Jeffrey BooherDownload PDFPatent Trials and Appeals BoardJul 29, 201913475850 - (D) (P.T.A.B. Jul. 29, 2019) Copy Citation 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. 13/475,850 05/18/2012 Jeffrey Booher BOOH 4412002 1038 100772 7590 07/29/2019 Shiells Law Firm P.C 1910 Pacific Avenue Suite 14000 Dallas, TX 75201 EXAMINER FLETCHER, JERRY-DARYL ART UNIT PAPER NUMBER 3715 NOTIFICATION DATE DELIVERY MODE 07/29/2019 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): admin@shiellslaw.com docket@blackhillsip.com tfshiells@shiellslaw.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________________ Ex parte JEFFREY BOOHER1 ____________________ Appeal 2018-007653 Application 13/475,850 Technology Center 3700 ____________________ Before DANIEL S. SONG, WILLIAM A. CAPP, and JILL D. HILL, Administrative Patent Judges. SONG, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE The Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s Final Office Action (“Final Act.”) rejecting claims 1–22, 24–28, 30, 31, and 38–42 in the present application. We have jurisdiction under 35 U.S.C. §§ 6(b) and 134(a). We AFFIRM. 1 The Appellant is the real party in interest. Appeal Brief (“App. Br.”) 2. Appeal 2018-007653 Application 13/475,850 2 The claimed invention is directed to a method for producing customized training plans for multi-discipline endurance athletic competitions. Title. Representative independent claim 1 reads as follows: 1. A computer-implemented method for creating and printing or displaying to a user an individually customized multi- discipline training plan for improving the physical capability of an athlete in a multi-discipline athletic endurance event, comprising the steps: computing a normalized performance value of an individual athlete for each of at least two different disciplines of a multi-discipline athletic endurance event; wherein the normalized performance value for each of the at least two different disciplines is derived at least in part from a measured ability of the athlete to sustain work for a selected period of time, wherein at least one of the normalized performance values of the at least two different disciplines further affects a value of another of the normalized performance values of the at least two different disciplines, wherein at least two of the normalized performance values of the at least two different disciplines each has an associated intensity level that affects another of the at least two different disciplines; generating an electronically or physically printed training plan customized for said athlete correlated to achieving an incremental improvement in said normalized performance values for each of said disciplines within a particular period of time based on said intensity levels, accepting new data input from at least one sensor taken from the group of heart rate monitor, time clock and distance measured by GPS, and dynamically recalculating said normalized performance values based on said new data on a near real-time basis. App. Br. 38, Claims App. Appeal 2018-007653 Application 13/475,850 3 REJECTION The Examiner rejects claims 1–22, 24–28, 30, 31, and 38–42 as being directed to patent ineligible subject matter under the judicial exception to 35 U.S.C. § 101. Final Act. 2. PRINCIPLES OF LAW The controlling statute provides that “[w]hoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.” 35 U.S.C. § 101. The Courts recognize certain judicial exceptions to Section 101, namely: (1) laws of nature, (2) natural phenomena, and (3) abstract ideas. See 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. Pty. Ltd. 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. “A claim that recites an abstract idea must include Appeal 2018-007653 Application 13/475,850 4 ‘additional features’ to ensure ‘that the [claim] is more than a drafting effort designed to monopolize the [abstract idea].’” Id. at 221 (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. ANALYSIS Only those arguments actually made by the Appellant have been considered in this decision. Arguments that the Appellant could have made but chose not to make have not been considered and are deemed to be waived. See 37 C.F.R. § 41.37(c)(1)(iv); In re Jung, 637 F.3d 1356, 1365– 66 (Fed. Cir. 2011); Ex parte Frye, 94 USPQ2d 1072, 1075–76 (BPAI 2010 (precedential)). In that regard, Appellant’s arguments are directed to independent claim 1. App. Br. 22–35. Thus, claim 1 is representative, and the remaining claims stand or fall with claim 1. In applying Step One of the Alice framework, the Examiner determines that claim 1 recites abstract ideas of: computing a normalized performance value of an individual for a plurality of activities; deriving the normalized values in part from a measured ability of an athlete to sustain work for a period of time; using the normalized performance values for the different activities to affect other values; and generating a customized training plan based on the normalized values. Final Act. 3. The Examiner explains that the recited subject matter are abstract ideas because they: Appeal 2018-007653 Application 13/475,850 5 involve[] the collecting and comparing of information (collecting performance values and comparing them to each other) and the use of mathematical relationships to perform calculations (normalization of performance values). The courts have identified that collecting data, analyzing the data and displaying certain results of the collecting and analysis is an abstract idea of itself (see Electric Power Group LLC. v. Alstom S.A.). Final Act. 3. In applying Step Two of the Alice framework, the Examiner further determines that “[t]he claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception because the use of a computing device to perform calculations and display information is a routine function of a generic computing device.” Final Act. 3. According to the Examiner, “[w]hen viewed either as individual limitations or as a combination, the claims as a whole do not significantly add to the abstract idea.” Final Act. 4. In that regard, the Examiner observes that “the claims themselves do not purport to improve the functioning of the computer itself or the sensors used,” and the “[u]se of an unspecified, generic computer does not transform an abstract idea into a patent eligible invention.” Final Act. 4. We agree with the Examiner, and consider claim 1 and the arguments of the Appellant infra. The PTO recently published revised guidance on the application of Section 101. 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019) (“Guidance”). This Guidance provides that in conducting Step One of the Alice framework, we first look to whether the claim recites: Appeal 2018-007653 Application 13/475,850 6 Prong 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 Prong 2: additional elements that integrate the judicial exception into a practical application. See Guidance. In other words, under Prong 1, we look to whether the claim recites an abstract idea. If the claim recites an abstract idea, we look under Prong 2 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. Only if a claim recites a judicial exception and does not integrate that exception into a practical application, do we then look to Step Two under Alice framework to determine whether the claim adds a specific limitation beyond the judicial exception that is not well-understood, routine, conventional in the field, or simply appends well-understood, routine, conventional activities previously known to the industry, specified at a high level of generality, to the judicial exception. See Guidance. Alice Step One, Prong 1 The Guidance identifies three key concepts as abstract ideas: (a) mathematical concepts including “mathematical relationships, mathematical formulas or equations, mathematical calculations”; (b) certain methods of organizing human activity, such as “fundamental economic principles or practices,” “commercial or legal interactions,” and “managing personal behavior or relationships or interactions between people”; and Appeal 2018-007653 Application 13/475,850 7 (c) mental processes including “observation, evaluation, judgment, [and] opinion.” See Guidance 52. Claim 1 recites the steps of “computing a normalized performance value,” wherein these values are “derived” using “measured ability of the athlete,” and that the derived normalized performance value of one discipline has an associated intensity level that affects another discipline. App. 38, Claims App. However, collecting and analyzing information, without more, are treated as essentially mental processes within the abstract idea category. FairWarning IP, LLC v. Iatric Systems, Inc., 839 F.3d 1089, 1093 (Fed. Cir. 2016) (citing Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1353 (Fed. Cir. 2016)); see also Synopsys, Inc. v. Mentor Graphics Corp., 839 F.3d 1138, 1147 (Fed. Cir. 2016)) (explaining that analyzing information by steps people go through in their minds, or by mathematical algorithms, without more, are essentially mental processes within the abstract-idea category). These limitations recite intangible information (“measured ability,” “normalized performance value”), and also recite conducting mental processing and/or mathematical calculations (“computing,” “deriv[ing]”). We agree with the Examiner’s assessment that the use of “mathematical relationships to calculate values that affect each other is merely an abstract idea of performing mathematical computations. The results of these calculations are merely used to display results on a display or printed on a substrate, and thus do not transform the abstract idea into patent eligible subject matter.” Ans. 5. Therefore, we agree with the Examiner’s determination that claim 1 recites abstract ideas. Appeal 2018-007653 Application 13/475,850 8 Alice Step One, Prong 2 Under Prong 2 of the Guidance, we do not assume that such claims are directed to patent ineligible subject matter because “[a]t some level, ‘all inventions . . . embody, use, reflect, rest upon, or apply laws of nature, natural phenomena, or abstract ideas.’” In re TLI Commc’ns LLC Patent Litig., 823 F.3d 607, 611 (Fed. Cir. 2016) quoting Alice (quoting Mayo). 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) (quoting Internet Patents Corp. v. Active Network, Inc., 790 F.3d 1343, 1346 (Fed. Cir. 2015) (citation omitted)). If the claims are not directed to an abstract idea, the inquiry ends. Guidance. If the claims are “directed to” an abstract idea, then the inquiry proceeds to the second step of the Alice framework. Id. Consequently, we consider whether the method of claim 1 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. Guidance. As set forth above, claim 1 recites a computer-implemented method, and further recites the steps of generating electronically or physically printed training plan, accepting new data input from a sensor, and recalculating the normalized performance values based on the new data. App. Br. 38, Claims App. The step of “generating an electronically or physically printed training Appeal 2018-007653 Application 13/475,850 9 plan customized for said athlete correlated to achieving an incremental improvement in said normalized performance values for each of said disciplines within a particular period of time based on said intensity levels,” merely requires the displaying or printing the result of the abstract computing, deriving, and measuring steps. Such step of displaying or printing the results does not integrate the recited abstract steps into a practical application. The recitation that the generated training plan is “correlated to achieving an incremental improvement” appears to imply that there may be other steps required to generate such a training plan. However, not only are such steps not recited in the claim, but such steps would appear to also only involve additional abstract mental and/or computing steps. The recited step of accepting new data input from a sensor merely involves the receipt of additional intangible information. The fact that the claim recites that this intangible information is obtained from a heart rate monitor, time clock, and/or GPS merely specifies the source of the intangible information, and does not integrate the recited abstract ideas into a practical application as to those devices. Specifically, we observe that the claim does not recite that the received information is used to alter their operation or function. Finally, the recited step of recalculating the normalized performance values based on the newly received data on a near real-time basis merely requires re-performing the previously recited computing and deriving steps, which are abstract for the reasons discussed above. Therefore, in our assessment, the above noted limitations do not integrate the judicial exceptions into a practical application in accordance with Prong 2 of the Guidance. Appeal 2018-007653 Application 13/475,850 10 Alice Step Two In accordance with Alice, we “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.” Alice, 573 U.S. at 217. We agree with the Examiner that the recited limitations of claim 1, fail to transform the nature of method claim 1 into a patent-eligible application. Final Act. 3–4. As discussed above, the individual limitations recite steps that are abstract, including intangible information (“measured ability,” “normalized performance value”), and mental processing and/or mathematical calculations (“computing,” “deriv[ing]”), and as such, fail to transform the abstract nature of the claim. Moreover, the step of generating electronically or physically printed training plan, accepting new data input, and recalculating the normalized performance values based thereon, does not transform the abstract nature of the claimed method either, in that these steps merely display or print the results of the abstract steps, and update the results using more recent abstract information. In context of the combination, we observe that the preamble of claim 1 recites that the method is “computer-implemented.” App. Br. 38, Claims App. However, the fact that claim 1 recites a generic computer for implementation of the claimed method steps does not establish that the claimed method is not abstract. “Courts have examined claims that required the use of a computer and still found that the underlying, patent-ineligible invention could be performed via pen and paper or in a person’s mind.” Versata Dev. Grp. v. SAP Am., Inc., 793 F.3d 1306, 1335 (Fed. Cir. 2015), Appeal 2018-007653 Application 13/475,850 11 quoted in Guidance, 84 Fed. Reg. at 52 n.14. Here, claim 1 broadly recites a generic computer that simply executes the abstract method steps described above, and a general-purpose computer that merely executes the judicial exception is not a particular machine. Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 716–17 (Fed. Cir. 2014). Using a computer “only for its most basic function, the performance of repetitive calculations,” may not impose meaningful limits on the claim’s scope. Bancorp Servs. v. Sun Life Assurance Co. of Can. (U.S.), 687 F.3d 1266, 1278 (Fed. Cir. 2012). The Appellant argues that claim 1 includes the further limitation of “accepting new data input from at least one sensor” recites non-abstract subject matter.” App. Br. 35. However, the recited sensor merely specifies the source of intangible information, and fails to transform the method into a patent-eligible application. App. Br. 35. In addition, although claim 1 recites a heart rate monitor, time clock, and/or GPS, the claim does not recite any limitation that transforms such devices that provide the abstract information, or transforms the computer used to process the abstract information in accordance with the recited steps. Therefore, considering the claim as a whole, the Appellant’s invention lacks a technical solution to a technical problem, and the recited limitations of claim 1, fail to transform the nature of the claimed method into a patent-eligible application. The Appellant argues that “Alice Corp. precludes the finding that the present invention of Claim 1 is ‘abstract’ at least because Claim 1 does not claim a fundamental practice, such as a fundamental athletic practice, as contemplated by Alice Corp.” App. Br. 24. According to the Appellant, claim 1 “is not directed to a fundamental athletic practice, but to the contrary, Claim 1 is directed [] towards a non-fundamental and Appeal 2018-007653 Application 13/475,850 12 unconventional athletic practice that is not longstanding, and hence, should not be deemed an abstract idea under 35 U.S.C. § 101.” App. Br. 26; see also id. at 24–25, 28–29. However, as the Examiner explains, “fundamental practices” is only one of the categories identified as ineligible under the Alice framework, and “a non-finding in one category does not preclude the analysis under the other categories.” Ans. 6. Indeed, the Appellant’s argument does not address the fact that mathematical concepts and mental processes are also considered abstract ideas. In that regard, we agree with the Examiner’s assessment that claim 1 recites abstract ideas in that “the collecting of data, the analysis of the collected data, and the displaying of certain results of the collecting and analysis.” Ans. 4–5. In addition, we observe that the framework set forth in Alice is not limited exclusively to fundamental practices, but rather, is applicable for determining whether a claimed invention is directed to patent ineligible subject matter, and as noted by the Examiner, “the two-part Alice/Mayo framework have been applied to the claims.” Ans. 5. The Appellant argues that the claimed invention “is more than a mere displaying of results - this is a determination of results according to an unconventional training plan.” App. Br. 26. However, the fact that the claimed invention may be unconventional or novel does not establish that it is directed to patent eligible subject matter. See Ass’n for Molecular Pathology v. Myriad Genetics, Inc., 569 U.S. 576, 591 (2013) (Explaining that even if the techniques claimed are groundbreaking, innovative, or even brilliant, that is not enough for eligibility). The Appellant also asserts that the training plan limitation also provides “additional elements that are sufficient to amount to significantly more than the judicial exception under Appeal 2018-007653 Application 13/475,850 13 Part II of the analysis.” App. Br. 23. However, this assertion is not supported or explained, and we disagree for the reasons already discussed above. The Appellant also argues that the calculations are too complex to be handled by the human mind. App. Br. 31 (citing Cybersource, 654 F.3d 1366, 1376). However, neither the claims nor the Specification establishes that the calculations involved in computing normalized performance values, correlating values and intensity levels, etc., are complex. In that regard, we observe that the Specification does not appear to describe in detail, the calculations necessary in the performance of the recited method, much less establish that the calculations are complex. Moreover, using a computer to perform calculations to achieve a solution more quickly is not dispositive in establishing patent eligibility. See Versata, 793 F.3d at 1335 (citing SiRF Tech., Inc. v. Int’l Trade Comm’n, 601 F.3d 1319, 1333 (Fed. Cir. 2010) (“In order for the addition of a machine to impose a meaningful limit on the scope of a claim, it must play a significant part in permitting the claimed method to be performed, rather than function solely as an obvious mechanism for permitting a solution to be achieved more quickly, i.e., through the utilization of a computer for performing calculations.”)); see also Bancorp Servs., L.L.C. v. Sun Life Assur. Co. of Can. (U.S.), 687 F.3d 1266, 1278 (Fed. Cir. 2012) (“the fact that the required calculations could be performed more efficiently via a computer does not materially alter the patent eligibility of the claimed subject matter.”). The Appellant asserts that the claimed invention “is similar to Diehr – – here, algorithm used for ‘curing’ of muscle (instead of rubber, as in Diehr) since, in these claims, there is a specific recitation of employing the training Appeal 2018-007653 Application 13/475,850 14 schedule to improve physical capability of the athlete.” App. Br. 36 (citing Diamond v. Diehr, 450 U.S. 175, 185 (1981)); see also App. Br. 30, 33–34. According to the Appellant, “Claim 1 concentrates upon triathletic ability, also controlling or influencing a physical trait, such as physical capability, muscle tone or mass, etc.” App. Br. 34. As such, the Appellant asserts that the claim recites generating a plan and algorithmic development of a plan that, when implemented by the athlete, improves his/her physical capability in a measurable way, is like the algorithmic method for curing rubber implemented in Dier [sic, Diehr], where implementation of the algorithmic method likewise is used to alter the physical properties of the rubber. App. Br. 35. We do not agree with the Appellant that its invention is analogous to the process disclosed in Diehr. In Diehr, the Supreme Court determined that the claim at issue recited a process for molding rubber products, and although the process utilized a mathematical formula, the claim was “not as an attempt to patent a mathematical formula.” Diehr, 450 U.S. 175, 191 (1981). The process in Diehr involved a process for transforming uncured synthetic rubber into cured precision rubber products. Id. at 177. In contrast, the present invention is not directed to a technological process in which the athletic improvement is based on technological transformation of the athlete that ensures a specific outcome. Instead, the present invention is directed to generation of, essentially, a customized document (in electronic or printed form) with recommendations for training, which presumably, if followed, may result in higher athletic performance. Of course, the asserted higher athletic performance is not only unspecific, but it is also not ensured Appeal 2018-007653 Application 13/475,850 15 and is ultimately speculative. Thus, the Appellant’s argument drawing analogy with Diehr is unpersuasive. In summary, as evident from the above discussion, we agree with the Examiner’s assessment that claim 1 is directed to the abstract idea, which is ineligible for patent protection. The remaining claims 2–22, 24–28, 30, 31, and 38–42 fall with claim 1. Claims 40–42 The Appellants arguments specifically directed to dependent claims 40–42 (App. Br. 20–22) are moot as the additional basis of the rejection of these dependent claims have been withdrawn by the Examiner. Ans. 4. CONCLUSION The Examiner’s rejection of claims 1–22, 24–28, 30, 31, and 38–42 as being directed to patent ineligible subject matter under the judicial exception to 35 U.S.C. § 101 is AFFIRMED. 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)(1)(iv). AFFIRMED Copy with citationCopy as parenthetical citation