Ex Parte Sims

Patent Trials and Appeals Board

Jun 20, 2019

14134296 - (D) (P.T.A.B. Jun. 20, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
14/134,296 12/19/2013 William Sims JR.
19148 7590 06/20/2019
Shumaker, Loop & Kendrick, LLP
101 South Tryon Street
Suite 2200
Charlotte, NC 28280-0002
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.
5062/lUS-A 1965
EXAMINER
HONG, THOMAS J
ART UNIT PAPER NUMBER
3715
MAIL DATE DELIVERY MODE
06/20/2019 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 WILLIAM SIMS JR.
Appeal2017-009221
Application 14/134,2961
Technology Center 3700
Before PHILIP J. HOFFMANN, BRUCE T. WIEDER, and
TARA L. HUTCHINGS, Administrative Patent Judges.
HOFFMANN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant appeals from the
Examiner's rejection of claims 1-18. We have jurisdiction under 35 U.S.C.
§ 6(b).
We AFFIRM.
According to Appellant, the "invention relates to the field of
employee incentives[,] and in particular to a method of incentivizing and
rewarding employees whereby incentive rewards are presented to employees
after they ... satisfactorily perform actions that the employer wants to
1 Appellant identifies The Bill Sims Company, Inc. as the real party in
interest. Appeal Br. 4.
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Application 14/134,296
incentivize." Spec. 1. Claims 1 and 10 are the independent claims on
appeal. Below, we reproduce claim 1 as illustrative of the appealed claims.
1. A method of training employees comprising:
Step 1) providing an observer of an employee with a
plurality of you-did-it-right cards wherein each of the you-did-it-
right cards is a tangible card that is associated with a unique
identifier, with a training metric, and with the observer;
Step 2) providing the observer and the employee with an
interactive input device linked to a network system computer;
Step 3) observing the employee for demonstration of the
training metric and physically associating the you-did-it-right
card with the employee by the observer;
Step 4) using the you-did-it-right card to access the
interactive input device; [ and]
Step 5) calculating a value and type of reward, wherein the
reward is tangible, to be given to the observer and to the
employee based on the association of the you-did-it-right card
with the employee and also based on the unique identifier, by the
network system computer.
REJECTIONS AND PRIOR ART
The Examiner rejects the claims as follows:
I. Claims l-18under35U.S.C. § 101 asrecitingonlypatent-
ineligible subject matter; and
II. Claims 1-18 under 35 U.S.C. § 103(a) as unpatentable over
Gardenswartz (US 2008/0103910 Al, pub. May 1, 2008),
Thorp (US 2009/0224924 Al, pub. Sept. 10, 2009), and
WIKIPEDIA, Unique Identifier (May 12, 2008),
http://web.archive.org/web/2008051209 l 630/http://en.wikipedi
a.org/wiki/Unique _identifier("Wikipedia article").
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PRINCIPLES OF LAW CONCERNING 35 U.S.C. § 101
An invention is patent eligible if it claims a "new and useful process,
machine, manufacture, or composition of matter." 35 U.S.C. § 101. The
Supreme Court has long interpreted 35 U.S.C. § 101 to include implicit
exceptions, however: "[l]aws of nature, natural phenomena, and abstract
ideas" are not patentable. E.g., Alice Corp. Pty. Ltd. v. CLS Bank Int 'l, 573
U.S. 208,216 (2014) (citation omitted).
In determining whether a claim falls within an excluded category, the
Supreme Court's two-step framework, described in Mayo and Alice, guides
us. See id. at 217-18 ( citing Mayo Collaborative Servs. v. Prometheus
Labs., Inc., 566 U.S. 66, 75-77 (2012)). In accordance with that framework,
we first determine what concept the claim is "directed to." Id. at 219 ("On
their face, the claims before us are drawn to the concept of intermediated
settlement, i.e., the use of a third party to mitigate settlement risk."); see also
Bilski v. Kappas, 561 U.S. 593, 611 (2010) ("Claims 1 and 4 in petitioners'
application explain the basic concept of hedging, or protecting against
risk.").
Concepts that the courts determined to be abstract ideas-and, thus,
patent ineligible-include certain methods of organizing human activity,
such as fundamental economic practices (Alice, 573 U.S. at 219-20; Bilski,
561 U.S. at 611); mathematical formulas (Parker v. Flook, 437 U.S. 584,
594-95 (1978)); and mental processes (Gottschalkv. Benson, 409 U.S. 63,
67 (1972)). Concepts that the courts determined to be patent eligible include
physical and chemical processes, such as "molding rubber products"
(Diamond v. Diehr, 450 U.S. 175, 191 (1981)); "tanning, dyeing, making
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water-proof cloth, vulcanizing India rubber, smelting ores" (id. at 182 n. 7
(quoting Corning v. Burden, 56 U.S. (15 How.) 252, 267-68 (1854))); and
manufacturing flour (Benson, 409 U.S. at 69 (citing Cochrane v. Deener, 94
U.S. 780, 785 (1876))).
In Diehr, although the claim at issue recited a mathematical formula,
the Supreme Court held that "[a] claim drawn to subject matter otherwise
statutory does not become nonstatutory simply because it uses a
mathematical formula." Diehr, 450 U.S. at 187; see also id. at 191 ("We
view respondents' claims as nothing more than a process for molding rubber
products and not as an attempt to patent a mathematical formula.").
Nonetheless, the Supreme Court also indicated that a claim "seeking patent
protection for that formula in the abstract ... is not accorded the protection
of our patent laws, ... and this principle cannot be circumvented by
attempting to limit the use of the formula to a particular technological
environment." Id. ( citing Benson and Flook); see, e.g., id. at 187 ("It is now
commonplace that an application of a law of nature or mathematical formula
to a known structure or process may well be deserving of patent
protection.").
If the claim is "directed to" an abstract idea, we tum to the second
step of the Alice and Mayo framework, where "we must examine the
elements of the claim to determine whether it contains an 'inventive
concept' sufficient to 'transform' the claimed abstract idea into a
patent-eligible application." Alice, 573 U.S. at 221 ( citation omitted). "A
claim that recites an abstract idea must include 'additional features' to
ensure 'that the [claim] is more than a drafting effort designed to
monopolize the [abstract idea]."' Id. (quoting Mayo, 566 U.S. at 77).
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"[M]erely requir[ing] generic computer implementation[] fail[ s] to transform
that abstract idea into a patent-eligible invention." Id.
2019 Revised Patent Sub;ect Matter Eligibility Guidance
The U.S. Patent and Trademark Office recently published revised
guidance on the application of§ 101. 2019 Revised Patent Subject Matter
Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019) ("Guidance"). Under
that Guidance, we first look to whether the claim recites:
(1) any judicial exceptions, including certain groupings of
abstract ideas (i.e., mathematical concepts, certain methods of
organizing human activity such as i) a fundamental economic
practice, or ii) managing personal behavior or relationships or
interactions between people, or mental processes); and
(2) additional elements that integrate the judicial exception
into a practical application (see MANUAL OF PATENT EXAMINING
PROCEDURE ("MPEP") § 2106.05(a)-(c), (e)-(h) (9th Ed., Rev.
08.2017, Jan. 2018)).
A practical application "appl[ies], rel[ies] on, or use[s] the judicial exception
in a manner that imposes a meaningful limit on the judicial exception, such
that the claim is more than a drafting effort designed to monopolize the
judicial exception." Guidance, 84 Fed. Reg. at 54.
Only if a claim (1) recites a judicial exception and (2) does not
integrate that exception into a practical application, do we then look to
whether the claim either:
(3) adds a specific limitation beyond the judicial exception
which is not "well-understood, routine, [or] conventional" in the
field (see MPEP § 2106.05(d)); or
(4) simply appends well-understood, routine, and
conventional activities previously known to the industry,
specified at a high level of generality, to the judicial exception.
See generally Guidance.
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ANALYSIS
Reiection I
Initially, we note that Appellant argues against the Examiner's
rejection of the claims as ineligible for patenting as a group. See Appeal
Br. 25-37. We choose independent claim 1 for our analysis, and the
remaining independent and dependent claims stand or fall with claim 1.
See 37 C.F.R. § 41.37 (c)(l)(iv). For the following reasons, we sustain the
Examiner's rejection of the claims as patent-ineligible.
As discussed below, we determine that in accordance with point (1) of
the Guidance referenced above, independent claim 1 recites at least one
judicial exception, including an abstract idea. More specifically, as
described in further detail, the abstract idea includes certain methods of
organizing human activity, such as a fundamental economic practice, and
such as managing personal behavior or relationships or interactions between
people.
As set forth above, claim 1 recites the following: (A) "A method of
training employees comprising": (B) "providing an observer of an employee
with a plurality of you-did-it-right cards wherein each of the you-did-it-right
cards is a tangible card that is associated with a unique identifier, with a
training metric, and with the observer"; (C) "providing the observer and the
employee with an interactive input device linked to a network system
computer"; (D) "observing the employee for demonstration of the training
metric and physically associating the you-did-it-right card with the employee
by the observer"; (E) "using the you-did-it-right card to access the
interactive input device"; and (F) "calculating a value and type of reward,
wherein the reward is tangible, to be given to the observer and to the
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employee based on the association of the you-did-it-right card with the
employee and also based on the unique identifier, by the network system
computer." Appeal Br., Claims App. (Claim 1 ). Here, each of claim l's
recitations reproduced above, including the claim's preamble (A) as well as
limitations (B)-(E) in the claim's body, involve providing an employee a
tangible award based on the employee's demonstrating a training metric. As
described in Appellant's Specification,
[t]he reward is a valuable offering provided upon the satisfactory
completion of the testing step of a training module. . . . The
reward may be a physical good and it may also be a gift card that
can be redeemed for goods, services, or other employee related
perks such as additional vacation days.
Spec. 9. A transfer of goods for the completion of services is a financial
transaction, which is a fundamental economic practice. See MPEP
§ 2106.04(a)(2)(I)(A); Alice, 573 U.S. at 219-20 ("intermediated settlement"
is a fundamental economic practice, and, thus, an abstract idea); Bilski, 561
U.S. at 611 ("hedging" is a fundamental economic practice, which is an
abstract idea).
Further, each of claim l's recitations reproduced above, including the
claim's preamble (A) as well as limitations (B)-(E) in the claim's body,
involve providing a method of training human employees. As claimed, an
employee receives a tangible reward after an observer observes the
employee demonstrating a training metric. Thus, the claimed method
"incentiviz[ es]" the employee to demonstrate certain behavior. Spec. 1. As
such, the claim recites certain methods of organizing human activity, which,
in this case, includes both managing personal behavior and a fundamental
economic practice. See MPEP § 2106.04(a)(2)(II)(C); Intellectual Ventures
I LLC v. Capital One Bank (USA), 792 F.3d 1363, 1367-68 (Fed. Cir. 2015)
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(the Federal Circuit determined that claims directed to "tracking financial
transactions to determine whether they exceed a pre-set spending limit (i.e.,
budgeting)" are "not meaningfully different from the ideas found to be
abstract in other cases before the Supreme Court and our court involving
methods of organizing human activity.").
In accordance with point (2) of the Guidance referenced above,
claim 1 does not recite any additional element that integrates the judicial
exception into a practical application-i.e., something that "appl[ies],
rel[ies] on, or use[ s] the judicial exception in a manner that imposes a
meaningful limit on the judicial exception, such that the claim is more than a
drafting effort designed to monopolize the judicial exception." Guidance, 84
Fed. Reg. at 54. The claim only generically recites the use of certain
physical components and hardware-"you-did-it-right cards," "interactive
input device," and "network computer system"-and, thus, these
components and hardware do not meaningfully limit the claim. Further, in
the Specification, Appellant does not describe the claimed components and
hardware in such a way as to indicate that the components and hardware are
anything other than generic. See, e.g., Spec. 8 (Describing that "The You
Did It Right! card would have an alpha-numeric identifier and also have
fields for the supervisor to fill in such information as the ID number of the
employee observed, the ID number of the supervisor who observed the
employee, the date observed, and check boxes for the behaviors observed in
compliance with the training step."); 9 (Simply referring to "the network
system computer" without providing any details as to its configuration);
13 (Describing "an interactive input response device ... as a computer
terminal.").
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Based on the foregoing, Appellant fails to persuade us that
Appellant's claims are unlike the claims in Bilski and therefore are not
directed to an abstract idea. Appeal Br. 27-29.
Appellant argues that their "computer, like the computer in Diehr, ...
uses ... data to produce a tangible result. In Diehr, the tangible result was a
tire, here it is a physical reward. . . . As such, ... this case is much more
akin to the process held patentable under § 101 by the Supreme Court in
Diehr." Appeal Br. 31. Appellant does not persuade us, however. As
discussed above, in Diehr, the claims recited "a process for molding rubber
products "-i.e., a process for producing a physical component. Appellant's
claim 1 is not directed to such a process. Rather, claim 1 is directed to a
"method of training an employee," which is a method of organizing human
activity, including both managing personal behavior and a fundamental
economic practice, which is, itself, an abstract idea. Appeal Br., Claims
App. (Claim 1 ).
Therefore, claim 1 is directed to the above-discussed abstract idea,
and does not integrate the judicial exception into a practical application.
In accordance with points (3) and (4) of the Guidance referenced
above, claim 1 fails to recite a specific limitation beyond the judicial
exception which is not well understood, routine, and conventional in the
field, but instead simply appends well-understood, routine, and conventional
activities previously known to the industry, specified at a high level of
generality, to the judicial exception. Taking the claim elements separately,
the claimed components and hardware, as well as the functions performed
by the claimed hardware, are purely conventional. Specifically, claim 1 uses
known, generic components to perform their known, basic functions.
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Although, arguably, the data processed and transmitted differs, the claimed
interactive input device and network computer systems are recited only at a
high level of generality. In other words, here the claim recites only well-
understood, routine, and conventional functions. See Elec. Power Grp. v.
Alstom S.A., 830 F.3d 1350, 1353 (Fed. Cir. 2016); see also In re Katz, 639
F.3d 1303, 1316 (Fed. Cir. 2011) ("Absentapossiblenarrowerconstruction
of the terms 'processing,' 'receiving,' and 'storing,' ... those functions can
be achieved by any general purpose computer without special
programming.").
Considered as an ordered combination, claim 1 's hardware does not
add anything that is not already present when we consider the steps
separately. Further, claim 1 does not affect an improvement in any
technology or technical field. As stated above, claim 1 recites a card, an
input device, and a network that are known, generic components. Thus, the
claim amounts to nothing significantly more than instructions to apply the
abstract idea with generic hardware, and does not improve the card, input
device, or network. Accordingly, the claim recitations are insufficient to
transform the abstract idea into a patent-eligible invention. See Alice, 573
U.S. at 225-26.
We have considered Appellant's argument distinguishing Appellant's
claims from the claims in In re Smith, 815 F.3d 816 (Fed. Cir. 2016).
Appeal Br. 32-34. Appellant's argument is not persuasive, however.
Appellant's claim 1 is not directed to a game using a new or original deck of
cards, but, rather, is directed to a "method of training an employee," which
is, itself, an abstract idea. Appeal Br., Claims App. (Claim 1 ).
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Therefore, based on the foregoing, we sustain the Examiner's § 101
rejection of independent claim 1. Inasmuch as the remaining claims stand or
fall with claim 1, we also sustain the rejection of claims 2-18.
Reiection II
As set forth above, the Examiner rejects claims 1-18 as obvious
based, in part, on Thorp. See, e.g., Answer 2-3. Thorp was filed on July 1,
2008, but claims priority to "Provisional application No. 61/068,746, filed
on Mar[ch] 10, 2008." Thorp 1. In response to Appellant's argument that
"Thorp ... does not receive the benefit of the provisional filing date"
(Appeal Br. 22), the Examiner determines that, in this case, the relevant date
for Thorp is July 1, 2008 (Answer 11 ).
Nonetheless, the Examiner determines that "Thorp ... is ... prior art
because Appellant lose[ s] the benefit of priority date back to its earliest PCT
Application by claiming subject matter newly added in [a] later-filed
[c]ontinuation-in-part application," and, accordingly, Appellant's claims are
obvious. Answer 10. More specifically, according to the Examiner,
[Appellant's] claims ... [recite] "calculating a value and type of
reward ... to be given to the" observer ( claim 1 )/supervisor
( claim 10) "based on the ... card," which is newly introduced in
[the] CIP Application. That is, [the] disclosure of [the]
prior[-]filed PCT application does not provide support for the
claimed "calculating" step. Indeed, the PCT application
discloses rewarding an employee satisfactorily performing
trained actions but nothing to do with rewarding
supervisor/employer/person who observes the employee. See
PCT Application ,-J[]0002 (stating "The present invention relates
to the field of employee incentives and in particular to a method
of incentivising and rewarding employees whereby incentive
coupons are presented to employees after they satisfactorily
complete a training module, meet health/fitness goals, or
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otherwise satisfactorily perform actions that the employer wants
to incentivise.")[.] As no concept of rewarding the observing
person/supervisor is presented [in the PCT application], it is
reasonable to determine that the calculating value and type of
non-existing reward to the observer/supervisor was never
disclosed. Given the determination, this application cannot take
the benefit of the priority date as [ ofJ its PCT filing date. As a
result, the earliest priority date, at best, is the filing date of the
CIP Application, 2/17/2009. Because the[§] 102(e) date of the
Thorp reference is 7/1/2008, the Thorp reference antedates this
application and constitutes prior art.
Answer 11-12 ( emphases added). For the reasons discussed below, we
agree with Appellant that the PCT application provides support for
rewarding the observer, however. Therefore, inasmuch as the Examiner fails
to support the determination that Appellant is not entitled to the PCT filing
date, we do not sustain the rejection.
Appellant argues that paragraph 29 of PCT application no.
PCT/US08/68912, publication no. WO 2009/006474 A2, filed on July 1,
2008, provides support for rewarding the observer. Reply Br. 5. We
reproduce this paragraph in its entirety, below, with emphases added.
Another way the you-did-it-right card concept may be
used is in a peer review situation where peer employees (instead
of supervisors) review positive or negatives implementations of
the instruction step. Here, the incentive company would provide
the client company with the you-did-it-right cards and associated
potential rewards to reward to incentivise successful
identification of successes and/or failures to following the
training step. The client company distributes the you-did-it-
right cards to employees, the employees observe their peers, and
describe safety hazards and mistakes and/or successes of other
employees. The employees. having filled out their you-did-it-
right card would then access a computer terminal, enter the you-
did-it-right card data identifying the safety hazards created by
others or the successes of others, enter the alpha-numeric
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identifier, receive a reward, and redeem the reward at a retail
location. The retail center then seeks reimbursement (as
necessary such as for the coupon embodiment) from either the
third party card provider or the incentive company as
necessitated by the particular embodiment. The incentive
company then receives information entered into the terminal by
the employee from the card regarding the peer and workplace
review by the employee of the other employees. Communicating
with the retail center or the third party card provider, the
incentive company also receives data regarding the respective
redemptions of rewards. The incentive company then
aggregates, analyzes, and reports the data to the client company,
thereby allowing the company to have a record of success and
failures while allowing whistle blowers the benefit of anonymity.
PCT publication no. WO 2009/006474 A2 ,-J 29. This portion of the PCT
application/publication describes rewarding the peer reviewer, whether the
reviewer is a supervisor or peer employee.
DECISION
We AFFIRM the Examiner's rejection of claims 1-20 under
35 U.S.C. § 101.
We REVERSE the Examiner's rejection of claims 1-20 under
35 U.S.C. § 103.
No time period for taking any subsequent action in connection with
this appeal may be extended under 3 7 C.F .R. § 1.13 6( a).
AFFIRMED
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