Ex Parte HIGHET et al

Patent Trial and Appeal Board

Jan 30, 2019

14056608 (P.T.A.B. Jan. 30, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
14/056,608 10/17/2013 Danuta L. HIGHET
35161 7590 01/31/2019
DICKINSON WRIGHT PLLC
1825 Eye St., NW
Suite 900
WASHINGTON, DC 20006
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.
66866-8 1028
EXAMINER
BALDOR!, JOSEPH B
ART UNIT PAPER NUMBER
3711
MAIL DATE DELIVERY MODE
01/31/2019 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DANUTA L. HIGHET and ROBERTA E. CAHN
Appeal2017-001339
Application 14/056,608
Technology Center 3700
Before JAMES P. CALVE, BRANDON J. WARNER, and
ARTHUR M. PESLAK, Administrative Patent Judges.
WARNER, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Fogus, Inc. ("Appellant") 1 appeals under 35 U.S.C. § 134(a) from the
Examiner's decision rejecting claims 1-6, 10-13, 16, and 17. Appeal
Br. 1, 5. Claims 7-9, 14, and 15 have been canceled, and claims 18 and 19
have been withdrawn. Id. at 5. We have jurisdiction over the appeal under
35 U.S.C. § 6(b).
We REVERSE.
Fogus, Inc. is the applicant, as provided in 37 C.F.R. § 1.46, and is
identified as the real party in interest. Appeal Br. 3.
Appeal2017-001339
Application 14/056,608
CLAIMED SUBJECT MATTER
Appellant's disclosed invention relates to a "method for weight
management" and, more particularly, to a method of using "a dishware
system wherein a plurality of incrementally-sized plates having successively
decreasing plate surface areas gradually modify food portions consumed for
weight management and instill healthy eating habits." Spec. ,r 2. Claim 1,
reproduced below with emphasis added, is the sole independent claim
appealed and is representative of the subject matter on appeal.
1. A method, comprising:
selecting a plate with a surface area within a range of
11-13 in2 and designating the selected plate as a zero on a
whole-number numerical index;
selecting a plate increment between 1/16-inch and 1 inch;
designating a whole number (N) in the index to
correspond with a plate having a first dimension equal to a first
dimension of a corresponding plate (N-1) plus the plate
increment[;]
providing a series of different-sized plates, each
successive-sized plate's first dimension differing from its series
neighbor by the plate increment; and
marking the index value corresponding to the respective
plates on each of the series of different-sized plates;
selecting a utensil increment, the increment being one of
a utensil length increment or a utensil depth increment;
providing a series of different-sized eating utensils, each
successive-sized utensil differing from its series neighbor by the
utensil increment;
assigning a smallest utensil in the series of different-sized
eating utensils a value of zero;
marking the smallest utensil with a zero;
marking each successively larger utensil with a
successive number of the same index that the plates are marked
with.
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Application 14/056,608
EVIDENCE
The Examiner relied on the following evidence in rejecting the claims
on appeal:
Montesi us 4,043,203 Aug. 23, 1977
Klamar us 4,137,634 Feb. 6, 1979
Matson US 7,044,739 B2 May 16, 2006
Robinson US D547,119 S July 24, 2007
REJECTIONS
The following rejections are before us for review:
I. Claims 1---6, 10-13, 16, and 17 stand rejected under 35 U.S.C.
§ 101 as being directed to patent-ineligible subject matter.
Final Act. 2-3; Ans. 2--4.
II. Claims 1---6, 10-13, and 16 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Matson, Robinson, and
Montesi. Final Act. 3---6; Ans. 4--5.
III. Claim 17 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Matson, Robinson, Montesi, and Klamar.
Final Act. 7; Ans. 5.
ANALYSIS
Rejection I - Ineligible Subject Matter
The Examiner rejects claims 1---6, 10-13, 16, and 17 under 35 U.S.C.
§ 101 as being directed to a judicial exception without significantly more,
asserting that the claims are directed to "an abstract idea in the form of
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Application 14/056,608
mental or abstract steps for correlating and defining relationships between
numbers and plates/utensils/clothing." Final Act. 2-3; see Ans. 2--4.
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 Bankint'l, 134 S. Ct. 2347, 2355 (2014) (emphasis added)
(citing Mayo Collaborative Servs. v. Prometheus Labs., Inc., 132 S. Ct.
1289, 1294 (2012)). Under that framework, we first "determine whether the
claims at issue are directed to one of those patent-ineligible concepts"-i.e.,
a law of nature, a natural phenomenon, or an abstract idea. Id. ( citing Mayo,
132 S. Ct. at 1296-97).
The Federal Circuit has instructed that "[t]he 'directed to' inquiry ...
[ does not] simply ask whether the claims involve [ or encompass] a patent-
ineligible concept, because essentially every routinely patent-eligible claim
involving physical products and actions involves a law of nature and/or
natural phenomenon." Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1335
(Fed. Cir. 2016). Rather, "the 'directed to' inquiry applies a stage-one filter
to claims, considered in light of the specification, based on whether 'their
character as a whole is directed to excluded subject matter."' Id. ( citing
Internet Patents Corp. v. Active Network, Inc., 790 F.3d 1343, 1346 (Fed.
Cir. 2015)).
It is only after the claims have been determined to be "directed to" a
patent-ineligible concept that we 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
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Application 14/056,608
patent-eligible application." Alice, 134 S. Ct. at 2355 (quoting Mayo,
132 S. Ct. at 1298, 1297).
Although not explained in the rejection, the Examiner-presumably
under the first step of the Alice framework----concludes that the claims are
directed to an abstract idea, stating that "[t]he inventive concept of the
claims is directed to [an] abstract concept in the form of relationships
between plate surface areas/utensil sizes (and other dishware, clothing[,]
etc.) and corresponding whole number values," which the Examiner asserts
is a concept that "is not patent eligible." Ans. 4. However, simply because
the present claims "include" these relationships, the Examiner has not
sufficiently shown that the claims, as a whole, are "directed to" an abstract
idea itself. Rather, as Appellant explains, the present claims include the
application of such relationships in the provision of particularly-sized series
of both plates and eating utensils. See Appeal Br. 10-12; Reply Br. 1-2;
see also Appeal Br., Claims App.
Upon review of the record before us, the claims are directed to a
method that expressly recites providing a series of specifically-sized plates
(the plates being particularly size-incremented relative to one another), as
well as providing a series of specifically-sized eating utensils (the utensils
also being particularly size-incremented relative to one another), where
indices of the respective series of plates and utensils are marked on the same
scale. See Appeal Br., Claims App. This is not merely an abstraction;
rather, it is a concrete implementation of a method that requires providing
particular physical things-namely, the respective series of specific,
incrementally-sized plates and utensils-not just any generic dish ware that
the Examiner mentions as being conventional.
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Application 14/056,608
Although the Examiner may be correct that generic "plates and
utensils would be used in nearly every diet system as they are common
eating components" (Ans. 4), the claims do not merely recite generic plates
and utensils, as explained above (see Appeal Br., Claims App.). In other
words, while generic plates and utensils may be conventional, the record
does not establish that the same could be said for the respective series of
specific, incrementally-sized plates and utensils, where indices of the
respective series of plates and utensils follow the same scale, as recited in
the claims.
As to the initial abstract idea determination here, and critical to our
resolution of the issue before us for review, we agree with Appellant's
argument that the plain language of the claims "recites more than [a] method
of organizing human activity and more than an alleged abstract idea itself."
Appeal Br. 10. Thus, even though the claims involve relationships between
whole numbers and plates/utensils, the rejection presented fails the initial
threshold step of explaining why the claims, as a whole, are "directed to"
nothing more than an abstract idea itself.
In light of this deficiency, we do not sustain the Examiner's rejection.
Rejections II and III- Obviousness
As discussed above, the claims here require providing a series of
specifically-sized plates (the plates being particularly size-incremented
relative to one another), as well as providing a series of specifically-sized
eating utensils (the utensils also being particularly size-incremented relative
to one another), where indices of the respective series of plates and utensils
are marked on the same scale. See Appeal Br., Claims App. In rejecting
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claims 1-6, 10-13, 16, and 17, for Rejections II and III, the Examiner relies
on a combination of teachings from Matson, Robinson, and Montesi. See
Final Act. 3-7; Ans. 4--5.
As the requisite articulated reasoning for combining the teachings
from these individual references, the Examiner states that it would have been
obvious to provide Matson's series of plates with the feature of numbered
dishware from Robinson (Final Act. 5), and then to provide Matson's series
of plates with the feature of "incrementally sized utensils as taught by the
food system of Montesi for the purpose of creating a more comprehensive
food system" (id. at 6). But this reasoning, which is based on evidence from
dissociated series of plates and utensils, does not adequately account for the
fact that the claims recite that the indices of the respective series of
specifically-sized plates and utensils are made according to the same scale.
In short, we agree with Appellant that the rejections do not
sufficiently explain why a person of ordinary skill in the art would have
combined these disparate teachings to provide both a series of plates and a
series of utensils, with each series having a constant and indexed size
increment, where both of the respective series use the same index. See
Appeal Br. 13-14; Reply Br. 2--4.
Stated another way, the Examiner has not sufficiently articulated
reasoning based on rational underpinnings as to why one skilled in the art
would have been prompted to combine the teachings of Matson, Robinson,
and Montesi in the manner proposed. See KSR Int'! Co. v. Teleflex Inc., 550
U.S. 398, 418 (2007) (stating that "[r ]ejections on obviousness grounds
cannot be sustained by mere conclusory statements; instead, there must be
some articulated reasoning with some rational underpinning to support the
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legal conclusion of obviousness" ( quoting In re Kahn, 441 F .3d 977, 988
(Fed. Cir. 2006))). Moreover, in response to Appellant's arguments, the
Examiner does not provide any additional explanation as to why such
individual teachings would be combined to arrive at the same index being
used for both a series of incrementally-sized plates and a series of
incrementally-sized utensils. See Ans. 6-7.
Although we agree with the Examiner that marking the index values
on each of the plates and utensils, by itself, would be insufficient to convey
patentability (see Final Act. 5---6), the underlying structural limitations of the
respective series of incrementally-sized plates and incrementally-sized
utensils (which the markings simply label for convenience) must be
accounted for. In other words, setting aside the Examiner's printed matter
position with respect to the marking alone, a reason to arrive at the two
series being physically sized according to a common index remains
unexplained.
Rejections based on obviousness must rest on a factual basis; in
making such a rejection, the Examiner has the initial burden of supplying the
requisite factual basis and may not, because of doubts that the invention is
patentable, resort to speculation, unfounded assumptions, or hindsight
reconstruction to supply deficiencies in the factual basis. See In re Warner,
379 F.2d 1011, 1017 (CCPA 1967). Here, absent improper hindsight
reconstruction, we do not see a sufficient reasoned explanation based on a
rational underpinning as to why one of ordinary skill in the art would have
been led to modify Matson with Robinson and Montesi to use the same
index for the respective series of plates and utensils, and a reason for such
modification is not otherwise evident from the record.
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A sustainable obviousness rejection needs to explain the reasoning by
which those findings support the Examiner's conclusion of obviousness.
Perfect Web Techs., Inc. v. InfoUSA, Inc., 587 F.3d 1324, 1328-30 (Fed. Cir.
2009). In this case, the rejections fail to meet this required standard.
Accordingly, based on the record before us, the Examiner has not met
the burden of establishing a proper prima facie case of obviousness. On this
basis, we do not sustain Rejections II and III.
DECISION
We REVERSE the Examiner's decision rejecting claims 1---6, 10-13,
16, and 17 under 35 U.S.C. § 101 as being directed to patent-ineligible
subject matter.
We REVERSE the Examiner's decision rejecting claims 1---6, 10-13,
and 16 under 35 U.S.C. § 103(a) as being unpatentable over Matson,
Robinson, and Montesi.
We REVERSE the Examiner's decision rejecting claim 17 under
35 U.S.C. § 103(a) as being unpatentable over Matson, Robinson, Montesi,
and Klamar.
REVERSED
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