Ex Parte Tsang

Patent Trials and Appeals Board

Mar 13, 2019

13059791 - (D) (P.T.A.B. Mar. 13, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/059,791 02/18/2011 Peter Tjin Sjoe Kong Tsang
24737 7590 03/15/2019
PHILIPS INTELLECTUAL PROPERTY & STANDARDS
465 Columbus A venue
Suite 340
Valhalla, NY 10595
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.
2008P01330WOUS 2937
EXAMINER
GRANT, MICHAEL CHRISTOPHER
ART UNIT PAPER NUMBER
3715
NOTIFICATION DATE DELIVERY MODE
03/15/2019 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):
patti. demichele@Philips.com
marianne.fox@philips.com
katelyn.mulroy@philips.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte PETER TJIN SJOE KONG TSANG
Appeal2018-001959
Application 13/059,791
Technology Center 3700
Before BRETT C. MARTIN, JEREMY M. PLENZLER, and
JEFFREY A. STEPHENS, Administrative Patent Judges.
STEPHENS, Administrative Patent Judge.
DECISION ON APPEAL
Appeal2018-001959
Application 13/059,791
STATEMENT OF THE CASE
Appellant1 seeks our review under 35 U.S.C. § 134(a) from the
Examiner's Final Office Action (dated Apr. 11, 2017) ("Final Act.")
rejecting claims 1, 2, 4--6, 8-11, 13-15, and 1 7-19. 2,3 We have jurisdiction
under 35 U.S.C. § 6(b ).
For the reasons explained below, we do not find error in the rejection.
Accordingly, we AFFIRM.
Claimed Subject Matter
Claims 1, 9, and 10 are independent. Claim 1, reproduced below with
selected limitations emphasized, illustrates the claimed subject matter.
1. A method for managing the weight of a user, the method,
comprising instructions for making a processor perform the steps
compnsmg:
a) obtaining a measured amount of energy expended by
the user;
1 The real party in interest is identified as Koninklijke Philips Electronics,
N.V. Appeal Br. 3.
2 Although the Office Action Summary indicates the action is non-final,
Final Act. 1, it was labeled in the electronic file wrapper as a Final Office
Action and the conclusion states that it is final, Final Act. 7. The
Examiner's Interview Summary dated May 11, 2017 indicates the Examiner
confirmed to Appellant's representative that the office action was final.
3 Dependent claims 18 and 19 are not specifically addressed in the Final
Office Action. The claims were presented, however, in the Amendment
filed March 2, 2017, in response to the non-final rejection dated December
2, 2016. The Final Office Action indicates that the March 2 amendments are
entered. Final Act. 2. As noted by Appellant, claims 18 and 19 are also
included in the list of rejected claims in the Notice of Panel Decision from
Pre-Appeal Brief Review (dated July 17, 2017). See Appeal Br. 3. Like
Appellant, we consider claims 18 and 19 to be pending and rejected, see id.,
and we consider them rejected on the same ground as the other dependent
claims, see Final Act. 3.
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b) predicting a target weight that can be reached and a
target time period required for achieving the predicted target
weight based on the obtained measured amount of energy
expended in combination with a current weight of the user;
c) devising a weight management plan for a pre-
determined time period, said plan including a disciplined eating
pattern and a physical activity pattern, wherein said pre-
determined time period is split into a plurality of time slots
occurring at known times within said pre-determined time
period;
d) coaching the user on a daily basis for the pre-
determined time period using the devised weight management
plan, said coaching comprising instruction regarding at least one
of: eating and activity during each of the time slots; and
e) monitoring progress toward achieving a weight that is
to be achieved at an end of the pre-determined time period;
checking whether the user's weight is differing with
respect to the weight that is to be achieved at the end of the pre-
determined time period; and
revising said weight management plan for a next pre-
determined time period by repeating step a, step b, step c and step
d, wherein said revised weight management plan considers the
user's weight with respect to the weight to be achieved at the end
of the next pre-determined time period, where the next pre-
determined time period is with respect to said target time period,
and a measured physical activity of the user, wherein said time
slots in the next pre-determined time period are altered based on
said measured physical activity of the user.
Rejection
Claims 1, 2, 4---6, 8-11, 13-15, and 17-19 stand rejected under 35
U.S.C. § 101 as directed to non-patent eligible subject matter. Final Act. 2-
3.4
4 As noted in footnote 3, supra, claims 18 and 19 stand rejected on the same
basis as the other dependent claims listed in the Final Office Action.
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DISCUSSION
Appellant argues all claims together as a group. Appeal Br. 11-21.
We select claim 1 as representative, and decide the appeal on the basis of
claim 1. 37 C.F.R. § 4I.37(c)(l)(iv).
An invention is patent-eligible if it claims a "new and useful process,
machine, manufacture, or composition of matter." 35 U.S.C. § 101.
Nonetheless, the Supreme Court has long interpreted§ 101 to include
implicit exceptions: "[l]aws of nature, natural phenomena, and abstract
ideas" are not patentable. E.g., Alice Corp. v. CLS Bank Int 'l, 573 U.S. 208,
216 (2014).
In determining whether a claim falls within an excluded category, we
are guided by the Supreme Court's two-step framework, described in Mayo
and Alice. 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." See Alice, 573
U.S. 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.").
In Diamond v. Diehr, 450 U.S. 175 (1981), the claim at issue recited a
mathematical formula, but the Supreme Court held that "[a] claim drawn to
subject matter otherwise statutory does not become nonstatutory simply
because it uses a mathematical formula." 450 U.S. at 176; see also id. at 191
("We view respondents' claims as nothing more than a process for molding
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rubber products and not as an attempt to patent a mathematical formula.").
Having said that, 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 Gottschalkv. Benson, 409 U.S. 63 (1972), and
Parker v. Flook, 437 U.S. 584 (1978)). The Court also indicated, however,
that "an application of a law of nature or mathematical formula to a known
structure or process may well be deserving of patent protection." Id. at 187.
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 ( quotation marks 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. ( alterations in original) ( quoting Mayo,
566 U.S. at 77). "[M]erely requir[ing] generic computer implementation[]
fail[s] to transform that abstract idea into a patent-eligible invention." Id.
The PTO recently published revised guidance on the application of
§ 101. 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed.
Reg. 50 (Jan. 7, 2019) ("Revised Guidance"). Under that Revised Guidance,
we first look to whether the claim recites:
(1) a judicial exception, i.e., a law of nature, a natural phenomenon, or
subject matter within the groupings of abstract ideas enumerated in the
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Revised Guidance (i.e., mathematical concepts, certain methods of
organizing human activity, and mental processes); and
(2) additional elements that integrate the judicial exception into a
practical application (see, e.g., MPEP § 2106.05(a}-(c), (e}-(h)).
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:
(3) adds a specific limitation beyond the judicial exception that is not
"well-understood, routine, conventional" in the field (see MPEP
§ 2106.05(d)); or
( 4) simply appends well-understood, routine, conventional activities
previously known to the industry, specified at a high level of generality, to
the judicial exception.
See Revised Guidance.
In this case, the Examiner determines claim 1 is directed to an abstract
idea in the form of a method of organizing human activity. Final Act. 2. In
particular, the Examiner explains:
[T]he claims are directed to an abstract idea in the form of a
method for managing the weight of a user by, inter alia,
obtaining a measured amount of energy expended by the user,
predicting a target weight and target time, devising a weight
management plan and a physical activity pattern, coaching the
user, and monitoring the user's progress.
Id. The Examiner analogizes to the claims directed to a system of
computerized meal planning in DietGoal Innovations LLC v. Bravo Media
LLC, 33 F. Supp. 3d 271 (S.D.N.Y. 2014), aff'd per curiam, 599 F. App'x
956 (Fed. Cir. 2015) (non-precedential). Final Act. 2-3. The Examiner also
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determines the claims do not include additional elements either alone or in
combination that are sufficient to amount to significantly more than the
judicial exception. Id. at 3. The Examiner finds that "[t]o the extent that,
e.g., 'instructions for making a processor,' 'sensors,' and 'a computer
program product' are claimed these are all generic, well-known, and
conventional computerized devices and are claimed to provide generic, well-
known, and conventional computerized functions such as executing
instructions and sensing values." Id.
Appellant argues "the subject matter claimed provides significantly
more in the field of organizing human activity (i.e., weight management)
than the abstract idea of organizing human activity or weight management."
Appeal Br. 11. Appellant summarizes claim 1 as follows:
The invention claimed in the instant matter, as recited in
claim 1, provides a method for providing instruction to a user to
manage the weight of the user by constructing a plan that
determines a desired weight to be achieved at each of a plurality
of time periods, wherein each predetermined period includes at
least one time slot. The time slots are used to define periods of
eating and/or activity. The method further adjusts or re-
determines the plan at the end each predetermined period to
determine whether the user has achieved the corresponding
desired weight. The adjusted or re-determined plan includes the
further adjustment to the time slots within the next predetermined
time period in order to limit the periods a user is to eat and/ or
exercise.
Id. at 12.
Appellant disagrees with the Examiner's comparison to the claims in
DietGoal, arguing that "independent claim 1, recited in the instant matter,
when read, as a whole, recites elements that represent building blocks that
are unlike the patent ineligible subject matter recited in Dietgoal." Appeal
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Br. 13; see Reply Br. 6-9. And, although the Examiner does not rely on
Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709 (Fed. Cir. 2014), Appellant
argues claim 1 in this case is similarly unlike the patent ineligible subject
matter in Ultramercial. Appeal Br. 14. Appellant contends that claim 1 is
different than the ineligible subject matter in DietGoal and Ultramercial
because "the subject matter claimed in the instant application does not
merely provide a sequence of conventional steps specified at a high level of
generality." Id. at 16. For support, Appellant notes that claim 1 requires
"revising said weight management plan for a next pre-determined time
period by repeating step a, step b, step c and step d," and particularly
emphasizes the final wherein clause reciting "wherein said time slots in the
next pre-determined time period are altered based on said measured
physical activity of the user." Id.
Appellant also argues the sequence of claimed steps in this case
represents a process similar to that recited in Diamond v. Diehr, 450 U.S.
17 5 ( 1981 ). Appeal Br. 16; Reply Br. 10-11. Appellant notes that the claim
for operating a rubber-molding press in Diehr included steps of constant
temperature measurement, repetitive recalculation, comparison of measured
temperature with expected temperature, and opening the press at a desired
time. Appeal Br. 17. Appellant contends "the repetitive calculation
provided the element that transformed patent ineligible subject matter (i.e.,
the use of an algorithm) into patent eligible subject matter (i.e., the use of an
algorithm in the specific process of curing rubber)." Id. at 18. Appellant
argues "the claims of the instant application provide an improved,
unconventional, iterative method for weight program management that when
taken as a whole, includes additional features that recite an unconventional
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means to coach a user to manage their weight by adjusting time slots in
which the user performs designated activities." Id. at 19. Appellant further
contends that the elements recited in claim 1 do not preempt all computer-
implemented processes for weight management. Id. at 19-21.
We agree with the Examiner that claim 1 recites a method of
organizing human activity. The purpose of the method is "managing the
weight of a user," and includes: (1) data gathering steps such as "obtaining a
measured amount of energy expended by the user," "monitoring progress
toward achieving a weight that is to be achieved at an end of the pre-
determined time period," and "checking whether the user's weight is
differing with respect to the weight that is to be achieved"; (2) calculation
and planning steps such as "predicting a target weight that can be reached
and a target time period required for achieving the predicted target weight"
based on data gathered, "devising a weight management plan for a pre-
determined time period" (wherein the time period "is split into a plurality of
time slots"), and "revising said weight management plan for a next pre-
determined time period by repeating" certain steps and where the "time slots
in the next pre-determined time period are altered based on said measured
physical activity of the user"; and (3) an instructional step of "coaching the
user on a daily basis for the pre-determined time period using the devised
weight management plan," and where the coaching comprises "instruction
regarding at least one of: eating and activity during each of the time slots."
The method falls within the "certain methods of organizing human activity"
grouping of abstract ideas in the Revised Guidance because it is a method of
managing personal behavior, specifically behavior relating to eating and
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activity, for the purpose of weight management. 5 The mere nominal
recitation of instructions for making a processor perform the steps do not
take the claim out of the methods of organizing human activity grouping.
Thus, claim 1 recites an abstract idea.
We also determine that claim 1 does not recite additional elements
that integrate the judicial exception into a practical application, which
informs our inquiry into whether claim 1 is "directed to" the identified
abstract idea. The claim as a whole merely describes how to generally
"apply" the data gathering, calculation and planning, and instructional steps
of the claim described above to manage personal behavior. The "processor"
is recited at a high level of generality and is merely invoked as a tool to
perform the process of managing the weight of the user.
Appellant's argument that the steps in claim 1 are not merely a
sequence of conventional steps specified at a high level of generality,
Appeal Br. 16, does not inform us of error. Whether or not each of the
claimed steps is conventional in weight management techniques, the steps
emphasized by Appellant, id., are a part of the abstract idea of managing the
personal behavior of the user. In particular, revising the weight management
plan and altering the time slots in the next predetermined period based on the
measured physical activity of the user are germane to the human activity
aspect of the claim, and do not overcome any particular problem in applying
the method in a computer environment. For example, as described in the
Specification, "the method gives [users] a wide window at the start of the
5 Comparison to the claims at issue in the district court opinion in DietGoal,
which was affirmed by the Federal Circuit without opinion, is not necessary
to our determination.
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trajectory and gradually narrows down the eating and snacking times so that
the body can adjust to the times without causing too much disruption and
discomfort to the user." Spec. 13:5-7. Similarly, if the user has a high
activity level, eating time slots may be increased. See id. at 13: 13-19. As
Appellant acknowledges, "by changing of the routine and adjusting the
program over time, the user is less likely to fail, become discouraged or
quit." Appeal Br. 19. For these reasons, we are not persuaded by Appellant
that the claimed method is most similar to the method of molding rubber
products in Diehr, which the Court determined applied a formula in a
process that is "performing a function which the patent laws were designed
to protect." Diehr, 450 U.S. at 192.
For similar reasons, we are not informed of error by Appellant's
contention in the Supplemental Appeal Brief ("Supp. Br.") that Finjan, Inc.
v. Blue Coat Systems, Inc., 879 F.3d 1299 (Fed. Cir. 2018), supports a
conclusion of patent-eligible subject matter here. See Supp. Br. 5-10.
Appellant contends the claims in Finjan recited "how" to achieve a desired
result, and that Finjan distinguished cases in which claims merely recite an
achieved result. Supp. Br. 6-7. Appellant argues "the independent claims
of the instant matter assertively recite a particular concrete solution in the
managing a user's habits," and, in particular, "recite the specific element of
adjusting periods a user is instructed to perform activities in a next time
period based on the goals achieved at the end of current time period." Id. at
7. As Appellant recognizes, id. at 7-8, in Finjan the court determined that
"the method of claim 1 employs a new kind of file that enables a computer
security system to do things it could not do before," and describes ways in
which "[t]he asserted claims are therefore directed to a non-abstract
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improvement in computer functionality, rather than the abstract idea of
computer security writ large," Finjan, 879 F.3d at 1305. Although claims
limited to "how" to improve computer functionality may recite patent-
eligible subject matter, as illustrated by Finjan, Appellant's claimed steps of
adjusting periods a user is instructed to perform activities in a next time
period based on the goals achieved at the end of current time period are
intended to improve user compliance with the method of managing human
behavior, and are not an improvement in computer functionality.
As part of step two of Alice, we look to whether claim 1 (a) adds a
specific limitation or combination of limitations beyond the judicial
exception that are not "well-understood, routine, conventional" activity in
the field, or (b) simply appends well-understood, routine, conventional
activities previously known to the industry, specified at a high level of
generality, to the judicial exception. As noted previously, the claim as a
whole merely describes how to generally apply the process of managing
human personal behavior. Thus, even when viewed as a whole, nothing in
the claim adds significantly more (i.e., an inventive concept) to the abstract
idea of managing this human behavior.
In light of our analysis herein, Appellant's additional arguments
regarding a lack of preemption also are not sufficient to inform us of error in
the Examiner's determination that claim 1 recites patent ineligible subject
matter.
Accordingly, for the reasons discussed above and by the Examiner,
we are not informed of error in the Examiner's rejection of representative
claim 1 under 35 U.S.C. § 101. For the same reasons, we sustain the
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rejection of claims 2, 4---6, 8-11, 13-15, and 17-19, which are rejected on
the same ground and not argued separately.
DECISION
We affirm the Examiner's decision to reject claims 1, 2, 4---6, 8-11,
13-15, and 17-19 under 35 U.S.C. § 101.
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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