adidas AG

Patent Trials and Appeals BoardMay 26, 2021

2020006680 (P.T.A.B. May. 26, 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. 16/197,854 11/21/2018 Andrew J. GRAHAM 2483.098000S 2903 63504 7590 05/26/2021 STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C. 1100 NEW YORK AVENUE, N.W. WASHINGTON, DC 20005 EXAMINER NGUYEN, CUONG H ART UNIT PAPER NUMBER 3662 NOTIFICATION DATE DELIVERY MODE 05/26/2021 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): e-office@sternekessler.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte ANDREW J. GRAHAM, ALAN R. LEE, and JON H. WERNER Appeal 2020-006680 Application 16/197,854 Technology Center 3600 Before BENJAMIN D. M. WOOD, BRANDON J. WARNER, and LEE L. STEPINA, Administrative Patent Judges. WOOD, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s decision to reject claims 1–3, 6, and 9–22. See Final Act. 1. Claims 4, 5, 7, and 8 have been canceled. Appeal Br. 21, 22 (Claims App.). An oral hearing in accordance with 37 C.F.R. § 41.47 was held on April 26, 2021, a transcript of which will be entered into the record in due course. We have jurisdiction under 35 U.S.C. § 6(b). 1 “Appellant” refers to the applicant as defined in 37 C.F.R. § 1.42. Appellant identifies the real party in interest as adidas AG. Appeal Br. 3. Appeal 2020-006680 Application 16/197,854 2 We REVERSE and enter a NEW GROUND OF REJECTION under 37 C.F.R. § 41.50(b). CLAIMED SUBJECT MATTER The claims are directed to systems and methods for modifying a fitness plan. Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. A method of modifying a fitness plan, the method comprising: providing a user input on a display of a portable electronic device, the portable electronic device further including a microprocessor, a satellite positioning system receiver, and a wireless communication transceiver; receiving a user selection related to the fitness plan on the user input; identifying electronic plan data stored in a database on a remote computing device based on the selection, the electronic plan data being related to the fitness plan; receiving the electronic plan data on the portable electronic device; generating an electronic schedule of fitness activities based on the electronic plan data; receiving a second user selection related to the electronic schedule on the user input; and modifying the electronic schedule based on the second user selection; collecting electronic fitness data during performance of a fitness activity of the electronic schedule of fitness activities; and modifying automatically the electronic schedule of fitness activities based on the electronic fitness data collected during the fitness activity. Appeal 2020-006680 Application 16/197,854 3 REFERENCE Name Reference Date Shum US 2003/0224337 A1 Dec. 4, 2003 REJECTION2 Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis 1–3, 6, 9–22 102 Shum OPINION Claims 1–3, 6, and 9–22: Rejected as Anticipated by Shum Independent claim 1 is directed to a method that includes the step of “modifying automatically the electronic schedule of fitness activities based on the electronic fitness data collected during the fitness activity.” Appeal Br. 21 (Claims App.). Independent claim 9 is similar in that it recites a portable electronic device comprising a processor configured to perform the “modifying automatically” step of claim 1. Id. at 22. Independent claim 16 is also similar to claim 1 in that it recites a method comprising the step “modifying automatically a second fitness activity from the electronic schedule based on the electronic fitness data collected during the first fitness activity.” Id. at 23. For claim 1, the Examiner finds that “Shum et al inherently teach [the] claimed limitation of: ‘modifying automatically the electronic schedule’ based on input data because Shum et al computer automatically response/updating to new inputs (i.e., displaying an outcome/resulting of a new schedule from Shum et al.’s structure of Fig. 1 2 In the Examiner’s Answer, the Examiner withdrew a rejection of claims 1–3, 6, and 9–22 under 35 U.S.C. § 103(a) and entered a new ground of rejection of these claims under 35 U.S.C. § 102. Ans. 3, 6–12. Appeal 2020-006680 Application 16/197,854 4 and para [0058], [0083]).” Ans. 7. The Examiner makes a similar finding for claims 9 and 16. Id. at 9–10 (citing Shum ¶ 63, Fig. 1). Appellant responds that the Office does not explain “why automatic modification of an electronic schedule of fitness activities based on collected fitness data necessarily flows from the teachings of Shum as required to show an inherent disclosure.” Reply Br. 4. Appellant submits that, on the contrary, “Shum only discloses modification of its workout plan by adding and removing training scripts to a calendar,” and “there is no indication in Shum that collected fitness data can be used to modify Shum’s workout plan.” Id. “It is well settled that a prior art reference may anticipate when the claim limitations not expressly found in that reference are nonetheless inherent in it.” In re Cruciferous Sprout Litig., 301 F.3d 1343, 1349 (Fed. Cir. 2002) (citations and internal quotation marks omitted). In relying on inherency, the Examiner must provide evidence or reasoning to establish a sound basis for the Examiner’s belief that the missing limitation is necessarily present in the reference. See In re Spada, 911 F.2d 705, 708 (Fed. Cir. 1990). In the present case, the Examiner relies on Figure 1 and paragraphs 58, 63, and 83 of Shum to support the finding that the missing limitation is necessarily present in Shum. Ans. 7, 10. Figure 1 of Shum depicts “a generic computing device that can be used for creating a training script or for implementing a training script.” Shum ¶ 9. Figure 1 does not discuss or depict modification of training scripts (which we understand the Examiner to be equating with a training plan). And although paragraphs 58, 63, and 83 of Shum describe user modification of a training script, and an automatic Appeal 2020-006680 Application 16/197,854 5 start feature whereby a sequential step of the script will automatically start when the previous step is completed (see Shum ¶¶ 58, 63, 83), the Examiner has not explained how these excerpts from Shum provide a sound basis for determining that the automatic modification limitation is inherently disclosed in Shum. Therefore, we are not persuaded that Shum discloses all of the limitations of independent claims 1, 9, and 16, either expressly or inherently, and do not sustain the Examiner rejection of these claims, as well as claims 2, 3, 6, 10–15, and 17–22, which depend therefrom, as anticipated by Shum. New Ground of Rejection Under 37 C.F.R. § 41.50(b) We enter a new ground of rejection for claims 1–3, 6, and 9–22 under 35 U.S.C. § 101 as directed to patent-ineligible subject matter. To determine whether a claim falls within a judicially recognized exception to patent eligibility under 35 U.S.C. § 101, we apply the two-step framework set forth in Mayo Collaborative Services v. Prometheus Laboratories, Inc., 566 U.S. 66 (2012), and reaffirmed in Alice Corporation Proprietary LTD. v. CLS Bank International, 573 U.S. 208 (2014). For the first Alice step (the USPTO’s Patent Subject Matter Eligibility guidance, MPEP § 2106, designates the first step of Alice as Step 2A3), we determine whether the claims at issue are directed to a patent-ineligible concept such as an abstract idea, law of nature, or natural phenomenon. Alice, 573 U.S. at 3 Under the USPTO’s Step 1, we determine whether the claimed invention falls within one of the four statutory categories of invention under 35 U.S.C. § 101: processes, machines, manufactures, and compositions of matter. MPEP § 2106 III. Here, the claims recite either a process or a machine, thus satisfying USPTO Step 1. Appeal 2020-006680 Application 16/197,854 6 217 (citing Mayo, 566 U.S. at 78–79). If so, we advance to the second Alice step (Step 2B of the USPTO’s Patent Subject Matter Eligibility guidance) where “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” of the otherwise patent-ineligible concept. Id. (quoting Mayo, 566 U.S. at 78–79). We also follow the USPTO’s additional guidance on applying Step 2A. See 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019) (“Revised Guidance”).4 The Revised Guidance establishes a “two-prong inquiry” for determining whether a claim is directed to a judicial exception. Id. at 54. In prong one, we determine whether the claim recites a judicial exception, such as an abstract idea. Id. The groupings of abstract ideas listed in the guidance include “Mathematical concepts,” “Certain methods of organizing human activity,” and “Mental processes.” Id. at 52. If the claim recites a judicial exception, we look to whether the claim recites additional elements that integrate the judicial exception into a practical application. Id. at 50. Thus, a claim is directed to a judicial exception only if the claim recites a judicial exception and does not integrate that exception into a practical application. Id. If we determine that the judicial exception is not integrated into a practical application, we proceed to Step 2B and determine whether the claim adds a specific limitation beyond the judicial exception that is not well-understood, routine, and conventional activity in the field, or, alternatively, whether the claim simply appends well-understood, routine, 4 Available at https://www.govinfo.gov/content/pkg/FR-2019-01- 07/pdf/2018-28282.pdf. Appeal 2020-006680 Application 16/197,854 7 and conventional activities previously known to the industry, specified at a high level of generality, to the judicial exception. Revised Guidance, 84 Fed. Reg. at 56. Step 2A, Prong 1 Independent Claim 1 Independent claim 1 recites “identifying electronic plan data stored in a database on a remote computing device based on [a user] selection, the electronic plan data being related to the fitness plan.” The Specification does not expressly define “identifying electronic plan data,” but we can discern from the general description of the invention that it means to search for and locate the electronic plan data in a database. For example, the Specification describes a process in which a user looking for a geographical route to traverse during a fitness activity can input desired attributes of the route (location, distance, etc.) into a graphical user interface (GUI) prompt, and “invoke a search of route database 52 by route generation and publication module 220 to locate one or more routes.” Spec. ¶¶ 75, 82–84. The Specification describes a similar process in which a training plan is presented for viewing by a user in response to the user selecting the training plan from a training-plan database. Id. ¶¶ 108–109. The step of searching for and locating a file on a database may be performed in a human mind, but for the recitation of general computer implementation. For example, a human can review a selection of routes and select the route most closely meeting predetermined criteria. Because this step can be performed in the human mind, it is a mental process, which is one of the recognized groupings of abstract ideas. Revised Guidance, 84 Fed. Reg. at 52; MPEP § 2106.04(a)(2) III; Intellectual Ventures I LLC v. Symantec Corp., 838 F.3d Appeal 2020-006680 Application 16/197,854 8 1307, 1318 (Fed. Cir. 2016) (“[W]ith the exception of generic computer implemented steps, there is nothing in the claims themselves that foreclose them from being performed by a human, mentally or with pen and paper.”). Claim 1 further recites “generating an electronic schedule of fitness activities based on the electronic plan data,” “modifying the electronic schedule based on the second user selection,” and “modifying automatically the electronic schedule of fitness activities based on the electronic fitness data collected during the fitness activity.” These steps can also be done in the human mind or with pen and paper. A schedule can be recorded (i.e., “generated”) on paper, so modifying the schedule can be done with a pen on paper as well. As such, the “generating” and “modifying” steps are mental processes (again, with the exception of generic computer implementation). See CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1372 (Fed. Cir. 2011) (determining that method steps that “can be performed in the human mind, by a human using a pen and paper” are “unpatentable mental processes”). Claims 9 and 16 Claim 16 recites “generating” and “modifying automatically” steps that are essentially the same as those of claim 1. Thus, for the reasons discussed above, these steps constitute mental processes. Claim 9 recites a portable health coaching system comprising, inter alia, a portable electronic device with “a processor configured to . . . generate an electronic schedule of fitness activities based on . . . user input,” and “modify automatically the electronic schedule of fitness activities based on . . . collected fitness data.” The “generate” and “modify automatically” limitations of claim 9 are essentially the same as the “generating” and Appeal 2020-006680 Application 16/197,854 9 “modifying automatically” steps of claims 1 and 16, and therefore, for the reasons discussed above, are mental processes. Summary of Step 2A, Prong 1 Analysis Independent claims 1, 9, and 16 recites mental processes, which are one of the groupings recognized as abstract ideas. Therefore, claims 1, 9, and 16 recite abstract ideas, and we proceed to Step 2A, Prong 2 to determine whether these claims contain additional steps that integrate the recited abstract ideas into a practical application. Step 2A, Prong 2 The additional limitations of claim 1 relate to the collection, reception, transmission, or display of data. For example, claim 1 recites “providing a user input on a display of a portable electronic device,” which is another way of saying displaying to a user a means to provide input (data). Claim 1 further recites “receiving” first and second user selections, “receiving” electronic plan data, and “collecting” electronic fitness data. Claims 9 and 16 recite similar limitations. Receiving, storing, transmitting, and displaying data are insignificant extra-solution activities. See MPEP § 2106.05(g); OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1363 (Fed. Cir. 2015) (noting that storing data is well-understood, routine, and conventional and does not render claims eligible); buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1355 (Fed. Cir. 2014) (“That a computer receives and sends the information over a network-with no further specification-is not even arguably inventive.”); Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1355 (Fed. Cir. 2016) (“merely selecting information, by content or source, for collection, analysis, and display does nothing significant to differentiate Appeal 2020-006680 Application 16/197,854 10 a process from ordinary mental processes, whose implicit exclusion from § 101 undergirds the information-based category of abstract ideas”). Claim 1 further recites the use of a “portable electronic device” that includes a “user input,” “display,” “microprocessor,” a “satellite positioning system receiver,” and a “wireless communication transceiver.” Appeal Br. 21 (Claims App.). Claims 9 and 16 contain similar limitations. The claimed portable electronic device comprises generic components to perform conventional computer activities in the course of performing the recited abstract ideas or insignificant extra-solution activity. See MPEP § 2106.05(f); buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1354 (Fed. Cir. 2014) (“[A] claim directed to an abstract idea does not move into section 101 eligibility territory by merely requiring generic computer implementation” (internal citation, quotation marks, and alterations omitted)). Further, the claims do not require use of the satellite positioning system receiver. Although such a receiver may be used to “collect electronic fitness data,” the claims are broad enough to encompass other means of doing so, such as data entry by the user. Claim 1 also recites a “database” on “a remote computing device,” on which is stored “electronic plan data.” Storing data is a generic computer function that does not integrate the recited judicial exception into a practical application. See In re TLK Comms. LLC Pat. Lit., 823 F.3d 607, 611 (claim that recites tangible components for classifying and storing digital images directed to abstract idea). For the above reasons, we determine that claims 1, 9, and 16 do not contain additional limitations that integrate the recited judicial exceptions Appeal 2020-006680 Application 16/197,854 11 into practical applications of the exceptions. Therefore, we proceed to step 2B. Step 2B Having considered the elements of each claim both individually and as an ordered combination, we determine that the additional elements do not transform the nature of the claims into a patent-eligible application of the otherwise patent-ineligible concept, for reasons discussed above with respect to Step 2A, Prong 2. Summary We determine that independent claims 1, 9, and 16 are directed to patent-ineligible subject matter, and therefore enter a new ground of rejection of these claims under 35 U.S.C. § 101. Our analysis is limited to the independent claims. We leave it to the Examiner to determine whether the dependent claims are patent ineligible. CONCLUSION We reverse the Examiner’s rejection under 35 U.S.C. § 102 and enter a new ground of rejection for claims 1–3, 6, and 9–22 under 35 U.S.C. § 101. DECISION SUMMARY Claim(s) Rejected 35 U.S.C. § Reference(s) /Basis Affirmed Reversed New Ground 1–3, 6, 9– 22 102 Shum 1–3, 6, 9– 22 1–3, 6, 9– 22 101 Eligibility 1–3, 6, 9– 22 Overall Outcome 1–3, 6, 9– 22 1–3, 6, 9– 22 Appeal 2020-006680 Application 16/197,854 12 FINALITY OF DECISION This decision contains a new ground of rejection under 37 C.F.R. § 41.50(b). 37 C.F.R. § 41.50(b) provides “[a] new ground of rejection pursuant to this paragraph shall not be considered final for judicial review.” 37 C.F.R. § 41.50(b) also provides that Appellant, WITHIN TWO MONTHS FROM THE DATE OF THE DECISION, “must exercise one of the following two options with respect to the new grounds of rejection to avoid termination of the appeal as to the rejected claims: (1) Reopen prosecution. Submit an appropriate amendment of the claims so rejected or new Evidence relating to the claims so rejected, or both, and have the matter reconsidered by the examiner, in which event the prosecution will be remanded to the examiner . . . . (2) Request rehearing. Request that the proceeding be reheard under § 41.52 by the Board upon the same Record.” REVERSED 37 C.F.R. § 41.50(b)