Fitbit, Inc.

Patent Trials and Appeals Board

Dec 27, 2021

2021003522 (P.T.A.B. Dec. 27, 2021)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
16/414,780 05/17/2019 Yeqing Cheng GGLF-112-CON 2026
100462 7590 12/27/2021
Dority & Manning P.A. and Google LLC
Post Office Box 1449
Greenville, SC 29602
EXAMINER
GRANT, MICHAEL CHRISTOPHER
ART UNIT PAPER NUMBER
3715
NOTIFICATION DATE DELIVERY MODE
12/27/2021 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):
usdocketing@dority-manning.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte YEQING CHENG, YASAMAN BAIANI,
JACOB ANTONY ARNOLD, ALLISON MAYA RUSSELL,
and ALAN MCLEAN
____________

Appeal 2021-003522
Application 16/414,780
Technology Center 3700
____________

Before STEFAN STAICOVICI, MICHAEL L. HOELTER, and
WILLIAM A. CAPP, Administrative Patent Judges.

CAPP, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellant1 seeks our review under 35 U.S.C. § 134(a) of the Final
rejection of claims 1–20 under 35 U.S.C. § 101 as directed to a judicial
exception to patentable subject matter. We have jurisdiction under 35
U.S.C. § 6(b).
We AFFIRM.

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42(a). Appellant identifies Fitbit, Inc. as the Applicant and real
party in interest. Appeal Br. 3.
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THE INVENTION
Appellant’s invention relates to activity tracking. Spec. ¶¶ 1–2.
Claim 1, reproduced below with paragraph indentation added, is illustrative
of the subject matter on appeal.
1. A method, comprising:
capturing motion data of a user using one or more motion
sensors of an activity tracking device in one or more intervals
of a day, each interval comprising a start time, an end time, and
a near-end time being defined between the start time and the
end time, wherein the activity tracking device is configured to
generate a first notification in each interval in which a number
of steps taken by the user determined using the motion data
during the interval is less than a goal defined by a number of
steps when a near-end time of the interval is reached;
receiving, by the activity tracking device, a hold command
associated with a hold period;
suspending, in response to the hold command, the activity
tracking device from generating the first notification during the
hold period; and
without requiring user input and after the hold period,
causing the activity tracking device to generate a vibration as a
sensory output of the first notification using a vibrotactile
module, and/or generating a sound as an audio alert of the first
notification.
CASE POSTURE
Appellant’s application is a continuation of non-provisional
application no. 15/048,972. Appeal Br. 3. Such parent application came
before us in Appeal Case No. 2018-004701, decided March 18, 2019
(hereinafter the “Parent Case”). In the Parent Case, we affirmed the
Examiner’s rejection of all pending claims under 35 U.S.C. § 101 as directed
to a judicial exception to patentable subject matter. Id. After receiving our
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decision, Appellant allowed the parent application to go abandoned. See
Parent Case, Notice of Abandonment, May 29, 2019.
In prosecuting the instant continuation application, Appellant
advances claims that are similar, but not identical, to the claims in the Parent
Case. Our findings, reasoning, and analysis from the Parent Case, which
sustains the rejection of similar claims under the same grounds, features
prominently in the briefing of both Appellant and the Examiner in the instant
appeal. See generally Appeal Br., Ans.
OPINION
Appellant argues all pending claims as a group. Appeal Br. 6–15. We
select claim 1 as representative. See 37 C.F.R. § 41.37(c)(1)(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.
However, courts recognize judicial exceptions to Section 101, namely: (1)
laws of nature, (2) natural phenomena, and (3) abstract ideas. Mayo
Collaborative Servs. v. Prometheus Labs, Inc., 566 U.S. 66, 70–71 (2012).
The Supreme Court has set forth “a framework for distinguishing
patents that claim laws of nature, natural phenomena, and abstract ideas
from those that claim patent-eligible applications of those concepts.” Alice
Corp. v. CLS Bank Int’l, 573 U.S. 208, 217 (2014) (citing Mayo, 566 U.S.
at 72–73). According to the Supreme Court’s framework, we must first
determine whether the claims at issue are directed to one of those concepts.
Id. If so, we must secondly “consider the elements of each claim both
individually and ‘as an ordered combination’ to determine whether the
additional elements ‘transform the nature of the claim’ into a patent-eligible
application.” Id.
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In situations where an abstract idea is implemented on a computer, the
first step in the Alice/Mayo analysis asks whether the focus of the claims is
on a specific 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, LLC v. Microsoft Corp., 822 F.3d 1327, 1335–36 (Fed.
Cir. 2016).
The Supreme Court characterizes the second step of the analysis as “a
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 upon the [ineligible concept] itself.”’
Alice, 573 U.S. at 217–18 (brackets in original) (quoting Mayo, 566 U.S.
at 72). Where the claim is directed to an abstract idea that is implemented
on a computer, merely stating the abstract idea while adding the words
“apply it” is not enough to establish such an inventive concept. See Alice,
573 U.S. at 223.
[I]f that were the end of the § 101 inquiry, an applicant could
claim any principle of the physical or social sciences by reciting
a computer system configured to implement the relevant
concept.
Id. at 224.
Under the PTO’s guidelines, in conducting step one of the Alice
framework, 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 interactions such as a fundamental economic
practice, or mental processes); and
(2) additional elements that integrate the judicial exception
into a practical application (see MPEP § 2106.05(a)–(c), (e)–(h)).
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2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50
(Jan. 7, 2019) (the “Guidelines”).
In other words, under prong 1 of an abstract idea analysis, we look to
whether the claim recites an abstract idea. Then, if it does, under prong 2,
we look at the claim, as a whole, and determine whether the claim is
“directed to” the abstract idea or, instead, is “directed to” a “practical
application” of the abstract idea.
Step 1, Prong 1
The Guidelines identify three key concepts identified as abstract
ideas: (a) mathematical concepts;  (b) certain methods of organizing human
activity, such as “managing personal behavior”; and (c) mental processes
including “observation, evaluation, judgment, [and] opinion.” Guidelines,
84 Fed. Reg. at 52.
With respect to the first step, the Examiner determines that the claims
are directed to an abstract idea. Final Act. 3. According to the Examiner,
the steps are directed to an abstract idea in the form of a mental process. Id.
Appellant argues that claim 1 does not recite an abstract idea. Appeal
Br. 8. Appellant takes the position that the Examiner excises tangible,
physical elements from the claim and then merely alleges that the remaining
claim elements are mental processes. Id. Appellant supports its position by
drawing analogies to various examples laid out by the PTO in its published
guidelines. Id. at 8–9 (citing October 2019 Update to Subject Matter
Eligibility – hereinafter the “Update”).2 One example relied on by Appellant
deals with rearranging icons on a graphical user interface of a computer

2https://www.uspto.gov/sites/default/files/documents/peg_oct_20l9_update.pdf.
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system. Id. at 9. Appellant argues that each step of claim 1 on appeal is not
a mental process because the claim limitations require non-generic hardware
or tangible elements and their operators. Id. at 10. Appellant argues that
such limitations cannot be performed without such hardware or tangible
elements. Id. Appellant concludes, without providing any supporting legal
authority that: “[i]t is improper to take out all specific hardware or tangible
elements to find what is left to be a mental process.” Id.
In response, the Examiner disputes Appellant’s position that it is
improper to identify less than all claim limitations in a Section 101 rejection.
Ans. 8. The Examiner also cites Federal Circuit authority for the proposition
that PTO guidelines, such as relied on by Appellant in the instant case, do
not carry the force of law and are not binding on the courts. Id. (citing In re
Rudy, 956 F.3d 1379, 1382 (Fed. Cir. 2020); cxLoyalty, Inc. v. Maritz
Holdings Inc., 986 F.3d 1367 (Fed. Cir. 2021). The Examiner also points
out that Appellant’s stated position is at odds with our findings, reasoning,
and conclusion in the Parent Case. See generally Ans.
Appellant’s position is not persuasive. Appellant does not appear to
distinguish between a claim that merely “recites” an abstract idea and a
claim that is “directed to” an abstract idea. There is little question here that
claim 1 recites an abstract idea. Appellant’s Specification explains that the
invention counts the number of steps that a user walks during an incremental
period of time and then notifies the user whether the number of steps meets a
goal. Spec. ¶ 5. This concept is captured in the recitations of claim 1. The
Examiner characterizes such as a mental process. Final Act. 3.
Users can mentally count how many steps they take within a given
period of time and then determine whether that number of steps meets a goal
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without using an activity tracking device much less Appellant’s device. See
CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1372–73 (Fed.
Cir. 2011) (explaining that steps that can be performed in the human mind,
or by a human using a pen and paper is directed to an unpatentable mental
process). The mere fact that Appellant automates an otherwise mental
process with tangible sensors and data analysis capability does not render the
method any less abstract. Alice, 573 U.S. at 222 (explaining that the bare
fact that a computer exists in the physical rather than the purely conceptual
realm is beside the point). An abstract idea does not become nonabstract by
limiting the invention to a particular technological environment. Intellectual
Ventures I LLV v. Capital One Bank, 792 F.3d 1363, 1367 (Fed. Cir. 2015);
see also Affinity Labs of Texas, LLC v. DirecTV, LLC, 838 F.3d 1253, 1259
(Fed. Cir. 2016) (explaining that limiting the field of use of an abstract idea
to a particular existing technological environment does not render the claims
any less abstract).
We are also of the opinion that Appellant’s claimed method can be
considered a method of “managing personal behavior” under our Guidelines.
Appellant’s method encourages users to take more steps and live a less
sedentary life, which falls squarely within the ambit of organizing human
activity (managing personal behavior). A method of organizing human
activity is recognized by the courts as an abstract idea. See In re TLI
Communications LLC Patent Litig., 823 F.3d 607, 613 (Fed. Cir. 2016)
(classifying and storing digital images is an abstract idea as a method of
organizing human activity); see also Intellectual Ventures I LLC v. Capital
One Bank (USA), 792 F.3d 1363, 1367 (Fed. Cir. 2015) (tracking financial
transactions to determine whether they exceed a pre-set spending limit is an
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abstract idea as a method of organizing human activity); BASCOM Glob.
Internet Servs., Inc. v. AT&T Mobility LLC, 827 F.3d 1341, 1348 (Fed.
Cir. 2016) (filtering internet content is an abstract idea as a method of
organizing human behavior).
“Information as such is an intangible.” Elec. Power Grp., LLC v.
Alstom S.A., 830 F.3d 1350, 1353 (Fed. Cir. 2016). Courts treat collecting
information as well as analyzing information by steps people go through in
their minds as essentially mental processes within the abstract-idea category.
FairWarning IP, LLC v. Iatric Systems, Inc., 839 F.3d 1089, 1093 (Fed.
Cir. 2016). The claims here relate to monitoring and managing user
behavior by collecting data on the number of steps taken by a user during a
period of time, processing such data, and then notifying the user of the
outcome of the data analysis. Claims App. As such, the method recites an
abstract idea under the principles espoused in FairWarning.
Step 1, Prong 2
Under Prong 2 of Step 1 of the Guidelines, we do not assume that
such claims are directed to patent ineligible subject matter because “all
inventions at some level embody, use, reflect, rest upon, or apply laws of
nature, natural phenomena, or abstract ideas.” TLI, 823 F.3d at 611 (quoting
Alice). Instead, “the claims are considered in their entirety to ascertain
whether their character as a whole is directed to excluded subject matter.”
McRO, Inc. v. Bandai Namco Games America Inc., 837 F.3d 1299, 1312
(Fed. Cir. 2016). If the claims are not directed to an abstract idea, the
inquiry ends. Guidelines. If the claims are “directed to” an abstract idea,
then the inquiry proceeds to the second step of the Alice framework. Id.
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Consequently, we consider whether the claimed method includes
additional elements that integrate the judicial exception into a practical
application. A claim that integrates a judicial exception into a practical
application will apply, rely on, or use 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.
Guidelines.
Here, Appellant argues that claim 1 is not directed to an abstract idea
because it generates data using motion sensors and causes a device to vibrate
or generate a sound. Appeal Br. 11. To support this argument, Appellant
lifts an isolated sentence fragment out of context from the Update that
mentions using a judicial exception in conjunction with a “particular
machine.” Id. Appellant leverages such out-of-context statement to argue
that its device qualifies as a “particular machine” because it has motion
sensors and a vibrator. Id.
Appellant further supports its argument by analogizing the instant
case to an example published in the Update that relates to Livestock
Management. Id. at 12–13. Appellant notes that, in the Livestock
Management example, claim 1 is considered not to be integrated into to a
practical application because it merely collects and analyzes data and
displays the results. Id. However, claims 2 and 3 of the example are
considered to be integrated into a practical application because the results of
the data analysis are used to control operation of an animal feed dispenser.
Id. Appellant analogizes its claims to claims 2 and 3 of the Livestock
Management example. Id. at 13. In the analogy, Appellant likens
generating activity notifications in its invention to controlling operation of a
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feed dispenser. Id. Appellant argues that generating user notifications does
not simply display data analysis results. Id. Instead, according to Appellant,
its invention uses particular hardware elements to “encourage healthy
behaviors.” Id.
In response, the Examiner points out that Appellant’s vibrator does
not constitute a particular machine for purposes of the two part Alice/Mayo
test. Ans. 11. According to the Examiner, the device merely provides a
notification to the user. Id. (“the limitations merely relate to data
outputting”). The Examiner, furthermore, observes that Appellant’s
Specification teaches that the vibrator is interchangeable with a visual
display. Id. at 12.
Appellant’s claim 1 is a method claim that contains four steps, which
can be abbreviated and summarized as:
(1) capturing data;
(2) receiving . . . a command;
(3) suspending . . . notification; and
(4) causing . . . vibration.
Claims App. On its face, the claim merely seeks to automate the process of
helping users keep track of how many steps they take during a time interval.
Such claims are routinely held to be directed to an abstract idea. See Univ.
of Fla. Research Found, Inc. v. General Electric Co, 916 F.3d 1363, 1367
(Fed. Cir. 2019).
We have considered Appellant’s analogy to the Livestock
Management example and come to the opposite conclusion to that of
Appellant. In its Livestock Management analogy, Appellant appears to
agree that merely displaying results of data analysis as in claim 1 of
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Livestock Management example does not integrate an abstract ideal into a
practical application. Appeal Br. 12–13. What Appellant apparently fails to
appreciate is that its own vibration notification step amounts to nothing more
than a display of the outcome of the data analysis. Apart from conveying
information to the user as to whether or not a goal has been achieved,
Appellant’s notification means, whether vibratory, auditory, or visual
accomplishes nothing that is considered to be “practical” under our
Guidelines. Appellant’s argument regarding encouraging healthy activities
is not persuasive. “Healthy activities” is a desired outcome of managing
personal behavior. It is not a structural element of a “particular machine”
such as the animal feed dispenser in the Livestock Management example.
Appellant next argues that its claims are directed to a practical
application because it provides an improved activity tracker. Appeal Br. 14.
To support its position, Appellant lifts, out of context, another isolated
phrase from the Update. Id. Appellant touts the advantages of its invention
over prior art activity tracking devices as indicating that it claims patentable
subject matter. Id. at 14–15. In essence, Appellant argues that its device is
integrated into an application that is “practical” because it is better than
older devices.
The problem with Appellant’s approach is that its purported
improvement is not grounded in improvements to the sensors, the vibrator,
or the computing device within the activity tracker. Rather, the
improvement is in the abstract idea of informing users of their activity level.
However, no matter how much of an advance in the field of activity tracking
the claims recite, the advance lies entirely in the realm of abstract ideas, with
no plausibly alleged innovation in the non-abstract application realm. Univ.
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of Fla., 916 F.3d at 1367 (Fed. Cir. 2019) (explaining that automation that
even results in “life altering consequences” does not necessarily render it
any less abstract). We may assume that the techniques claimed are
“[g]roundbreaking, innovative, or even brilliant,” but that is not enough for
eligibility. Ass'n for Molecular Pathology v. Myriad Genetics, Inc., 569
U.S. 576, 591, 133 S.Ct. 2107, 186 L.Ed.2d 124 (2013); accord buySAFE,
Inc. v. Google, Inc., 765 F.3d 1350, 1352 (Fed. Cir. 2014). An advance that
is entirely within the realm of abstract ideas is ineligible for patenting. SAP
Am., Inc. v. InvestPic, LLC, 898 F.3d 1161, 1163 (Fed. Cir. 2018).
Here, the focus of the claims is not on a specific, asserted
improvement in computer capabilities; rather, it is on a method for which
sensing and computational technology is involved merely as a tool. Enfish,
LLC v. Microsoft Corp., 822 F.3d 1327, 1335‒36 (Fed. Cir. 2016). The
claims, thus, fail to integrate the judicial exception into a practical
application and, therefore, are “directed to” an abstract idea.
Step 2
Turning to step 2 of the Alice/Mayo analysis, we look more precisely
at what the claim elements add in terms of whether they identify an
“inventive concept” in the application of the ineligible matter to which the
claim is directed to. SAP Am., Inc. v. InvestPic, LLC, 898 F.3d 1161, 1167
(Fed. Cir. 2018). “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].’” Alice, 573 U.S. at 221
(quoting Mayo, 566 U.S. at 77–78). Those “additional features” must be
more than well-understood, routine, conventional activity. Mayo, 566 U.S.
at 79.
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Under step two of the Alice/Mayo framework, the Examiner
determines that Appellant’s sensors, user-interface, display, processors,
member, computing device, and computer readable medium are generic,
well-known, and conventional computer elements and are claimed for
performing generic, well-known, and convention functions of collecting and
processing data. Final Act. 5. The Examiner further finds that Appellant
essentially admits that such elements are well-known conventional by the
lack of detailed disclosure for them provided in the Specification. Id.
Appellant does not challenge the Examiner’s findings with respect to
Step 2 of the Alice/Mayo analysis. See generally Appeal Br. We deem the
Examiner’s finding in this regard to be uncontested and, therefore,
established.
Appellant merely uses conventional sensing, computational, and
display technology to help users keep track of their activity level. The claim
is directed to an abstract idea and provides no additional elements that
amount to significantly more than the ineligible concept itself. Alice, 573
U.S. at 217–18. We sustain the Examiner’s rejection of claims 1–20.
CONCLUSION
Claims
Rejected
35
U.S.C. §
Basis Affirmed Reversed
1-20 101 Eligibility 1-20
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).
AFFIRMED