Ex Parte Tse

Patent Trial and Appeal Board

Sep 20, 2018

14097079 (P.T.A.B. Sep. 20, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
14/097,079 12/04/2013
29989 7590 09/24/2018
HICKMAN PALERMO BECKER BINGHAM LLP
1 ALMADEN BOULEVARD
FLOOR 12
SAN JOSE, CA 95113
Lily Tse
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.
60370-0011 4395
EXAMINER
GLENNIE, DEBRA L
ART UNIT PAPER NUMBER
3689
NOTIFICATION DATE DELIVERY MODE
09/24/2018 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):
usdocket@h35g.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte LILY TSE
Appeal2017-003816
Application 14/097 ,079
Technology Center 3600
Before JUSTIN BUSCH, CATHERINE SHIANG, and BETH Z. SHAW,
Administrative Patent Judges.
BUSCH, Administrative Patent Judge.
DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant appeals from the
Examiner's decision to reject claims 1--4 and 27--46, which constitute all the
claims pending in this Application. We have jurisdiction over the pending
claims under 35 U.S.C. § 6(b). Claims 5-26 were cancelled previously.
We affirm.
CLAIMED SUBJECT MATTER
Appellant's claimed invention relates to highlighting toxic ingredients
in a product. Spec. ,r,r 20-21, 54---65. More specifically, Appellant's
claimed invention relates to modifying and displaying a digital image of a
product's list of ingredients to highlight an ingredient that satisfies certain
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criteria and displaying a rating indicating the safeness of the product based
on the toxicity measure of multiple ingredients. Spec. ,r,r 20-21, 54--65.
Claims 1 and 31 are reproduced below:
1. A method comprising:
receiving a digital image that is generated on a mobile
device that took a picture of a list of ingredients on a product,
wherein the digital image is the picture and includes the list of
ingredients;
identifying, within the digital image, text that contains the
list of ingredients;
in response to identifying the text, determining whether a
particular ingredient in the list of ingredients satisfies one or
more criteria;
in response to determining that the particular ingredient
satisfies the one or more criteria, modifying the digital image by
causing a portion, of the text within the digital image, that
corresponds to the particular ingredient to be highlighted while
the digital image is displayed on a screen of the mobile device;
wherein the method is performed by one or more
computing devices.
31. The method of Claim 1, further comprising:
based on the digital image, determining a plurality of
ingredients in the product;
for each ingredient of the plurality of ingredients,
determining a toxicity metric of said each ingredient;
generating, based solely on each toxicity metric of the
plurality of ingredients, a safeness rating of the product;
generating rating data based on the safeness rating;
causing the rating data to be displayed on the screen of the
mobile device.
REJECTIONS
Claim 31 stands rejected under 35 U.S.C. § 112 as failing to comply
with the written description requirement. Final Act. 3-5.
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Claims 1--4 and 27--46 stand rejected under 35 U.S.C. § 101 as being
directed to ineligible subject matter. Final Act. 5-8.
Claims 1--4, 27-34, and 39--42 stand rejected under 35 U.S.C. § 102
as anticipated by Bhagwan (US 2012/0005222 Al; Jan. 5, 2012). Final
Act. 8-22.
Claims 35, 36, 38, 43, 44, and 46 stand rejected under 35 U.S.C. § 103
as obvious in view ofBhagwan and Beier (US 2012/0005105 Al; Jan. 5,
2012). Final Act. 23-31.
Claims 37 and 45 stand rejected under 35 U.S.C. § 103 as obvious in
view ofBhagwan, Beier, Coladonato (US 2009/0063229 Al; Mar. 5, 2009),
and Gidwani (US 2011/0047035 Al; Feb. 24, 2011). Final Act. 32-39.
ANALYSIS
We have reviewed the Examiner's rejections in light of Appellant's
arguments that the Examiner erred. In reaching this decision, we have
considered all evidence presented and all arguments Appellant made.
Arguments Appellant could have made, but chose not to make in the Briefs,
are deemed waived. See 37 C.F.R. § 4I.37(c)(l)(iv).
THE§ 112 REJECTION
The Examiner rejects claim 31 under 35 U.S.C. § 112 for failing to
comply with the written description requirement and introducing new
matter. Final Act. 3-5. Specifically, the Examiner finds the Specification
discloses (1) highlighting one or more ingredients in an image meeting a
certain criteria and (2) providing and displaying an overall safeness rating of
the product, but discloses the two techniques only as distinct embodiments
and does not disclose combining the two embodiments. Final Act. 4. The
Examiner therefore finds the Specification does not provide support for
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claim 31, which depends from claim 1, incorporates the limitations therein
related to highlighting an individual ingredient in an image, and further
recites displaying rating data. Final Act. 4--5; Ans. 6-7.
Appellant argues claim 2, which depends from claim 1, relates to
identifying a safeness attribute of a product's ingredients, and claim 31
relates to a safeness rating of the products. App. Br. 8. Appellant also
contends the use of the language "in an embodiment" does not mean that
each such disclosure is mutually exclusive with every other such disclosure.
App. Br. 8-9 (identifying examples where two different aspects are each
disclosed as being "in an embodiment," but the two aspects are
complementary aspects of a rating system). Appellant also asserts Figure 3
and the accompanying description provide support for both claims 1 and 31.
Reply Br. 4. Appellant contends the Specification's context indicates the
disclosures regarding rating products and highlighting individual ingredients
are proximate and related. Reply Br. 4 (citing Spec ,r 60, Figs. 3, 4).
The fundamental factual inquiry is whether the specification conveys
with reasonable clarity to those skilled in the art that, as of the filing date
sought, applicant was in possession of the invention as now claimed. See,
e.g., Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555, 1563---64 (Fed. Cir. 1991).
We agree with the Examiner that the Specification does not explicitly
describe an embodiment including both highlighting one or more ingredients
based on their safeness rating and providing and displaying a product rating.
Nevertheless, we determine a person of ordinary skill in the art reading the
Specification's disclosure of displaying an overall rating would have
understood Appellant to be in possession of the subject matter recited in
claim 31.
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In particular, the Specification includes a section heading
"HIGHLIGHTING TOXIC INGREDIENTS" that provides a detailed
description regarding the subject matter recited in claims 1 and 2. See Spec.
,r,r 54---65. This section discloses an exemplary embodiment that modifies an
image of a product's ingredient list by highlighting one or more ingredients
that meet particular criteria; the disclosure includes examples of highlighting
ingredients based on a toxicity rating. Spec. ,r,r 54--56. Figure 3 depicts an
exemplary embodiment of a modified image showing certain ingredients
highlighted in various colors. Spec., Fig. 3; see Spec. ,r,r 57-59 ( describing
the exemplary image depicted in Figure 3). Figure 4 depicts a flowchart
whose steps mirror claim 1 's recited steps. Spec., Fig. 4; see Spec. ,r,r 61---65
( describing the flowchart depicted in Figure 4 ).
Notably, paragraph 60 is the only paragraph between the paragraphs
describing Figures 3 and 4. In that paragraph, the Specification discloses
displaying "an overall rating of the personal care product ... based on
individual ratings of multiple[] ingredients found in the personal care
product," which "may be depicted adjacent to or may overlap the image of
the list of ingredients." Spec. ,r 60. The Specification further discloses the
rating alternatively may be depicted without showing any portion of the
image of the list of ingredients. Spec. ,r 60. The Specification does not
explicitly disclose that the image of the list of ingredients over which the
overall rating may be displayed includes highlighting, as described with
respect to Figure 3. However, the context in which the disclosure is made
would have led a person of ordinary skill to understand that such a
possibility was contemplated whereas an alternate possibility would be
displaying the rating without the image of the product's ingredients.
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Accordingly, we reverse the Examiner's rejection of claim 31 under
35 U.S.C. § 112.
THE§ 101 REJECTION
The Examiner concludes claims 1--4 and 27--46 are directed to patent-
ineligible subject matter. Final Act. 5-8 1; Ans. 8-20. Appellant argues the
§ 101 rejection of all claims as a group. 2 See App. Br. 9-21; Reply Br. 6-
16. Accordingly, we select independent claim 1 as representative and decide
the appeal of the§ 101 rejection based on claim 1. 37 C.F.R.
§ 4I.37(c)(l)(iv).
Alice/Mayo Framework
The Patent Act defines patent-eligible subject matter broadly:
"Whoever 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. There is no dispute that claims
1--4 and 27--46 are directed to one of these categories.
In Mayo Collaborative Services v. Prometheus Laboratories, Inc.,
566 U.S. 66, 70 (2012) and Alice Corp. Pty. Ltd. v. CLS Bank International,
134 S. Ct. 2347, 2354 (2014), the Supreme Court explained that§ 101
"contains an important implicit exception" for laws of nature, natural
phenomena, and abstract ideas. See Diamond v. Diehr, 450 U.S. 175, 185
1 The Examiner includes claim 5 in the heading of this rejection, but claim 5
is cancelled. See Final Act. 5.
2 Appellant argues the Examiner did not make a prima facie case of
ineligibility because the Examiner did not consider the additional limitations
recited in dependent claims 2, 4, and 31, but Appellant presents no
substantive argument regarding the dependent claims. See App. Br. 20-21.
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(1981 ). In Mayo and Alice, the Court set forth a two-step analytical
framework for evaluating patent-eligible subject matter: (1) "determine
whether the claims at issue are directed to" a patent-ineligible concept, such
as an abstract idea; and, if so, (2) "consider the elements of each claim both
individually and 'as an ordered combination' to determine whether the
additional elements" add enough to transform the "nature of the claim" into
"significantly more" than a patent-ineligible concept. Alice, 134 S. Ct.
at 2355 (quoting Mayo, 566 U.S. at 79); see Affinity Labs of Tex., LLC v.
DIRECTV, LLC, 838 F.3d 1253, 1257 (Fed. Cir. 2016).
Step one in the Mayo/Alice framework involves looking at the "focus"
of the claims at issue and their "character as a whole." Elec. Power Grp.,
LLC v. Alstom S.A., 830 F.3d 1350, 1353 (Fed. Cir. 2016). Step two
involves the search for an "inventive concept." Alice, 134 S. Ct. at 2355;
Elec. Power, 830 F.3d at 1353. For an inventive concept, "more is required
than 'well-understood, routine, conventional activity already engaged in"'
by the relevant community. Rapid Litig. Mgmt. Ltd. v. CellzDirect, Inc.,
827 F.3d 1042, 1047 (Fed. Cir. 2016) (quoting Mayo, 566 U.S. at 79--80).
Prima Facie Case
Appellant argues, for the first time in the Reply, that the Examiner has
not established a prima facie case of ineligibility. Reply Br. 6-16. Much of
this argument simply identifies disagreement with the Examiner's
conclusions and does not address whether the Examiner met the initial
burden of establishing ineligibility. For example, Appellant contends the
Examiner does not identify a proper judicial exception because Appellant
disagrees with the Examiner's characterization of the claims. Reply Br. 6
(arguing the claims do not involve "transmitting"). Appellant also asserts
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the Examiner presents a conclusory analysis with respect to the dependent
claims that does not state a prima facie case because it does not address
every limitation. App. Br. 20-21. Appellant's arguments are unavailing.
The Federal Circuit has repeatedly noted that "the prima facie case is
merely a procedural device that enables an appropriate shift of the burden of
production." Hyatt v. Dudas, 492 F.3d. 1365, 1369 (Fed. Cir. 2007) (citing
In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992)). The court has, thus,
held that the U.S. Patent and Trademark Office (USPTO) carries its
procedural burden of establishing a prima facie case when its rejection
satisfies the requirements of 35 U.S.C. § 132 by notifying the applicant of
the reasons for rejection, "together with such information and references as
may be useful in judging of the propriety of continuing the prosecution of
[the] application." See In re Jung, 637 F.3d 1356, 1362 (Fed. Cir. 2011); see
also Chester v. Miller, 906 F.2d 1574, 1578 (Fed. Cir. 1990) (Section 132
"is violated when a rejection is so uninformative that it prevents the
applicant from recognizing and seeking to counter the grounds for
rejection.").
The Examiner's rejection, as discussed further below, satisfies the
initial burden of production by identifying that Appellant's claims are
directed to particular concepts, which the Examiner explains are similar to
other abstract ideas, and further explaining why the additional elements do
not amount to significantly more than the abstract idea. See Final Act. 5-8;
Ans. 8-10. Accordingly, the Examiner has set forth the statutory basis for
the rejection, namely 35 U.S.C. § 101, and, contrary to Appellant's
contention, explained and analyzed the rejection in sufficient detail to permit
Appellant to respond meaningfully. See Jung, 637 F.3d at 1362. In fact,
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Appellant's lengthy response to the rejection indicates Appellant was
sufficiently informed to recognize and counter the rejection.
Step One of Alice Framework
Turning to step one of the Alice framework, the Examiner determines
the claims are directed to transmitting an image, identifying information
about the product from the image, and receiving information about the
product, which the Examiner concludes is an abstract idea of organizing,
storing, and transmitting information. Final Act. 6; Ans. 8. The Examiner
also concludes the claims are directed to the abstract idea of comparing new
and old information (ingredient information and toxicity or safeness ratings)
in order to identify options (highlighting key ingredients). Final Act. 6-7;
Ans. 8. The Examiner also compares Appellant's claims to the claims in
Electric Power, because both sets of claims are directed to "selecting
information for collection, analysis, and display, which do nothing
significant to differentiate a process from ordinary mental processes."
Ans. 19.
Contrary to Appellant's argument, the Examiner's identification of
multiple abstract ideas to which claim 1 is directed does not reveal that the
Examiner failed to consider the claim as a whole. See App. Br. 11; Reply
Br. 11-12. Rather, this determination suggests claim 1 's focus or character
as a whole is broad and encompasses various abstract ideas.
Appellant argues that, although technically accurate, the Examiner's
characterization of claim 1 as directed to transmitting, organizing, and
storing information or comparing old and new information is untethered
from claim 1 's language, merely identifies concepts that "may be involved in
the claims," and oversimplifies claim 1 by using too high a level of
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abstraction. App. Br. 12-13; Reply Br. 7. Appellant further argues the
Examiner's characterization of claim 1 does not reflect Appellant's alleged
improvement of "quickly identifying and presenting information about one
or more ingredients of a product based on a digital image of the product's
label." Reply Br. 6-8 (citing Enfzsh, LLC v. Microsoft Corp., 822 F.3d 1327
(Fed. Cir. 2016)).
Appellant also contends claim 1 both improves a technical process
and provides a particular solution to a problem. Reply Br. 8-9; App. Br. 13.
Appellant asserts claim 1 improves "a technological process involving a
mobile computing device" and includes "inherently technical elements" (i.e.,
a digital image, a mobile device, identifying text in the digital image, and
modifying the digital image). App. Br. 12; Reply Br. 8-9 ("Claim 1
improves on this technology by requiring a user to merely point a digital
camera at a product label and cause the digital camera to generate a digital
image of the product label."). Appellant contends claim 1 provides a
particular solution to the problem of "quickly identifying relevant ingredient
information on a product for a potential consumer." App. Br. 13; Reply
Br. 9. Appellant summarizes the steps recited in claim 1 and asserts "Claim
1 represents a particular way to achieve a desired outcome" because the
cited prior art does not disclose the recited series of allegedly inventive
steps. App. Br. 13; Reply Br. 9. These arguments appear to assert that the
claims recite additional limitations that add significantly more; to the extent
that is the case, we address such assertions (i.e., whether claim 1 includes an
"inventive concept") in the following section. To the extent Appellant
argues these technical elements alter the character of claim 1 as a whole, or
its "focus," we disagree for the reasons explained below.
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Appellant also argues the Examiner improperly relies on non-
precedential decisions and, therefore, fails to compare claim 1 to claims
previously determined to be abstract ideas. Reply Br. 9--10.
Appellant's arguments predominantly focus on the fact that a user
allegedly can obtain ingredient information more quickly than using prior art
methods because the claim uses digital cameras to obtain and modify digital
images. However, the claims do not require performing the claimed method
at any particular speed. Moreover, the use of a digital camera, digital
images, and text recognition technology does not change the focus, or
character as a whole, of the invention.
We also disagree with Appellant's contention that the identified
abstract idea does not reflect Appellant's alleged improvement. On the
contrary, Appellant's alleged improvement of quickly identifying particular
ingredient information merely applies the identified abstract (transmitting
and comparing information to present additional information) to particular
information (i.e., ingredients and toxicity or safety ratings) using generic
computing elements (i.e., a digital camera/image and a mobile device).
Claim 1 recites a computer-performed method for receiving a digital
image, identifying ingredients from the image text, determining whether an
ingredient meets certain criteria, and modifying the image to highlight the
ingredient. Therefore, we agree with the Examiner that claim 1 is directed to
collecting, analyzing, and displaying information because the focus, or
character as a whole, of claim 1 is collecting a list of ingredients from an
image of a product label, analyzing the ingredients to see if they meet certain
criteria, and displaying a modified version of the image of the list of
ingredients based on the analysis.
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In Electric Power, the Federal Circuit concluded claims that
essentially recited "collecting information, analyzing it, and displaying
certain results of the collection and analysis" were directed to an abstract
idea. Elec. Power, 830 F.3d at 1353-54. As discussed, the claims before us
similarly recite collecting data (an image containing a product's ingredients),
processing it (identifying text that contains the ingredient list and
determining whether a particular ingredient meets certain criteria), and
displaying the results of the collection and analysis (modifying the image to
highlight the ingredient and displaying the image).
Appellant argues Electric Power's claims are "very different" from
Appellant's claim 1 because Appellant's claims extract text from images,
whereas Electric Power's claims do not "even involve digital images, much
less analyzing text within digital images [or] modifying a digital image."
Reply Br. 15. However, the fact that claim 1 recites a digital image, and
extracting text therefrom, does not change the focus of claim 1. Claim 1 's
involvement of a digital image merely provides technical limitations on how
the information is obtained or modified/presented, which merely involves
extra-solution activity. Furthermore, the Federal Circuit has determined
claims reciting scanning documents to create digital images, extracting text
from the images, organizing the extracted information, and storing the
images was directed to an abstract idea. Content Extraction & Transmission
LLC v. Wells Fargo Bank, Nat 'l Ass 'n, 776 F.3d 1343, 1345, 1357 (Fed.
Cir. 2014).
Moreover, in CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d
1366, 1372-73 (Fed. Cir. 2011), the Federal Circuit concluded a method is
merely an abstract idea and is not patent-eligible under § 101 if the method
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can be performed by human thought alone, or by a human using pencil and
paper. A human could use a computer as a tool to "receiv[ e] a digital
image," as recited in claim 1, into image editing software, visually identify
the text that lists the ingredients, determine whether the ingredients meet
certain criteria 3, and use the editing software to highlight the ingredient.
Furthermore, other than the generically recited computer and digital image, a
human could perform this method by picking up a product, inspecting and
analyzing the ingredients, and using a highlighter or other pen to highlight a
particular ingredient. Thus, Appellant's claims merely automate a mental or
pencil/paper process of physically highlighting ingredients based on
generically recited criteria.
Accordingly, we agree with the Examiner that claim 1 is directed to
an abstract idea. Therefore, we tum to step 2 of the Alice analysis.
Step Two of Alice Framework
Next, we tum to step two of Alice to determine whether the additional
limitations, when considered both "individually and 'as an ordered
combination"' contain an "inventive concept" sufficient to transform the
claimed "abstract idea" into a patent-eligible application. Alice, 134 S. Ct. at
2355-58.
The Examiner concludes the only additional limitations recited in the
claims relate to performing common computing functions on generic
computers (i.e., "utilizing a processor for the very purpose they have been
3 This limitation is very broad and would encompass determining whether an
ingredient started with a particular letter or had more than a certain number
of letters in it. Moreover, even considering Appellant's intent, which is not
recited in the claim, a human could compare the ingredients to a reference
document to identify individual ingredient's ratings, toxicity levels, etc.
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designed to perform"), which simply generically links using a processor to
the abstract idea. Final Act. 7. The Examiner concludes the additional
elements, therefore, are not significantly more than the abstract idea itself
because they do not improve a processor itself or some other technology or
technical field. Final Act. 7. The Examiner explains that the use of generic
elements to perform the abstract idea does not render claim 1 rooted in
technology because the generic elements, individually and in combination,
are used to perform their known functions. Ans. 9--10. The Examiner
determines that, although Appellant identifies certain recited elements as
"inherently technical elements," Appellant has not identified any particular
improvement to existing technology because each of the identified elements
are well-known elements performing well-known functions without
changing how any of the existing technology works. Ans. 9. The Examiner
also determines claim 1 is similar to the claims in Electric Power in that
claim 1 merely limits the claims to a particular environment that "is, without
more, insufficient to transform [ claim 1] into a patent-eligible application[]
of the abstract idea at [its] core." Ans. 19.
Appellant argues the Examiner did not consider the claimed
combination of additional elements and failed to consider the functional
improvement recited in the ordered combination. App. Br. 14--15 (citing
Bascom Global Internet Servs., Inc. v. AT&T Mobility LLC, 827 F.3d 1341
(Fed. Cir. 2016)). Appellant reproduces claim 1 's recited steps and argues
the Examiner erred in determining the claims merely recite generic computer
functions to implement abstract ideas because the combination of steps is
more than the abstract idea. App. Br. 15-16. Appellant argues claim 1
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combines technical operations in a new way that is an inventive solution to a
problem without a real world analog. Reply Br. 14--15.
An inventive concept "cannot be furnished by the unpatentable law of
nature (or natural phenomenon or abstract idea) itself." Genetic Techs. Ltd.
v. Merial L.L.C., 818 F.3d 1369, 1376 (Fed. Cir. 2016); see also Alice, 134
S. Ct. at 2355 ( explaining that, after determining a claim is directed to a
judicial exception, "we then ask, '[w]hat else is there in the claims before
us?"' (emphasis added, brackets in original) (quoting Mayo, 566 U.S. at
78)). Instead, an "inventive concept" is furnished by an element or
combination of elements that is recited in the claim in addition to the judicial
exception and sufficient to ensure the claim as a whole amounts to
significantly more than the judicial exception itself. Alice Corp., 134 S. Ct.
at 2355 (citing Mayo, 566 U.S. at 72-73); see BSG Tech LLC v. BuySeasons,
Inc., 899 F.3d 1281, 1290 (Fed. Cir. 2018) (explaining that the Supreme
Court in Alice "only assessed whether the claim limitations other than the
invention's use of the ineligible concept to which it was directed were well-
understood, routine and conventional," (emphasis added)).
On the other hand, "[i]f a claim's only 'inventive concept' is the
application of an abstract idea using conventional and well-understood
techniques, the claim has not been transformed into a patent-eligible
application of an abstract idea." BSG Tech, 899 F.3d at 1290-91 ( citing
Berkheimer v. HP Inc., 881 F.3d 1360, 1370 (Fed. Cir. 2018)). "[I]t is
irrelevant whether [the claimed abstract idea] may have been non-routine or
unconventional as a factual matter ... narrowing or reformulating an
abstract idea does not add 'significantly more' to it." BSG Tech, 899 F.3d at
1291.
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Appellant argues the recited ordered combination of process steps
provides a functional improvement, but does not argue any element in
addition to the abstract idea, or the particular combination or arrangement of
such additional elements, is anything but well-understood, routine, and
conventional. App. Br. 14--15.
Other than the abstract idea ( collecting, analyzing, and displaying
information), claim 1 merely recites performance of the method by a
computer and details regarding the source of information and how the
information is displayed. Contrary to Appellant's assertions, claim 1 merely
recites the routine use of conventional computer components to perform the
recited method steps that constitute the abstract idea. See OIP Techs., Inc. v.
Amazon.com, Inc., 788 F.3d 1359, 1363 (Fed. Cir. 2015) ("[R]elying on a
computer to perform routine tasks more quickly or more accurately is
insufficient to render a claim patent eligible."); see also Intellectual Ventures
I LLC v. Capital One Bank, 792 F.3d 1363, 1370 (Fed. Cir. 2015) ("[O]ur
precedent is clear that merely adding computer functionality to increase the
speed or efficiency of the process does not confer patent eligibility on an
otherwise abstract idea."); Alice, 134 S. Ct. at 2358-59; Elec. Power, 830
F.3d at 1355 ("Merely requiring the selection and manipulation of
information-to provide a 'humanly comprehensible' amount of information
useful for users ... by itself does not transform the otherwise-abstract
processes of information collection and analysis.").
Appellant also argues the Examiner has not made a prima facie case
of ineligibility of claims 2, 4, and 31. App. Br. 21. The Examiner, however,
determined that the dependent claims do "nothing more than disclose
common functional operations with a processor and ... instructions to
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perform on one or more processors." Final Act. 7. Dependent claims 2, 4,
and 31 merely further define the recited criteria (rules), perform the recited
analysis on multiple ingredients, and perform analysis on the product as a
whole, respectively. These further details are part of the abstract idea and
simply alter the particular information that is collected, analyzed, and
displayed. Accordingly, we are not persuaded the limitations in the
dependent claims add significantly more to the abstract idea.
Accordingly, the claimed limitations, considered both individually
and together, do not add significantly more to the abstract idea and,
therefore, do not render the subject matter patent eligible.
Summary
For the above reasons, Appellant has not persuaded us the Examiner
erred in rejecting claims 1--4 and 27--46 under 35 U.S.C. § 101 as being
directed to merely an abstract idea, rendering the claimed subject matter
ineligible.
THE§§ 102 AND 103 REJECTIONS
The Examiner finds Bhagwan discloses every limitation recited in
claims 1--4, 27-34, and 39--42. Final Act. 8-22. Of particular relevance to
this Appeal, the Examiner finds Bhagwan discloses "modifying the digital
image by causing a portion of the text within the digital image, that
corresponds to the particular ingredient to be highlighted while the digital
image is displayed," as recited in claim 1. Final Act. 10 ( citing Bhagwan
,r,r 49-53). Specifically, the Examiner finds Bhagwan's personalization of
data, such as translating scientific terms to generic terms and changing the
format and font of text, involves modifying the output given to the user and,
therefore, discloses the modifying step recited in claim 1. Final Act. 10;
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Ans. 4. The Examiner further finds "changes to the text and format of the
text is equivalent to highlighting as the text is being changed to draw
attention to the text [and h]ighlighting is a form of 'formatting change' to
text." Final Act. 11 ( emphases omitted).
Appellant argues that, although Bhagwan personalizes output,
Bhagwan does not modify the image. App. Br. 5; Reply Br. 2. Appellant
argues Bhagwan merely modifies the font and formatting of the captured
text, but Bhagwan never actually modifies the image, as required by claim 1.
App. Br. 5; Reply Br. 2.
Regardless of whether the Examiner's finding that Bhagwan's
changes to text constitute highlighting text is correct, see Ans. 3--4, the
modifying step recites "modifying the digital image," not modifying text
extracted from or related to the digital image. Simply finding that
"Bhagwan takes the information captured from the image and uses the
application to modify the information to the criteria that has been inputted by
the user of the invention" in order to highlight "information that is important
to the user" does not demonstrate that Bhagwan discloses modifying the
digital image, as recited in claim 1. See Ans. 4.
Because the Examiner rejects claim 1 as anticipated by Bhagwan, the
Examiner must demonstrate Bhagwan discloses each limitation of claim 1 as
arranged in the claim. However, we see nothing in Bhagwan's cited
portions that discloses modifying a digital image. Accordingly, on this
record, we find the Examiner erred in rejecting claim 1, and claims 2--4, 27-
34, and 39--42, which incorporate the modifying step recited in claim 1, as
anticipated by Bhagwan.
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Appeal2017-003816
Application 14/097 ,079
Moreover, because the Examiner relies on Bhagwan in the same
manner discussed above in the context of claim 1 and does not cite any other
references as curing this deficiency or provide any rationale for modifying
Bhagwan's teachings, we also find the Examiner erred in rejecting claims
35-38 and 43--46 as obvious in view of Bhagwan in combination with either
Beier, or Beier, Coladonato, and Gidwani.
DECISION
We affirm the Examiner's decision to reject claims 1--4 and 27--46
under 35 U.S.C. § 101.
We reverse the Examiner's decision to reject claim 31 under
35 U.S.C. § 112.
We reverse the Examiner's decision to reject claims 1--4 and 27--46
under 35 U.S.C. §§ 102 and 103.
Because we affirm at least one ground of rejection with respect to
each claim on appeal, the Examiner's decision is affirmed. See 37 C.F.R.
§ 4I.50(a)(l).
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED
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