Ex Parte White-Stein et al

Patent Trial and Appeal Board

Aug 14, 2018

13826245 (P.T.A.B. Aug. 14, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/826,245 03/14/2013
110933 7590 08/14/2018
Carstens & Cahoon, LLP
PO Box 802334
Dallas, TX 75380
FIRST NAMED INVENTOR
Kimberly Marie White-Stein
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.
CGAT0.3876 1443
EXAMINER
LE, LINH GIANG
ART UNIT PAPER NUMBER
3686
MAIL DATE DELIVERY MODE
08/14/2018 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 KIMBERLY MARIE WHITE-STEIN, LESLIE J. BONCI,
LISA ESPOSITO-HEATON, PAGE GERALDINE LOVE, and
JACQUELINE RAYMONDE-BERNING 1
Appeal2017-002560
Application 13/826,245
Technology Center 3600
Before JAMES R. HUGHES, CARLL. SILVERMAN, and
MATTHEW J. McNEILL, Administrative Patent Judges.
HUGHES, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants seek our review under 35 U.S.C. § 134(a) of the
Examiner's decision rejecting claims 1, 4--10, and 21. Claims 2, 3, and 11-
20 have been canceled. Final Act. 1, 2; Appeal Br. 2. 2 We have jurisdiction
under 35 U.S.C. § 6(b). We affirm.
1 According to Appellants, the real party in interest is Stokely-Van Camp,
Inc. Appeal Br. 2.
2 We refer to Appellants' Specification ("Spec.") filed Mar. 14, 2013
(claiming benefit of US 61/620,573 filed Apr. 5, 2012); Appeal Brief
("Appeal Br.") filed Mar. 7, 2016; and Reply Brief ("Reply Br.") filed Dec.
Appeal2017-002560
Application 13/826,245
Appellants' Invention
The invention "relates generally to a computer-implemented dietary
analysis tool" and particularly to "computer implemented methods ...
configured to analyze an athlete's dietary intake based on information
received from the athlete regarding their diet and exercise" within a
particular period of time. Spec. ,r 2; see Spec. ,r,r 13, 22-25, and 28-30;
Abstract.
Representative Claim
Independent claim 1, reproduced below, further illustrates the
invention:
1. A computer-implemented method of evaluating the
diet of a user comprising:
receiving at a dietary tool server, electronic information
from a user relating to consumption of food and beverage items,
type of exercise, and duration of exercise in a twenty-four hour
period;
comparing at the dietary tool server the food and beverage
item information received from the user to a collection of food
and beverage items comprising a database listing products, a
database of restaurant-specific nutrition information, and a sports
nutrition database containing sports nutrition products;
calculating at the dietary tool server at least a total nutrient
intake during the twenty-four hour period and determining a
suggested nutrient intake based on the electronic information
received from the user;
generating a report based on the information received from
the user at the dietary analysis processor comprising an analysis
of the calculated total nutrient intake and an estimation of energy
5, 2016. We also refer to the Examiner's Final Office Action (Final
Rejection) ("Final Act.") mailed Oct. 5, 2015, and Answer ("Ans.") mailed
Oct. 4, 2016.
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expenditure, including a breakdown of the macronutrients,
minerals, and vitamins consumed by the user to suggested
amounts based on the type and duration of the exercise in the
twenty-four hour period; and
transmitting the report to the user with the suggested
nutrient intake.
Rejections on Appeal
1. The Examiner rejects claims 1, 4--10, and 21 under 35 U.S.C.
§ 101 as being directed to non-statutory subject matter. See Final Act. 2.
2. The Examiner rejects claims 1, 5, 10, and 21 under pre-AIA
35 U.S.C. § I03(a) as being unpatentable over Travor (US 2006/0122468
Al, published June 8, 2006), Chang et al. (US 2012/0183932 Al, published
July 19, 2012 (filed Jan. 14, 2011)) ("Chang"), Southam (US 2014/0236622
Al, published Aug. 21, 2014 (filed Sept. 27, 2012, and claiming benefit of
US 61/539,486 filed Sept. 27, 2011)), and Benardot (US 2005/0027174 Al,
published Feb. 3, 2005). See Final Act. 4.
3. The Examiner rejects claims 4 and 7 under pre-AIA 35 U.S.C.
§ I03(a) as being unpatentable over Travor, Chang, Southam, Benardot, and
Boyes (US 2011/0009708 Al, published Jan. 13, 2011). See Final Act. 11,
13.
4. The Examiner rejects claim 6 under pre-AIA 35 U.S.C.
§ I03(a) as being unpatentable over Travor, Chang, Southam, Benardot, and
Schwarzberg et al. (US 2009/0075242 Al, published Mar. 19, 2009)
("Schwarzberg"). See Final Act. 12.
5. The Examiner rejects claim 8 under pre-AIA 35 U.S.C.
§ I03(a) as being unpatentable over Travor, Chang, Southam, Benardot, and
Mault (US 6,478,736 Bl, issued Nov. 12, 2002). See Final Act. 14.
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6. The Examiner rejects claim 9 under pre-AIA 35 U.S.C.
§ I03(a) as being unpatentable over Travor, Chang, Southam, Benardot, and
Froseth et al. (US 2002/0004749 Al, published Jan. 10, 2002) ("Froseth").
See Final Act. 15.
ISSUES
Based upon our review of the record, Appellants' contentions, and the
Examiner's findings and conclusions, the issues before us are as follows:
1. Did the Examiner err in finding claims 1, 4--10, and 21 were
directed to patent ineligible subject matter under 35 U.S.C. § 101?
2. Did the Examiner err in finding that the combination of Travor,
Chang, Southam, and Benardot collectively would have taught or suggested:
comparing at the dietary tool server the food and beverage
item information received from the user to a collection of food
and beverage items comprising a database listing products, a
database of restaurant-specific nutrition information, and a sports
nutrition database containing sports nutrition products
as recited in claim 1?
3. Did the Examiner err in finding that the combination of Travor,
Chang, Southam, Benardot, and Boyes collectively would have taught or
suggested "wherein the report further includes an analysis of nutrients
consumed by the athlete in the four hours prior to a first exercise, during the
first exercise, and within an hour after the first exercise," as recited in claim
4?
ANALYSIS
The 35 U.S.C. § 101 Rejection of Claims 1, 4-10, and 21
Appellants argue independent claim 1 and dependent claims 4--10 and
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21 together as a group with respect to the § 101 rejection. See Appeal Br. 5-
7.
The Examiner rejects claim 1 ( and claims 4--10 and 21) as being
directed to patent-ineligible subject matter (see generally Final Act. 2--4;
Ans. 16-18) in that the claimed invention is "directed to an abstract idea" of
"analyzing food and beverage consumption along with exercise activity and
determining a suggested nutrient intake based on analyzed consumption and
exercise information" (Final Act. 3 ( emphasis omitted)) and the claim does
"not include additional elements that are sufficient to amount to significantly
more than the judicial exception because the additional elements" (Final Act.
3) "amount to no more than a recitation of ... generic computer structure
that serves to perform generic computer functions" (id.) and "functions that
are well-understood, routine, and conventional activities" (Final Act. 4).
The Examiner also explains:
Comparing food and beverage item information to databases and
calculating a total nutrient intake is an abstract idea because it
compares new and stored information, such as comparing newly
received food and beverage item information to a collection of
food and beverage items stored in databases, and uses rules to
identify options, such as what information will be included in a
report, and also uses a mathematical formula to calculate total
nutritional intake.
Final Act. 3. Additionally, the Examiner explains that "the concept
identified is abstract because it is the comparison of new and stored
information and using rules to identify options (found to be abstract by the
courts in Smartgene )" and claim 1 "calculate[ es] a total nutritional intake
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which is the organization of information through mathematical correlations
(found to be abstract inDigitech)." Ans. 16. 3
Appellants contend that the claims are not directed to an improper
judicial exception or abstract idea because "the Examiner has not established
that the claims are directed to patent-ineligible subject matter" in that "the
Examiner improperly construes the allegedly abstract idea too broadly" and
"even if it could be assumed that claim 1 is directed to a patent-ineligible
abstract idea, claim 1 recites a specific limitation other than what is well-
understood, routine and conventional in the field, which renders the claim
patent eligible." Appeal Br. 6; see Reply Br. 2--4. Additionally, Appellants
contrast their claims with a District Court for the Southern District of New
York case, "the only other prior example relating to food and beverage
consumption"-DietGoal Innovations LLC v. Bravo Media LLC. 4 See
Appeal Br. 6. Appellants explain the DietGoal Innovations court held the
claims to be abstract because the claims "'recite nothing more than the
abstract concept of selecting meals for the day, according to one's particular
dietary goals and food preferences'" (Appeal Br. 6 (quoting DietGoal
Innovations, 33 F. Supp. 3d at 283)); but contend "the case at hand is
distinguishable from the [ DietGoal Innovations claims] because claim 1 is
3 The Examiner cites to Digitech Image Techs., LLC v. Elecs. for Imaging,
Inc., 758 F.3d 1344, 1350 (Fed. Cir. 2014), and SmartGene, Inc. v.
Advanced Biological Laboratories, SA, 555 F. App'x 950, 955 (Fed. Cir.
2014)).
4 DietGoal Innovations LLC v. Bravo Media LLC, 33 F. Supp. 3d 271,283
(S.D.N.Y. 2014). Appellants cite to page 284 of the reporter (infra), but the
quoted language appears on page 283.
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not directed to the abstract concept of simply selecting meals for the day"
(Appeal Br. 6).
Under 35 U.S.C. § 101, a patent may be obtained for "any new and
useful process, machine, manufacture, or composition of matter, or any new
and useful improvement thereof." The Supreme Court has "long held that
this provision contains an important implicit exception: Laws of nature,
natural phenomena, and abstract ideas are not patentable." Alice Corp. Pty.
Ltd. v. CLS Bankint'l, 134 S. Ct. 2347, 2354 (2014) (quotingAss'nfor
Molecular Pathology v. Myriad Genetics, Inc., 569 U.S. 576, 589 (2013)).
The Supreme Court, in Alice, reiterated the two-step framework
previously set forth in Mayo Collaborative Services v. Prometheus
Laboratories, Inc., 566 U.S. 66, 77-80 (2012), "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. Assuming that a claim nominally falls within one of the statutory
categories of machine, manufacture, process, or composition of matter, the
first step in the analysis is to "determine whether the claims at issue are
directed to one of those patent-ineligible concepts" (id.), e.g., to an abstract
idea. For example, abstract ideas include, but are not limited to,
fundamental economic practices, methods of organizing human activities, an
idea of itself, and mathematical formulas or relationships. Id. at 2355-57. If
the claims are not directed to an abstract idea, the inquiry ends. Otherwise,
the inquiry proceeds to the second step where the elements of the claims are
considered "individually and 'as an ordered combination' to determine
whether the additional elements 'transform the nature of the claim' into a
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patent-eligible application." Alice, 134 S. Ct. at 2355 ( quoting Mayo, 566
U.S. at 78, 79). This second step is described as "a search for an "'inventive
concept"'-i.e., an element or combination of elements that is ' ...
significantly more than ... the [ineligible concept] itself."' Id. at 2355
(alteration in original) (quoting Mayo, 566 U.S. at 72-73).
The Court acknowledged in Mayo that "all inventions at some level
embody, use, reflect, rest upon, or apply laws of nature, natural phenomena,
or abstract ideas." Mayo, 566 U.S. at 71. We, therefore, look to whether the
claims focus on a specific means or method that improves the relevant
technology or are instead directed to a result or effect that itself is the
abstract idea and merely invoke generic processes and machinery. See
Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1336 (Fed. Cir. 2016).
Alice Step 1 Analysis
Turning to the first step of the eligibility analysis, "[t]he first step in
the Alice inquiry ... asks whether the focus of the claims is on the specific
asserted improvement in computer capabilities ... or, instead, on a process
that qualifies as an 'abstract idea' for which computers are invoked merely
as a tool." Enfish, 822 F.3d at 1335-36. "The abstract idea exception
prevents patenting a result where 'it matters not by what process or
machinery the result is accomplished."' McRO, Inc. v. Bandai Namco
Games America Inc., 837 F.3d 1299, 1312 (Fed. Cir. 2016) (quoting
O'Reilly v. Morse, 56 U.S. (15 How.) 62, 113 (1853)). "We therefore look
to whether the claims ... focus on a specific means or method that improves
the relevant technology or are instead directed to a result or effect that itself
is the abstract idea and merely invoke generic processes and machinery."
McRO, 837 F.3d at 1314.
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Instead of using a fixed definition of an abstract idea and analyzing
how claims fit ( or do not fit) within the definition, "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 (Isr.) Ltd. v. Openet Telecom,
Inc., 841 F.3d 1288, 1294 (Fed. Cir. 2016) (citing Electric Power Group,
LLC v. Alstom S.A., 830 F.3d 1350, 1353-54 (Fed. Cir. 2016)). As part of
this inquiry, we must "look at the 'focus of the claimed advance over the
prior art' to determine if the claim's 'character as a whole' is directed to
excluded subject matter." Affinity Labs of Texas, LLC v. DirecTV, LLC, 838
F.3d 1253, 1257 (Fed. Cir. 2016).
The Examiner determines claim 1 is directed to the abstract idea of
"analyzing food and beverage consumption along with exercise activity and
determining a suggested nutrient intake based on analyzed consumption and
exercise information." Final Act. 3 (emphasis omitted). The Examiner also
finds the limitations of claim 1 are analogous to claims found patent
ineligible in SmartGene and Digitech. See Ans. 16. Appellants attack the
Examiner's findings of fact and legal conclusions on several grounds-in
particular, that "the Examiner's response [merely] appears to set forth the
argument that the claim is patent ineligible because it involves abstract
ideas" (Reply Br 2}-without explaining why the Examiner construed the
abstract idea too broadly, why Appellants' claims are distinguishable from
those in DietGoal Innovations, or why Appellants' claims are not analogous
to those in SmartGene and Digitech. See Appeal Br. 6; Reply Br. 2-3.
Initially, we agree that the Examiner's determination that Appellants'
claim 1 is directed to "analyzing food and beverage consumption" and
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"exercise activity" to "determin[ e] a suggested nutrient intake," which is a
method of "compar[ing] new and stored information" and "us[ing] rules to
identify options" (Final Act 3 ( emphasis omitted)), as well as the
"organization of information through mathematical correlations" (Ans. 16
(emphasis omitted)). See Final Act. 3--4; Ans. 16-17. We also agree that
the claims are analogous to those in SmartGene and Digitech. See Ans. 16-
17.
With respect to the proposed abstract concept, although the Examiner
could have characterized Appellants' claim 1 with more detail (see Appeal
Br. 6), such a (narrower) characterization does not change the patent-
eligibility analysis. See Apple, Inc. v. Ameranth, Inc., 842 F.3d 1229, 1240-
1241 (Fed. Cir. 2016) ("An abstract idea can generally be described at
different levels of abstraction."). The inclusion of additional limitations
(resulting in a more detailed characterization) still amounts to organizing
information and data collection, analysis, and manipulation ( as discussed
infra).
With respect to the Examiner's prima facie case, as explained in our
Frye decision, the Examiner has the initial burden-"to set forth the basis
for any rejection so as to put the patent applicant on notice of the reasons
why the applicant is not entitled to a patent on the claim scope that he
seeks-the so-called 'prim a facie case.'" Ex parte Frye, 94 USPQ2d 1072,
1075 (BPAI 2010) (Precedential). The USPTO carries its procedural burden
when its rejection satisfies the requirements of 35 U.S.C. § 132 by notifying
the applicant of the reasons for rejection, "together with such information
and references as may be useful in judging the propriety of continuing [the]
prosecution of [the] application." In re Jung, 637 F.3d 1356, 1363 (Fed. Cir.
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2011). It is well-established that the Board may affirm an Examiner's
rejection so long as Appellants have had "a fair opportunity to react to the
thrust of the rejection." In re Jung, 637 F.3d 1356 at 1365 (quoting In re
Kronig, 539 F.2d 1300, 1302---03 (CCPA 1976)). The Examiner explains
(supra) why the Appellants' claims are directed to ineligible subject matter,
and even analogizes claim 1 to the claims in SmartGene and Digitech. We
find the Examiner has met the notice requirements of§ 132. Accordingly,
Appellants' contentions concerning the Examiner's prima facie case are
unpersuasive of Examiner error. Further, as pointed out by the Examiner
(see Ans. 17) we are unaware of any precedent requiring the Examiner to
identify decisions to which the claimed subject matter is allegedly similar
(see Appeal Br. 6).
Here, claim 1 relates to a ( computer-implemented) method of
evaluating the diet of a user, where information relating to a user's food and
beverage consumption, type of exercise, and duration of exercise within a
twenty-four hour period is received by a dietary tool server. The food and
beverage information received by the server is compared to food and
beverage information in several databases-a database listing food and
beverage products, a database containing restaurant-specific nutrition
information, and a database containing sports nutrition products. A total
nutrient intake and a suggested nutrient intake (for the twenty-four hour
period) are then calculated based on the received information and
comparison results. The method also generates a report based on the
received information and comparison results and sends the report to a user.
The report includes an analysis of the calculated total nutrient intake (which
further includes a breakdown of the macronutrients, minerals, and vitamins
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consumed), an estimation of energy expenditure, and a suggested nutrient
intake ( suggested amounts of macronutrients, minerals, and vitamins) based
on the type and duration of the exercise during the twenty-four hour period.
See claim 1; Appeal Br. 5; Spec. ,r,r 2, 13, 22-25, and 28-30. In other
words, collecting or receiving data (food and exercise information);
analyzing and manipulating the data-by comparing the received data to
various data structures (databases), calculating new data (nutritional intake
information, energy expended, and recommended ( suggested) nutrient
intake); organizing the analyzed and calculated data (generating the report);
and sending the information to a user (sending the report).
Therefore, the claims broadly recite collecting, analyzing,
manipulating, organizing, and sending information ( data). See Abstract;
Spec. ,r,r 2, 13, 22-25, and 28-30; Fig, 2. This is consistent with how
Appellants describe the claimed invention. See id.; Spec. ,r,r 15-21.
Accordingly, we agree with the Examiner's summary of the claim
limitations (for the collection, analysis, organization, and manipulation of
nutrition and exercise information) as being directed to analyzing nutrition
consumption and exercise information to determine actual nutrient intake,
energy expended, and suggested nutrient intake, which is a method of
comparing information, manipulating data using rules, and organizing
information through mathematical correlations (see supra).
Our reviewing court has held that abstract ideas include gathering,
analyzing, organizing, and displaying information. See Electric Power
Group, 830 F.3d at 1354 (finding "gathering and analyzing information of a
specified content, then displaying the results," to be directed to an abstract
idea). Similarly, our reviewing court has held that abstract ideas include
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gathering, analyzing, organizing, and storing information. See Content
Extraction and Transmission LLC v. Wells Fargo Bank, Nat. Ass 'n., 776
F.3d 1343, 1345, 1347 (Fed. Cir. 2014) (finding the "claims generally recite
... recognizing specific information from the extracted data, and ... storing
that information in a memory" (id. at 1345) and that the "claims are drawn to
the basic concept of data recognition and storage" (id. at 134 7) ). Also,
collecting, analyzing, organizing, and manipulating information has been
found to be a collection of abstract ideas. See Two-Way Media Ltd. v.
Comcast Cable Commc 'ns, LLC., 874 F.3d 1329, 1337-38 (Fed. Cir. 2017)
( finding claims directed to the functional results of accumulating,
converting, and monitoring records manipulate data "but fail[] to do so in a
non-abstract way" (id. at 1338)); Intellectual Ventures I LLC v. Capital One
Fin. Corp., 850 F.3d 1332, 1341 (Fed. Cir. 2017) (holding that the claimed
invention is directed to the abstract idea of "collecting, displaying, and
manipulating data of particular documents"); Fair Warning IP, LLC v. Iatric
Systems, Inc., 839 F.3d 1089, 1093-95 (Fed. Cir. 2016) (finding the claims
were directed to a combination of abstract ideas including collecting and
analyzing information and utilizing rules to determine fraud). Finally, as
discussed by the Examiner (supra), organizing human activity by "a process
of organizing information through mathematical correlations" is an "abstract
idea." Digitech, 758 F.3d at 1350 (finding the claims "recite[] an ineligible
abstract process of gathering and combining data" (id. at 1351)). Similarly,
going through the "mental steps of comparing new and stored information
and using rules to identify medical [treatment] options" is an abstract idea.
SmartGene, 555 F. App'x at 955.
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Here, the collection and analysis of nutritional and exercise
information is similar to the abstract idea of collecting, analyzing,
organizing, and manipulating information discussed in Electric Power
Group, Content Extraction, Two-Way Media, Intellectual Ventures I,
Fair Warning, Digitech, and SmartGene. Accordingly, we agree with the
Examiner that the claims are directed to an abstract idea of collecting,
analyzing, organizing, and manipulating information.
Alice Step 2 Analysis
Having concluded Appellants' claims are directed to an abstract
concept under Alice's step 1 analysis, we next address whether the claims
add significantly more to the alleged abstract idea. As directed by our
reviewing Court, we search for an "'inventive concept' sufficient to
'transform the nature of the claim into a patent-eligible application."'
McRO, 837 F.3d at 1312 (quoting Alice, 134 S. Ct. at 2355). The
implementation of the abstract idea involved must be "more than
performance of 'well-understood, routine, [and] conventional activities
previously known to the industry."' Content Extraction, 776 F.3d at 1347-
48 (alteration in original) (quoting Alice, 134 S. Ct. at 2359). The "inventive
concept" "must be significantly more than the abstract idea itself, and cannot
simply be an instruction to implement or apply the abstract idea on a
computer." Bascom Global Internet Services, Inc. v. AT&T Mobility LLC,
827 F.3d 1341, 1349 (Fed. Cir. 2016).
Here, the Examiner found that Appellants' claims do not add
significantly more. See Final Act. 3--4; Ans. 17-18. Appellants, on the
other hand, contend that "claim 1 recites a specific limitation other than what
is well-understood, routine and conventional in the field, which renders the
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claim patent eligible" (Appeal Br. 6) and reiterate the limitations of claim 1.
See Appeal Br. 6-7; Reply Br. 3--4.
Appellants fail to persuade us of error in the Examiner's rejection
with respect to the second Alice step. Here, Appellants repeat the limitations
of claim I-asserting that the limitations are "significantly more than the
ineligible idea itself' (Reply Br. 4) and not generic, "well-understood,
routine[, or] conventional" (Appeal Br. 6}-but do not explain why these
data analysis and manipulation functions are more than well-understood,
routine, and conventional activities previously known in "computer-
implemented dietary analysis" (Spec. ,r 2). See Appeal Br. 6-7; Reply Br.
3--4.
We agree with the Examiner that the limitations of claim 1, either
separately or as an ordered combination, do not provide meaningful
additional limitations (i.e., do not add significantly more) to transform the
abstract idea into a patent eligible application. See, e.g., Final Act. 3--4;
Ans. 17-18. Indeed, the claim merely recites collecting, analyzing,
organizing, and manipulating information (data) similar to known dietary
analysis systems. See Abstract; Spec. ,r,r 2, 13, 22-25, and 28-30; Fig, 2.
Such steps are all routine, conventional, and well-understood computer
functions of a general processor. The Specification supports this view in
discussing the processes implemented in software, which operates on
generic computers to perform the recited data manipulation steps. See Spec.
,r,r 15-21. Such conventional computer processes "do not alone transform
an otherwise abstract idea into patent-eligible subject matter." Fair Warning
IP, 839 F.3d at 1096 (citing DDR Holdings, LLC v. Hotels.com, L.P., 773
F.3d 1245, 1256 (Fed. Cir. 2014)).
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For at least the reasons above, we are not persuaded of Examiner error
in the rejection of claim 1 under 35 U.S.C. § 101. Thus, we sustain the
Examiner's rejection under§ 101 of independent claim 1 and claims 4--10
and 21, which were not argued separately.
The 35 U.S.C. § 103 Rejection of Claims 1, 5-10, and 21
The Examiner rejects independent claim 1 (and dependent claims 5,
10, and 21) as being obvious in view of Travor, Chang, Southam, and
Benardot. See Final Act. 4--9; Ans. 18-19. Appellants argue independent
claim 1 and dependent claims 5, 10, and 21, together as a group. See Appeal
Br. 7-10. We select independent claim 1 as representative of Appellants'
arguments with respect to claims 1, 5, 10, and 21. 37 C.F.R.
§ 4I.37(c)(l)(iv).
The Examiner relies on Travor as teaching the features of claim 1 with
the exception of the various separate databases and specific report
information. See Final Act. 4--9. Specifically, the Examiner cites Travor as
describing a dietary tool server (Travor' s nutrition counseling server 900)
(see Travor ,r 149; Fig. 9a); receiving nutritional and exercise information
(see Travor Figs. 1, 2, and 6b ); comparing the received information to
database information ( a database listing products) (Travor' s food database
950) (see Travor ,r 149; Fig. 9a); calculating nutrient intake and determining
suggested nutrient intake (see Travor ,r,r 128, 132; Figs. 6b); and generating
a report (see Travor ,r 128; Fig. 6b). See Final Act. 4--6. The Examiner
relies on Chang to teach the restaurant-specific nutrition information
database. See Final Act. 6 (citing Chang Fig. 1, elements 108, 110, 112).
The Examiner relies on Southam to teach the sports nutrition products
database. See Final Act. 6-7 ( citing Southam ,r,r 7, 11; Fig. 1 ). The
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Examiner also relies on Benardot to teach a report including an estimation of
energy expenditure, a breakdown of the nutrition consumed by a user and a
comparison to suggest nutrient amounts based on the type and duration of
the exercise. See Final Act. 7-8 (citing Benardot ,r,r 19, 20, 110; Figs. 11-
13).
Appellants contend that Travor, Chang, Southam, and Benardot do not
teach the disputed features of claim 1 (or claim 12). See Appeal Br. 7-10.
More specifically, Appellants contend that Travor, Chang, Southam, and
Benardot fail to teach or suggest the dietary tool server and separate
nutrition databases-"none of the cited art teaches or suggests 'comparing at
the dietary tool server the food and beverage item information received from
the user to a collection of food and beverage items comprising ... a sports
nutrition database containing sports nutrition products,' as recited by claim
1." Appeal Br. 9 ( quoting claim 1 ); see Appeal Br. 8-9. Appellants also
contend Travor and Southam cannot be properly combined-
the modification of Tavor with Southam would result in a system
which would still not permit comparison of food and beverage
information as contemplated by Tavor with any item in
Southam's databases as its recommendation system performs a
wholly different function with incompatible input criteria as that
ofTavor.
Appeal Br. 9. Further, Appellants contend the Examiner has not provided a
proper rationale for combining Travor and Southam ( as well as Chang and
Benardot}-"the Examiner has only provided a conclusory statement lacking
in articulated reasoning with some rational underpinning in regards to the
purported combination of Southam with Tavor." Appeal Br. 9; see also
Appeal Br. 10.
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We disagree with Appellants that Travor, Chang, Southam, and
Benardot (and in particular Travor and Southam) are not properly
combinable and do not teach the disputed server and various databases. The
Examiner provides an explanation of each cited reference and how the cited
references teach or suggest the features of Appellants' claim 1. We adopt as
our own: ( 1) the findings and reasons set forth by the Examiner in the action
from which this appeal is taken (Final Act. 4--9), and (2) the reasons set forth
by the Examiner in the Examiner's Answer (Ans. 18-19) in response to
Appellants' Appeal Brief. We concur with the findings and conclusions
reached by the Examiner, and we address specific findings, conclusions, and
arguments for emphasis as follows.
Appellants do not address in detail the Examiners findings with
respect to Chang or Benardot. See Appeal Br. 7-10. Appellants also do not
dispute the Examiner's specific findings with respect to Travor and
Southam. See id. Instead, Appellants generally argue that none of the
references teach the disputed feature of a sports nutrition database and also
contend that one of ordinary skill in the art would not have combined the
references. See Appeal Br. 9-10.
Appellants misconstrue the Examiner's rejection and fail to address
the Examiner's specific findings ( detailed in the Final Action) in their
Appeal Brief, and fail to respond the Examiners supplement explanation
(provided in the Answer) in their Reply Brief. Travor teaches or at least
suggests a server that receives nutritional and exercise information and
compares the received information with information in a database. See
supra; Travor ,r,r 113, 121, 128, 129, 132, 149 153; Figs. 1, 2, 6b, 9a. The
Examiner relies on Southam only for its teaching of databases including
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sports nutrition products and nutritional information. See Final Act. 6-7;
Ans. 18-19. Southam at least suggests such databases and nutritional
information. See supra; Southam ,r,r 7, 11; Fig. 1.
With respect to Appellants' combinability arguments, we disagree
with Appellants. Contrary to Appellants' arguments, "[t]he test for
obviousness is not whether the features of a secondary reference may be
bodily incorporated into the structure of the primary reference . . . . Rather,
the test is what the combined teachings of the references would have
suggested to those of ordinary skill in the art." In re Keller, 642 F.2d 413,
425 (CCP A 1981) ( emphasis added). Here, Appellants argue the references
individually and do not address the specific arguments set out by the
Examiner. The references cited by the Examiner must be read, not in
isolation, but for what each fairly teaches in combination with the prior art
as a whole. See In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986)
( one cannot show non-obviousness by attacking references individually
where the rejections are based on combinations of references).
We find that it would have been within the skill of an ordinarily
skilled artisan to combine the known technique of comparing received
nutritional information with nutritional information in database ( as taught by
Travor) and sports nutrition products and nutritional information contained
in distinct databases as taught by Southam. See KSR Int 'l Co. v. Teleflex
Inc., 550 U.S. 398, 417 (2007) ("[I]f a technique has been used to improve
one device, and a person of ordinary skill in the art would recognize that it
would improve similar devices in the same way, using the technique is
obvious unless its actual application is beyond his or her skill."). We are not
persuaded that combining the respective familiar elements of the cited
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references in the manner proffered by the Examiner would have been
"uniquely challenging or difficult for one of ordinary skill in the art" at the
time of Appellants' invention. Leapfrog Enters., Inc. v. Fisher-Price, Inc.,
485 F.3d 1157, 1162 (Fed. Cir. 2007) (citing KSR, 550 U.S. at 418).
Thus, Appellants' contentions do not persuade us of error in the
Examiner's obviousness rejection of representative independent claim 1.
Accordingly, we affirm the Examiner's rejection of representative claim 1
and dependent claims 5, 10, and 21, not separately argued with particularity
(supra).
Appellants do not separately argue with particularity dependent claims
6-9, or the obviousness rejections of the claims over Travor, Chang,
Southam, Benardot, and the additional references cited (Boyes,
Schwarzberg, Mault, and Froseth). See Appeal Br. 11-12. Accordingly, we
sustain the Examiner's obviousness rejections of claims 6-9 for the same
reasons as claim 1 (supra).
Claim 4
The Examiner rejects dependent claim 4 as obvious over Travor,
Chang, Southam, Benardot, and Boyes. See Final Act. 11-12; Ans. 20.
Claim 4 further defines the calculations and report of claim 1, reciting that
the report "further includes an analysis of nutrients consumed by the athlete
in the four hours prior to a first exercise, during the first exercise, and within
an hour after the first exercise" ( claim 4).
The Examiner finds that
Boyes teaches ... that it was old and well known in the art of
nutrition management for a report to include an analysis of
nutrients consumed by the athlete in the four hours prior to a first
exercise, during the first exercise, and within an hour after the
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first exercise to help a user benefit from 'best practices' for
growth, strengthening, and recovery/repair.
Final Act. 11 (citing Boyes ,r,r 3, 6, 105, 122); see Final Act. 12; Ans. 20.
We agree with the Examiner that Boyes describes reporting
recommended nutrition information based on exercise (Boyes ,r,r 105, 122).
The Examiner, however, does not sufficiently explain how Boyes'
recommended nutrition information and performance information describes
analyzing nutrients consumed within specific time intervals preceding,
during, and after exercise. Without further explanation, we are left to
speculate on how Boyes describes such nutrient analysis.
Consequently, we are constrained by the record before us to find that
the Examiner erred in finding Travor, Chang, Southam, Benardot, and Boyes
render the disputed features of Appellants' claim 4 obvious. Accordingly,
we do not sustain the Examiner's obviousness rejection of claim 4.
CONCLUSIONS
Appellants have not shown that the Examiner erred in rejecting claims
1, 4--10, and 21 under 35 U.S.C. § 101.
Appellants have not shown that the Examiner erred in rejecting claims
1, 5-10, and 21 under 35 U.S.C. § 103(a).
Appellants have shown that the Examiner erred in rejecting claim
4 under 35 U.S.C. § 103(a).
DECISION
Because we have affirmed at least one ground of rejection with
respect to each claim on appeal, the Examiner's decision rejecting claims
1, 4--10, and 21 is affirmed. See 37 C.F.R. § 4I.50(a)(l).
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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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