Solheim Witt, Marit

Patent Trials and Appeals Board

Oct 7, 2019

13760715 - (D) (P.T.A.B. Oct. 7, 2019)

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.
13/760,715 02/06/2013 Marit Solheim Witt 242-002US1 2914
27791 7590 10/07/2019
ALLISON JOHNSON, P.A.
3600 AMERICAN BLVD. W., SUITE 410
MINNEAPOLIS, MN 55431
EXAMINER
BULLINGTON, ROBERT P
ART UNIT PAPER NUMBER
3715
NOTIFICATION DATE DELIVERY MODE
10/07/2019 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):
allison@ajiplaw.com
patent@ajiplaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte MARIT SOLHEIM WITT
____________________

Appeal 2017-009450
Application 13/760,715
Technology Center 3700
____________________

Before MICHAEL L. HOELTER, JEREMY M. PLENZLER, and
BRANDON J. WARNER, Administrative Patent Judges.

PLENZLER, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellant1 seeks our review under 35 U.S.C. § 134 of the Examiner’s
decision rejecting claims 2–8, 15–20, and 30–41 under 35 U.S.C. § 101. 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. Appellant identifies the real party in interest as Alpha
Element Institute, LLC. Appeal Br. 3.
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CLAIMED SUBJECT MATTER
Claims 5, 30–34, and 36 are independent. Claims 2–4, 6–8, 15–20,
35, and 37–41 depend from claim 5, 30, or 36. Claim 5 is illustrative of the
claims on appeal, and is reproduced below.
5. A method of analyzing the personality of an
individual having a face, the method comprising:
holding at least four different shapes near the face of the
individual;
assessing a relationship of the individual’s face to the at
least four shapes, the four shapes comprising a circular shape,
an oval shape, triangular shape, and a rectangular shape;
selecting one of the four shapes;
identifying a mind-body temperament correlated to the
selected shape, correlation of the mind-body temperament and
the selected shape having been predetermined; and
informing the individual of the identified mind-body
temperament.

OPINION
The Examiner determines that the claims are patent-ineligible under
35 U.S.C. § 101. Non-Final Act. 2–4. Appellant disputes the Examiner’s
rejection, focusing mainly on whether the claims recite limitations that are
not well-understood, routine, and conventional, and addressing only the
features recited in the independent claims. Appeal Br. 8–18. We have
considered each of Appellant’s arguments when reaching our decision
below.
Section 101 of the Patent Act provides that “any new and useful
process, machine, manufacture, or composition of matter, or any new and
useful improvement thereof” is patent eligible. 35 U.S.C. § 101. The claims
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fall within the literal scope of this provision because each claim recites a
process.
The Supreme Court, however, has long recognized an implicit
exception to this section: “Laws of nature, natural phenomena, and abstract
ideas are not patentable.” Alice Corp. v. CLS Bank lnt’l., 573 U.S. 208, 216
(2014) (quoting Ass’n for Molecular Pathology v. Myriad Genetics, Inc.,
569 U.S. 576, 589 (2013)). To determine whether a claim falls within one of
these excluded categories, the Court has set out a two-part framework. The
framework requires us first to consider whether the claim is “directed to one
of those patent-ineligible concepts.” Alice, 573 U.S. at 217. If so, we then
examine “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 (quoting Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S.
66, 78, 79 (2012)). That is, we examine the claims for an “inventive
concept,” “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 (alteration
in original) (quoting Mayo, 566 U.S. at 72–73).
Under the 2019 Eligibility Guidance, to decide whether a claim is
“directed to” an abstract idea, we evaluate whether the claim (1) recites an
abstract idea grouping listed in the guidance and (2) fails to integrate the
recited abstract idea into a practical application. See 2019 Revised Patent
Subject Matter Eligibility Guidance, 84 Fed. Reg. 50, 51 (Jan. 7, 2019)
(“2019 Eligibility Guidance”). If the claim is “directed to” an abstract idea,
as noted above, we then determine whether the claim recites an inventive
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concept. The guidance explains that, when making this determination, we
should consider whether the additional claim elements add “a specific
limitation or combination of limitations that are not well-understood,
routine, conventional activity in the field” or “simply append[] well-
understood, routine, conventional activities previously known to the
industry.” 2019 Eligibility Guidance, 84 Fed. Reg. at 56.
Step 2(A), Prong 1
The Examiner lists the steps recited in the claims and explains that
“[t]hese limitations simply describe a process of collecting and analyzing
data to identify a person’s personality” and “are akin to a longstanding
human organizing activity.” Non-Final Act. 2. That is, the Examiner
determines that the claims recite subject matter that falls within an abstract
idea grouping listed in the guidance: “Certain methods of organizing human
activity.” See 2019 Eligibility Guidance, 84 Fed. Reg. at 52.
Appellant does not provide any specific argument addressing whether
the claims recite an abstract idea. Rather, Appellant contends, generally,
that “[a]nalyzing the personality of an individual has not been identified by a
single court as an abstract idea and is not similar to any concept that a court
has identified as an abstract idea,” without addressing the particular rejection
made by the Examiner. Appeal Br. 8–9. Regardless of whether a court has
identified the particular endeavor of analyzing the personality of an
individual as an abstract idea, however, Appellant offers no explanation, and
does not even allege that such a process is not a method of organizing
human activity as determined by the Examiner.
Moreover, the claims recite another abstract idea grouping listed in
the guidance: “Mental processes—concepts performed in the human mind
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(including an observation, evaluation, judgment, opinion).” See 2019
Eligibility Guidance, 84 Fed. Reg. at 52. Those metal processes from claim
5 include:
assessing a relationship of the individual’s face to the at
least four shapes, the four shapes comprising a circular shape,
an oval shape, triangular shape, and a rectangular shape;
selecting one of the four shapes;
identifying a mind-body temperament correlated to the
selected shape, correlation of the mind-body temperament and
the selected shape having been predetermined.
Claim 30 is similar. Although reciting numerous additional steps, the
majority of those steps are also mental processes, which include:
correlating the first set of data with at least one mind-body
temperament selected from a group consisting of at least four
different mind-body temperaments;
correlating the second set of data with at least one mind-
body temperament selected from the group of at least four
different mind-body temperaments;
analyzing the correlation between the at least one mind-
body temperament associated with the first set of data and with
the at least one mind-body temperament associated with the
second set of data;
determining a perceived primary mind-body temperament
of the individual, the determining comprising determining to
which mind-body temperament the first set of data exhibits a
greatest degree of correlation and assigning the determined
mind-body temperament as a first perceived personality style,
and determining to which mind-body temperament the second
set of data exhibits a greatest degree of correlation and assigning
the determined mind-body temperament as a second perceived
personality style;
. . .
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selecting a shade of red from the at least four shades of
red;
identifying a mind-body temperament correlated to the
selected red shade, correlation of the mind-body temperament
and the selected red shade having been predetermined;
. . .
selecting a colored pattern from the at least four different
colored patterns;
identifying a mind-body temperament correlated to the
selected colored pattern, correlation of the mind-body
temperament and the selected colored pattern having been
predetermined;
. . .
selecting a metal palette from the at least four different
metal palettes;
identifying a mind-body temperament correlated to the
selected metal palette, correlation of the mind-body temperament
and the selected metal palette having been predetermined;
. . .
selecting a color palette from the at least two different
color palettes for an individual;
identifying a mind-body temperament correlated to the
first selected color palette, correlation of the mind-body
temperament and the first selected color palette having been
predetermined, the identified mind-body temperament correlated
to the first selected color palette being a primary mind-body
temperament of the individual;
comparing the perceived first and second perceived
personality styles with the primary mind-body temperament;
determining whether there is a balance or an imbalance in
the comparison.
Claims 31–34 and 36 recite limitations similar to those found in claims 5 and
30. For simplicity, we do not reproduce those claims, with the
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understanding that the similar limitations in those claims are considered
mental processes as well.
Because it is self-evident that the steps reproduced above are
“concepts performed in the human mind (including an observation,
evaluation, judgment, opinion),” the claims recite an abstract idea.
Step 2(A), Prong 2
The remaining limitations (those not included in the recited abstract
idea noted above) are no more than insignificant extra-solution activity,
which cannot integrate the mental processes into a practical application. See
2019 Eligibility Guidance, 84 Fed. Reg. at 55. Those limitations include
“holding” various objects to facilitate comparison to an individual (claims 5,
30–34, 36), “obtaining . . . data” (claim 30), and “informing the individual of
the [outcome]” (claims 5, 30–34, 36).
Accordingly, the claims are directed to an abstract idea.
Step 2(B)
Because we agree with the Examiner that the claims are directed to an
abstract idea, we next determine whether the claims provide an inventive
concept. See 2019 Eligibility Guidance, 84 Fed. Reg. at 56. Without
explanation, Appellant contends that “the Examiner provides no evidence
establishing that these limitations are recognized by a court, or anyone in the
art, as being well-understood, routine and conventional activities in the
industry.” Appeal Br. 11; see also id. at 13–18. The Examiner responds by
citing Thornley2 as evidence that the claim limitations are well-understood,
routine and conventional. See, e.g., Ans. 7 (citing Thornley ¶¶ 34–35).
Appellant contends that the Examiner’s citation to Thornley does not cure

2 US 2006/0073451 A1, published Apr. 6, 2006.
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the alleged deficiencies as to whether the claim limitations are well-known,
routine and conventional. Reply Br. 4–11. Appellant’s contentions appear
to require that Thornley anticipate the claims. Based on the record before
us, we see nothing that is not well-known, routine and conventional in the
claims.
The claims generally require holding various objects up to an
individual and making subjective comparisons and evaluations. To the
extent evidence is required to establish the conventionality of these claim
features (i.e., to the extent it is not readily apparent), the Examiner’s citation
to Thornley provides sufficient evidence.
To be clear, Thornley describes, for example, “assessing and
analyzing the personality of a person,” including “methods of cross-
referencing physical features displayed by a person to determine a
personality profile or predisposition.” Thornley ¶ 3. Thornley describes
“analyzing the physical attributes a person displays, their underlying
behavioral tendencies and interpersonal mannerisms . . . by assessing
different elements of a person’s physical features to determine the presence
of a certain attributes,” where “the element is compared with different
attributes for the element to determine whether or not a certain attribute is
present, and/or which attribute is most dominant.” Id. ¶ 30. Thornley
explains that “[t]he basic design elements are the color, line, sound, and
movement that a person displays by their physical features and actions.” Id.
¶ 34. Thornley further explains, for example, that “color can be generally
described to be the visibly distinct coloring in their completion” and “line
can be generally described as the combination of different lines that define
the shape of various features on the person’s face, body, and general
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silhouette,” which “can be observed and analyzed in order to determine
which attributes correspond between the different elements.” Id.
Accordingly, the claims do not add any inventive concept.
For at least these reasons, after applying the 2019 Eligibility
Guidance, we sustain the Examiner’s decision to reject claims 2–8, 15–20,
and 30–41 under 35 U.S.C. § 101.

CONCLUSION
In summary:
Claims
Rejected
Basis Affirmed Reversed
2–8, 15–20, and
30–41
§ 101 2–8, 15–20, and
30–41

Overall
Outcome
2–8, 15–20, and
30–41

DECISION
We AFFIRM the Examiner’s decision to reject claims 2–8, 15–20,
and 30–41.
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