Ex Parte Chapman

Patent Trial and Appeal BoardNov 21, 2016

13217397 (P.T.A.B. Nov. 21, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 13/217,397 08/25/2011 27752 7590 11/23/2016 THE PROCTER & GAMBLE COMPANY Global IP Services Central Building, C9 One Procter and Gamble Plaza CINCINNATI, OH 45202 FIRST NAMED INVENTOR Susan Hart Chapman 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. P-219X 5939 EXAMINER WILLIAMS, TERESA S ART UNIT PAPER NUMBER 3686 NOTIFICATION DATE DELIVERY MODE 11/23/2016 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): centraldocket.im @pg.com pair_pg@firsttofile.com mayer.jk@pg.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte SUSAN HART CHAPMAN Appeal2014-007861 Application 13/217 ,397 Technology Center 3600 Before MURRIEL E. CRAWFORD, BIBHU R. MOHANTY, and NINA L. MEDLOCK, Administrative Patent Judges. CRAWFORD, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellant seeks our review under 35 U.S.C. Â§ 134 of the Examiner's final decision rejecting claims 1-3 and 7-14. We have jurisdiction over the appeal under 35 U.S.C. Â§ 6(b ). We REVERSE. Appeal2014-007861 Application 13/217,397 Claim l is illustrative: 1. A method of assessing the health of a companion animal, compnsmg: providing a first group of companion animals, the first group comprising a first plurality of companion animals; subjecting each of the first plurality of companion animals to a performance assessment using an apparatus selected from stairs and rails; evaluating a performance of each companion animal based on a plurality of attributes, wherein the attributes are associated with the health of the companion animal, wherein the evaluating comprises: providing a performance profile; accounting for the attributes exhibited by each companion animal during the performance; assigning a performance index based on the performance profile given the attributes accounted for. Appellant appeals the following rejections: 1. Ciaims 1-3 and 7-14 under 35 U.S.C. Â§ 101 as directed to non- statutory subject matter. 2. Claims 1-3 and 7-14 under 35 U.S.C. Â§ 101 and section 33(a) of the America Invents Act (AIA) as being directed to or encompassing a human orgamsm. 3. Claims 1-3 and 7-14 under 35 U.S.C. Â§ 103(a) as unpatentable over Males (US 2008/0234108 Al, pub. Sept. 25, 2008) and Dodds (US 6,537, 213 B2, iss. Mar. 25, 2003). ISSUE Did the Examiner err in rejecting claims 1-3 and 7-14 under 35 U.S.C. Â§ 101 because the claims do not involve transformation of a particular article to a different state or thing and encompass a human being? 2 Appeal2014-007861 Application 13/217,397 Did the Examiner err in rejecting claims 1-3 and 7-14 because the Examiner has not established a reason to combine the teachings of Males and Dodds? ANALYSIS Rejection under 3 5 US. C. Â§ 101 We will not sustain this rejection. In support of this rejection, the Examiner first found that the claims were directed to a human organism (Final Act. 3). We agree with the Appellant that the claims do not encompass a human organism as no human organism is recited (Appeal Br. 3). The Examiner also found that the claims facilitate conversion of medication claims to active medications but are not tied to and do not recite a device or machine used to carrying out the claimed method (Final Act. 2- 3). However, the claims are not directed to conversion of medication. In the Response to Argument section of the Answer, the Examiner then asserts that the claims are directed to a general concept (Ans. 2----3). The Supreme Court has established that in order to determine whether a claim is eligible for patenting, it must first be determined whether the claim is directed to a patent-ineligible concept (such as an abstract idea) and, if so, it must be deterrnined whether there is something else in the claim which ensures that the claim is directed to "significantly more" than a patent-ineligible concept Alice C'orp. Pt)Â» Ltd. v. C'LS Bank Int I, 134 S. C~t 3 Appeal2014-007861 Application 13/217,397 However, the Examiner has not stated what general concept the invention is directed to, nor has the Examiner made a determination of whether the claims contain significantly more than that general concept. Therefore, the Examiner has not established that the claims are directed to non-statutory subject matter. Rejection under 35 USC Â§ 103 Appellant argues that there is no reason to combine the teachings of Males and Dodds (Appeal Br. 3--4). We agree. Males is directed to improvements in the construction of athletic hurdles and barriers that can reduce the injuries to a participant (Males paras 1, 36). Dodds is directed to testing, diagnosis and prediction of diseases and disorders of animal companions that takes into consideration health assessment information (Dodds 1: 12-24). The Examiner reasons that one of ordinary skill in the art would have found it obvious to have modified the method of Males so as to include performance profile features as taught by Dodds to provide a more comprehensive way of measuring animal activities to improve overall efficiency (Final Act. 5). However, Males is not concerned with the measurement of animal activities but is rather concerned with improving the construction of athletic hurdles and barriers. As such, the Examiner has not provided a reason to combine the Males hurdle/barrier improvement method with the Dodds performance profile features. Therefore, we will not sustain the Examiner's rejection under 35 U.S.C. Â§ 103. 4 Appeal2014-007861 Application 13/217,397 DECISION The decision of the Examiner is reversed. ORDER REVERSED 5