be used to
receive a finalized order for a meal;
for the proposed order for a meal i) using the user
interface to receive a user selection of whether to
maintain the proposed order for a meal as a finalized
order for a meal or whether to change it;
for any changes to the proposed order for a meal (j)
using the user interface to receive a user selection of at
least one ingredient to be changed and/or to receive a
user selection of at least one ingredient amount to be
changed; step (j) being performed until a modified order
for a meal is created; for said modified order for a meal
repeating steps (f) and (g), and using the user interface to
display at least one modified total nutritional value; steps
(i) and (j) being repeated until a finalized order for a meal
is created; and
(k) using the user interface to receive said finalized
order for a meal.
(Appeal Br., Claims App.)
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Application 12/776,938
Rejections on Appeal
The Examiner maintains, and Appellant appeals, the following
rejections:
I. Claims 1—10, 12—16, 19-21, 73, and 76—78 stand rejected
under 35 U.S.C. § 101 as claiming an abstract idea.3,4
II. Claims 1—4, 9—10, 12, 14—16, 19-21, 73, 76, and 77 stand
rejected under 35 U.S.C. § 103(a) as being unpatentable
over Dunaway, Jr. (US 2002/0026363 Al, pub. Feb. 28,
2002), Kim (US 2004/0193495 Al, pub. Sept. 30, 2004),
and Kuang (US 2008/0033827 Al, pub. Feb. 7, 2008).3 4 5
III. Claims 5—8, 13, and 78 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Dunaway, Kim,
Kuang, and Cox (US 2003/0076983, pub. Apr. 24, 2003).
ANAFYSIS
Rejection I (Unpatentable subject matter)
The Examiner determines that “[t] claim(s) is/are directed to the
abstract idea of ordering a meal, a fundamental business practice,” that the
claims amount to no more than mere instructions to implement the idea on a
3 This rejection is set forth in the Answer pursuant to the procedures for a
new ground of rejection in the Answer.
4 The Answer does not enumerate the claim numbers to which this rejection
applies, but based on the language of the rejection and the context, we
understand the rejection to refer to and include all claims on appeal. The
Reply is consistent with this understanding. See Reply 2-4.
5 Claims 4, 14, 15, 21, 73, and 76 were not listed in the heading for this
ground but are understood to be included based on the body of the rejection
for this ground. We consider the omission from the heading as a
typographical error only.
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computer, and that the additional claim elements do not provide meaningful
limitations to transform the abstract idea into a patent eligible application
(Ans. 2-3).
Appellant argues that “the claimed invention is directed to an
integration of significant steps and devices,” i.e., (A) “using [a] user
interface to receive an amount [of a selected ingredient for a selected
recipe],” (B) “using a processor to access [a] database to acquire at least two
[recorded] values of nutritional principles ... the same ... for all the
selected ingredients,” (C) “using the [same] processor to calculate at least
nutritional values,” (D) “using the [same] user interface to display the total
nutritional values only [after certain other steps] have been performed,” and
(E) “using the [same] user interface to receive [a previously-created]
finalized order” (Reply Br. 3).
Although the Examiner may have oversimplified the claimed
invention by characterizing it as ordering a meal, we conclude that the
claimed invention is directed to ordering a meal based on ingredients and
nutritional information. Whether or not this is a fundamental business
practice, as stated by the Examiner, we conclude that the claimed invention
is directed to patent ineligible subject matter under step one of Alice because
the claimed invention is directed to a basic way of organizing human
activity, is based on a mathematical algorithm (i.e., “calculate at least
nutritional values”), and indeed, is directed to mental steps which can be
performed by a person even without a computer. See Alice Corp., Pty. Ltd. v
CLS Bank Inti, 134 S.Ct. 2347, 2355 (2014).
There remains the question under step two of Alice, whether the
additional recitations would transform the claimed invention into patentable
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subject matter. However, we agree with the Examiner inasmuch as the
remaining steps using a computer interface, e.g., “display[ing]” and
“receiv[ing],” do not transform the claims into patentable subject matter, as
argued. We further conclude that the option in step (j) to modify the order
(and re-perform the calculation algorithm of the prior steps) does not
transform the claimed invention into patent-eligible subject matter because
we find that this is a continuation of the algorithmic form.
Appellant further argues that allowance of claims would not
monopolize tools of research or pre-empt any building block of ingenuity
(Reply Br. 3—4). We are unpersuaded by Appellant’s arguments. A
showing of pre-emption is not required for a determination that an idea is
directed to non-patentable subject matter. Ariosa Diagnostics, Inc. v.
Sequenom, Inc., 788 F.3d 1371, 1377 (Fed. Cir. 2015) (“Where a patent’s
claims are deemed only to disclose patent ineligible subject matter under the
Mayo framework, as they are in this case, preemption concerns are fully
addressed and made moot.”).
Therefore, we sustain the Examiner’s rejection under § 101 of claims
1-10, 12-16, 19-21, 73, and 76-78.
Rejections II and III (Obviousness)
Independent claim 1
Appellant’s arguments each fall short, because Appellant attempts to
attack references individually whereas the obviousness rejections are based
on a combination of prior art references. See In re Merck & Co., 800 F.2d
1091, 1097 (Fed. Cir. 1986) (One cannot show non-obviousness by attacking
references individually when the rejection is based on a combination of
references.).
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First, we are unpersuaded by Appellant’s argument that Dunaway fails
to disclose the provision of separate nutritional information for each main
ingredient, as recited in step (f) of independent claim 1, i.e.,
for each selected ingredient, (f) using a processor to access said
database to acquire at least two of said values of nutritional
principles, the nutritional principals for which values are
acquired being the same nutritional principals for all the
selected ingredients;
(Appeal Br. 8). Rather, the Examiner relies on Dunaway in combination
with Kim and Kuang (Final Act. 3—4). In particular, the Examiner relies on
the nutritional information of Kim and Kuang in combination with
Dunaway’s teaching of selecting ingredients. For example, paragraph 64 of
Dunaway describes the selection of ingredients such as chicken, and
paragraphs 74 and 75 of Kuang disclose evaluation of the nutritional
information in the context of a weight control program, and paragraph 15 of
Kim discloses display of nutritional information prior to ordering (at a
“drive-thru”).
Second, we are unpersuaded by Appellant’s argument that the prior
art relied on by the Examiner fails to disclose modifying individual
ingredients (as opposed to modifying whole recipes), as recited in step (j) of
independent claim 1, i.e.,
for any changes to the proposed order for a meal (j) using the
user interface to receive a user selection of at least one
ingredient to be changed and/or to receive a user selection of at
least one ingredient amount to be changed; step (j) being
performed until a modified order for a meal is created
(Appeal Br. 8—10). Appellant asserts that paragraphs 7, 10, 13—16 and 23 of
Kim, relied on by the Examiner, refer to recipes or whole menu items rather
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than ingredients (Appeal Br. 9). However, the Examiner relies on Dunaway
for the teaching of selecting individual ingredients (as above), and of
modifying a recipe. Indeed, Appellant concedes that Dunaway refers to
choosing ingredients at the modification step (Appeal Br. 8). In this
connection, paragraph 63 of Dunaway describes substituting ingredients
when ordering, i.e., modifying an order by changing ingredients.
Third, Appellant argues that Dunaway fails to disclose choosing
ingredients at the initial meal-building step, at step (d) of independent
claim 1. However, as above, paragraph 64 of Dunaway discloses selection
of ingredients at the ordering step, i.e., “[i]f the client has chicken in their
fridge, then it would not be necessary to purchase more chicken. So, the
client would not select chicken from the grocery list.” As such, Dunaway
describes both choosing ingredients at the initial meal-building set-up and
choosing ingredients at the modifications step.
Fourth, Appellant argues that Dunaway fails to disclose the database
providing steps of independent claim 1, i.e.,
providing a database comprising: records representative of a
plurality of food or beverage ingredients; [and] records
representative of values of at least two nutritional principals
[sic, principles] of a reference amount of each ingredient
(Appeal Br. 7). However, as above, the Examiner relies on Kim and Kuang
for the teaching of nutritional information, in combination with Dunaway’s
selection of ingredients.
Fifth, Appellant argues that paragraphs 72 and 75 of Kuang fails to
disclose calculating two total nutritional values as recited in step (g) of
independent claim 1, i.e.,
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(g) using the processor to calculate at least two total nutritional
values, each total nutritional value being given by a summation
of terms, each term corresponding to one of the selected
ingredients, and each term being calculated by multiplying the
respective values of nutritional principals acquired from the
database by the user's selected amount of the respective
ingredient;
(Appeal Br. 7). However, paragraph 64 of Dunaway describes selection of
more than one ingredient, and Kuang is relied on for the corresponding
nutritional information. For example, paragraph 75 of Kuang states that the
cashier machine 100 will look up the nutrition information in the
storage/memory 102b, and sum up the total nutrition facts for each order,
and will print the nutrition facts information in a certain format on the
receipt or order ticket.
Further, we agree with the Examiner that it would have been obvious
to a person of ordinary skill in the art to have combined the teachings of
Dunaway regarding ordering food with the teaching of Kim and Kuang
regarding nutritional information in order to consider nutritional information
before finalizing an order and in order to promote diet control, as suggested
by Kim (Abstract) and Kuang (Abstract) (see Final Act. 3 4). Therefore, we
sustain the Examiner’s rejection of independent claim 1.
Claims 2—10, 12—16, 19—21, 73, and 76—78
Appellant does not argue the rejections under § 103 of claims 2—10,
12—16, 19-21, 73, and 76—78 separately from that of independent claim 1.
Therefore, we sustain the Examiner’s rejection of claims 2—10, 12—16, 19—
21, 73, and 76—78, for similar reasons as for independent claim 1.
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DECISION
The Examiner’s decision to reject claims 1—10, 12—16, 19-21, 73, and
76—78 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)(l)(iv).
AFFIRMED
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