Ex Parte Smith

Patent Trial and Appeal Board

Mar 30, 2018

13163585 (P.T.A.B. Mar. 30, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/163,585 06/17/2011 Ryan Smith
145572 7590 04/02/2018
MCCOY RUSSELL LLP
806 SW BROADWAY
SUITE 600
PORTLAND, OR 97205-3335
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.
SPNl 1301 9997
EXAMINER
HONG, THOMAS J
ART UNIT PAPER NUMBER
3715
MAILDATE DELIVERY MODE
04/02/2018 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 RY AN SMITH
Appeal 2016-001626
Application 13/163,585
Technology Center 3700
Before JAMES P. CALVE, BRANDON J. WARNER, and
BRADLEY B. BAY AT, Administrative Patent Judges.
WARNER, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Ryan Smith ("Appellant") 1 appeals under 35 U.S.C. § 134(a) from the
Examiner's decision rejecting claims 1-17 and 19-21, which are all the
pending claims, under 35 U.S.C. § 101 as being directed to patent-ineligible
subject matter. See Appeal Br. 9--46; Final Act. 2--4. We have jurisdiction
over the appeal under 35 U.S.C. § 6(b). An oral hearing was held on
January 10, 2018.
We AFFIRM.
According to Appellant, the real party in interest is Spinning Plates,
LLC. Appeal Br. 3.
Appeal 2016-001626
Application 13/163,585
CLAIMED SUBJECT MATTER
Appellant's disclosed invention "relates in general to an electronic
cookbook, and in particular to a method and system for planning upcoming
meals and shopping for ingredients," by "record[ing] user preferences for
given recipes or sets of recipes, and plan[ ning] upcoming meals according to
those preferences." Spec. i-f 1. Claims 1, 14, and 17 are independent.
Claim 1, reproduced below with emphasis added, is illustrative of the subject
matter on appeal.
1. A method for meal planning carried out by a logic
subsystem with physical, non-transitory devices configured to
hold data and instructions executable by the logic subsystem,
compnsmg:
receiving a digital representation of a user's meal
preferences, the user's meal preferences including a user-
defined meal frequency setting configurable to include a first,
more frequent setting, a second, less frequent setting, and a
third, even less frequent setting, as specified by the user, the
logic subsystem receiving the digital representation;
automatically generating, via the logic subsystem, a meal
plan including a plurality of separate meals based on the user's
meal preferences, each meal including a recipe, wherein the
user-defined meal frequency settings are specific to particular
recipes indicating how often a particular recipe is to reoccur in
the meal plan; and
displaying, via a user interface of the logic subsystem,
information to the user including the automatically generated
meal plan,
wherein the user-defined meal frequency setting specifies
a relative frequency for distinct recipes to occur in the meal
plan, the relative frequency including how often a selected
recipe re-occurs, and where the user's meal preferences further
include time of year settings that are specific to particular
recipes, where the particular recipe is available to be selected in
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Application 13/163,585
meal slots that occur only during a designated time of year, and
where the automatic generation of the meal plan populates the
plan more often with recipes having a user-selected higher
frequency preference than recipes with a user-selected lower
frequency preference and further based on a current time of a
calendar year, where the user's selections are received through
the user interface and where the physical, nontransitory devices
include memory including a recipe database that includes a
collection of recipes, including the user-defined meal frequency
settings and the particular and distinct recipes.
PRINCIPLES OF LAW
A patent may be obtained for "any new and useful process, machine,
manufacture, or composition of matter, or any new and useful improvement
thereof." 35 U.S.C. § 101. The Supreme Court has consistently held that
this provision contains an important implicit exception: laws of nature,
natural phenomena, and abstract ideas are not patentable. See Alice Corp. v.
CLS Banklnt'l, 134 S. Ct. 2347, 2354 (2014); Gottschalkv. Benson, 409
U.S. 63, 67 (1972) ("Phenomena of nature, though just discovered, mental
processes, and abstract intellectual concepts are not patentable, as they are
the basic tools of scientific and technological work.").
Notwithstanding that a law of nature or an abstract idea, by itself, is
not patentable, an application of these concepts may be deserving of patent
protection. See Mayo Collaborative Servs. v. Prometheus Labs., Inc., 132
S. Ct. 1289, 1293-94 (2012). In Mayo, the Court stated that "to transform
an unpatentable law of nature into a patent-eligible application of such a
law, one must do more than simply state the law of nature while adding the
words 'apply it."' Mayo, 132 S. Ct. at 1294 (citation omitted).
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In Alice, the Court reaffirmed the framework set forth previously in
Mayo "for distinguishing patents that claim laws of nature, natural
phenomena, and abstract ideas from those that claim patent-eligible
applications of those concepts." Alice, 134 S. Ct. at 2355. The first step in
the analysis is to "determine whether the claims at issue are directed to one
of those patent-ineligible concepts." Id. If the claims are directed to a
patent-ineligible concept, then the second step in the analysis is to consider
the elements of the claims "individually and 'as an ordered combination"' to
determine whether there are additional elements that "'transform the nature
of the claim' into a patent-eligible application." Id. (quoting Mayo, 132
S. Ct. at 1298, 1297).
In other words, the second step is to "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
on the [ineligible concept] itself."' Id. (brackets in original) (quoting Mayo,
132 S. Ct. at 1294). The prohibition against patenting an abstract idea
"cannot be circumvented by attempting to limit the use of the formula to a
particular technological environment or adding insignificant postsolution
activity." Bilski v. Kappas, 561 U.S. 593, 610-11 (2010) (citation and
internal quotation marks omitted). The Court in Alice noted that "[ s ]imply
appending conventional steps, specified at a high level of generality," was
not "enough" [in Mayo] to supply an "'inventive concept."' Alice, 134
S. Ct. at 2357 (quoting Mayo, 132 S. Ct. at 1300, 1297, 1294).
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ANALYSIS
The claimed invention at issue here is directed to methods and
systems for generating an individualized meal plan using a logic subsystem,
based on certain data inputs and user-defined preferences, and then
displaying that information via an interface, such as on a mobile application.
See Appeal Br., Claims App. In other words, the claims are directed to
receiving data (namely, a digital representation of a user's meal preferences,
including details such as selectable frequency settings), manipulating the
data (generation of the meal plan), and then outputting the result (display of
information to the user including the meal plan), all implemented on a
computer (logic subsystem). See id.
The Examiner determines that the claims are directed to patent-
ineligible subject matter because, considering all elements both individual
and in combination, the claims "do not amount to significantly more than an
abstract idea." Final Act. 3. Further, the Examiner explains that the
elements of the claims other than the abstract idea amount to no more than
mere instructions to implement the idea on a computer. See id. at 3--4. In
light of the principles above, and for the reasons discussed below, we agree
with the Examiner's conclusion that the claims are directed to patent-
ineligible subject matter.
Appellant argues that the structure of the claims-namely, generating
a meal plan via a logic subsystem---ensures that the claims are directed to
more than an abstract idea. See Appeal Br. 11-22. Appellant also argues
that the use of the logic subsystem to implement the method recited includes
"significantly more" than an abstract idea, sufficient to transform any
abstract idea into eligible subject matter. See id. at 22-24. Finally,
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Appellant takes issue with the form of the rejection as being insufficient.
See id. at 24--46. We are not persuaded by Appellant's arguments.
In the first step of the Alice analysis, "the decisional mechanism
courts now apply is to examine earlier cases in which a similar or parallel
descriptive nature can be seen-what prior cases were about, and which way
they were decided." Amdocs (Israel) Ltd. v. Openet Telecom, Inc., 841 F.3d
1288, 1294 (Fed. Cir. 2016), cert. denied, 138 S. Ct. 469 (2017) (citing Elec.
Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1353-54 (Fed. Cir. 2016).
To this end, the Examiner calls attention to DietGoal Innovations LLC v.
Bravo Media LLC, 599 F. App'x 956 (Fed. Cir. 2015) (affirming 33 F. Supp.
3d 271, 275 (S.D.N.Y. 2014)), where the Federal Circuit already considered
claims similar or parallel to structure of this type-namely, "a computerized
method and system for diet-related behavior analysis, training, and
planning" (33 F. Supp. 3d at 273; see id. at 273-75}-and affirmed a
determination of patent-ineligibility for similarly structured claims directed
to computerized meal planning. Ans. 4---6.
Appellant does not apprise us of a meaningful distinction in the form
or type of the claims between those presently recited and those previously
adjudicated in DietGoal. Moreover, regarding recitation in the claims of
specific data (e.g., a user's meal preferences, including details such as
selectable frequency settings), the Federal Circuit has recognized that
limiting information to particular content does not change its character as
information, which remains within the realm of abstract ideas. Elec. Power
Grp., 830 F.3d at 1353 ("Information as such is an intangible."). Rather,
Appellant appears to focus on the second step of the Alice analysis, urging a
limited reading of DietGoal and asserting that the present claims are
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Application 13/163,585
different because of the particular data used in the generation of the meal
plan. See Reply Br. 2-5.
As to the second step of the Alice analysis, however, regardless of
particularities of the data used, the Federal Circuit has held claims patent-
ineligible as directed to an abstract idea when they merely collect
information, analyze it, and display certain results, as to the claims in the
present case. See, e.g., Elec. Power Grp., 830 F.3d at 1353-54 (holding that
"collecting information, analyzing it, and displaying certain results of the
collection and analysis" are "a familiar class of claims 'directed to' a patent-
ineligible concept," and explaining that the claims were not patent eligible
because "[t]he advance they purport to make is a process of gathering and
analyzing information of a specified content, then displaying the results, and
not any particular assertedly inventive technology for performing those
functions"); Digitech Image Techs., LLC v. Elecs.for Imaging, Inc., 758
F.3d 1344, 1351 (Fed. Cir. 2014) (holding that, without additional
limitations, a process that employs algorithms to manipulate existing
information to generate additional information is not patent eligible).
Appellant's attempts to "'transform the nature of the claim' into a patent-
eligible application" are unpersuasive and unsupported by evidence in the
record. Accord Alice, 134 S. Ct. at 2355 (quoting Mayo, 132 S. Ct. at 1297).
Further, to the extent that Appellant suggests that the alleged novelty
of some particularities of the data used to generate the meal plan (e.g., "a
combination of time of year specific to particular recipes and frequency
settings for how often distinct recipes occur in the plan") should indicate that
the claims are transformed into patent-eligible subject matter, this suggestion
is misplaced. Reply Br. 3; see id. at 3---6. A finding that claims are novel in
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light of an absence of evidence does not conflict with the Examiner's
conclusion of ineligibility under § 101 because "a claim for a new abstract
idea is still an abstract idea." Synopsys, Inc. v. Mentor Graphics Corp., 839
F.3d 1138, 1151 (Fed. Cir. 2016) (citing Mayo, 132 S. Ct. at 1304).
Whether the claimed concept is "[g]roundbreaking, innovative, or even
brilliant ... does not by itself satisfy the § 101 inquiry." Ass 'n for
Molecular Pathologyv. Myriad Genetics, Inc., 133 S. Ct. 2107, 2117 (2013).
Consequently, under the second step of the Alice analysis, an abstract idea
does not transform into an eligible inventive concept just because the
Examiner has not found prior art that discloses or suggests it. Indeed, "[ t ]he
'novelty' of any element or steps in a process, or even of the process itself, is
of no relevance in determining whether the subject matter of a claim falls
within the§ 101 categories of possibly patentable subject matter." Diamond
v. Diehr, 450 U.S. 175, 188-89 (1981).
Given the binding precedent of our reviewing courts, we agree with
the Examiner's ultimate conclusion that the present claims are directed to
patent-ineligible subject matter, particularly in light of the explanation
provided at pages 3-16 of the Examiner's Answer, where the Examiner
applies the principles above.
In short, Appellant does not apprise us of a significant difference in
the form, structure, or substantive content of the recitations, between the
claims recited and those claims already determined to be patent-ineligible by
our reviewing courts. Thus, for this reason and those explained above, we
are obliged to affirm the Examiner's rejection.
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DECISION
We AFFIRM the Examiner's decision rejecting claims 1-17 and
19-21under35 U.S.C. § 101 as being directed to patent-ineligible subject
matter.
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)(l )(iv).
AFFIRMED
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