Ex Parte Zabaldo

Patent Trial and Appeal Board

Aug 22, 2017

13239196 (P.T.A.B. Aug. 22, 2017)

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.
13/239,196 09/21/2011 Jared Zabaldo Zabaldo.301MP 7268
88172 7590 08/24/2017
Mohr Intellectual Property Law Solutions, P.C.
522 SW 5th Avenue
Suite 1390
Portland, OR 97204-2137
EXAMINER
PALAVECINO, KATHLEEN GAGE
ART UNIT PAPER NUMBER
3625
NOTIFICATION DATE DELIVERY MODE
08/24/2017 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):
j oey @ mohriplaw .com
docketing@mohriplaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JARED ZABALDO
Appeal 2016-004353
Application 13/239,196
Technology Center 3600
Before MAHSHID D. SAADAT, JAMES R. HUGHES, and
STEVEN M. AMUNDSON, Administrative Patent Judges.
AMUNDSON, Administrative Patent Judge.
DECISION ON APPEAL
Appellant seeks our review under 35 U.S.C. § 134(a) from a final
rejection of claims 1—20, i.e., all pending claims. We have jurisdiction under
35 U.S.C. § 6(b).
We affirm.
STATEMENT OF THE CASE
The Invention
According to the Specification, the invention relates to “systems for
producing military decoration racks including kiosks used to electrically
Appeal 2016-004353
Application 13/239,196
communicate data to production facilities.” Spec. 11.1 The Specification
explains that a “system for producing military decoration racks” includes
“a military related retail space, a storage unit that stores regulation data
corresponding with military decoration rack regulations and instruction
data,” and “a kiosk within the military related retail space and in electrical
communication with the storage unit, the kiosk including a display unit, an
input interface, and a communication unit.” Abstract.
Exemplary Claim
17. A kiosk for designing military decoration racks for
placement within a military related retail space, the kiosk
including:
an input interface configured to receive input data from a
user for creating a military decoration rack to the user’s
specifications;
a processing unit programmed with instructions to:
receive the input data;
use the input data to generate rack data conforming
with relevant military decoration rack regulations;
use the rack data to generate rack display data; and
update the rack data and associated rack display
data as the input data changes;
a display unit defining a screen configured to:
receive the rack display data from the processing
unit; and
display a depiction of a military decoration rack
based on the received rack data wherein the
1 This decision uses the following abbreviations: “Spec.” for the
Specification, filed September 21, 2011; “Final Act.” for the Final Office
Action, mailed February 9, 2015; “Br.” for the Appeal Brief, filed
September 1, 2015; and “Ans.” for the Examiner’s Answer, mailed
January 6, 2016.
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Application 13/239,196
depiction is updated as the rack display data is
updated, and the depiction is an accurate
representation of the military decoration rack
created to the user’s specifications; and
a communication unit configured to communicate
the rack data.
Br. 13 (Claims App.).
The Prior Art Supporting the Rejections on Appeal
Yankton US 2008/0147512 A1 June 19, 2008
Carroll et al. (“Carroll”) US 2009/0259553 A1 Oct. 15, 2009
U.S. Dep’t of the Army, Wear and Appearance of Army Uniforms and
Insignia, Army Regulation 670-1 (Feb. 3, 2005) (“AR 670-1”)
Marlow White Military Awards and Decorations (July 13, 2011), http://
web.archive.org/web/20110713110716/http://www.marlowwhite.com
/awards-decorations (“Marlow White”)
The Exchange | Exchange Stores | JB Andrews (Aug. 14, 2011), http://
web. archive. org/ web/20110814011042/http ://www. shopmyexchange. com/
ExchangeLocations/JBAndrewsStore.htm (“JB Andrews”)
The Rejections on Appeal
Claims 1—20 stand rejected under 35 U.S.C. § 101 as directed to
non-statutory subject matter. Final Act. 3—5.
Claims 1—6, 8, 9, and 11—20 stand rejected under 35 U.S.C. § 103(a)
as unpatentable over Yankton, Marlow White, and AR 670-1. Final Act.
6-19.
Claim 7 stands rejected under 35 U.S.C. § 103(a) as unpatentable over
Yankton, Marlow White, AR 670-1, and Carroll. Final Act. 20—21.
Claim 10 stands rejected under 35 U.S.C. § 103(a) as unpatentable
over Yankton, Marlow White, AR 670-1, and JB Andrews. Final Act. 22.
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ANALYSIS
We have reviewed the rejections of claims 1—20 in light of
Appellant’s arguments that the Examiner erred. For the reasons explained
below, we disagree with Appellant’s assertions regarding error by the
Examiner. We concur with the Examiner’s conclusion that the claims recite
patent-ineligible subject matter under § 101. We adopt the Examiner’s
findings and reasoning in the Final Office Action (Final Act. 3—26) and
Answer (Ans. 3—8). We add the following to address and emphasize
specific findings and arguments.
The § 103(a) Rejections of Claims 1—20
“Appellant chooses not to address the[] grounds of rejection [under
§ 103(a)] at this juncture.” Br. 10. Because Appellant does not contest the
§ 103(a) rejections, we summarily sustain them. See Hyatt v. Dudas,
551 F.3d 1307, 1314 (Fed. Cir. 2008) (explaining that “[w]hen the appellant
fails to contest a ground of rejection to the Board,... the Board may treat
any argument with respect to that ground of rejection as waived”); see also
Manual of Patent Examining Procedure (MPEP) § 1205.02 (9th ed. Rev.
07.2015 Nov. 2015) (“If a ground of rejection stated by the examiner is not
addressed in the appellant’s brief, appellant has waived any challenge to that
ground of rejection and the Board may summarily sustain it, unless the
examiner subsequently withdrew the rejection in the examiner’s answer.”).
The §101 Rejection of Claims 1—20
Introduction
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
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thereof, may obtain a patent therefor, subject to the conditions and
requirements of this title.” 35 U.S.C. § 101. In Mayo Collaborative
Services v. Prometheus Laboratories, Inc., 566 U.S. 66, 70 (2012), and Alice
Corp. 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 (1981). In Mayo and Alice, the Court set forth a
two-step analytical framework for evaluating patent-eligible subject matter:
First, “determine whether the claims at issue are directed to” a patent-
ineligible concept, such as an abstract idea. Alice, 134 S. Ct. at 2355. If so,
“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. Id. at 2355, 2357 (quoting Mayo, 566 U.S. at 79); see
Affinity Labs of Tex., LLCv. 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 Grp., 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) (quotingMayo,
566 U.S. at 79-80).
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Mayo/Alice Step One
Appellant contends that independent claims 1,17, and 20 “are
directed to varying perspectives of substantially identical subject matter.”
Br. 7. Appellant asserts that the Examiner erred in rejecting claims 1,17,
and 20 under § 101 because: (1) the “claims are directed to, fundamentally, a
device with specific functionality”; (2) the “claims are centered around a
kiosk that is optimized to speed up and improve the process of obtaining a
military decoration rack”; and (3) the “claims in no way risks [sic] granting
appellant a monopoly on the abstract concept of selling military decoration
racks, let alone the broader concept of sales, or even sales assisted by a
machine.” Id. at 7—8. Citing the “July 2015 Update: Subject Matter
Eligibility” (“2015 Update”), Appellant asserts that the cases concerning
sales activities discussed there involved claims directed to “business
practices that have long predated the computer.” Br. 9. Appellant contrasts
those claims to “the instant claims . . . directed to a kiosk and systems that
allow for design and visualization of a product that does not exist, and
ultimately the submission of that product to manufacturing.” Id.
Appellant’s arguments do not persuade us of Examiner error. We
agree with the Examiner’s reasoning that the “claims involve storing product
data, receiving customer input regarding desired products, translating
customer input into product data, and then translating the product data into a
visualization of the product for sale” and that those are “steps and functions
that may be performed in the human mind.” Ans. 3^4; see Final Act. 3,
23—24. For instance, a kiosk according to claim 17 manipulates data by
(1) receiving input data regarding military awards, (2) comparing the input
data to stored data regarding military awards, and (3) based on the
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comparison, producing output data for display to a user. Br. 13 (Claims
App.) ; see Spec. ]Hf 18—37. The Federal Circuit has ruled that claims
covering the receipt, analysis, and display of data were directed to abstract
ideas. See, e.g., Credit Acceptance Corp. v. Westlake Servs., 859 F.3d 1044,
1047, 1054—56 & n.6 (Fed. Cir. 2017); Elec. Power Grp., 830 F.3d at 1351—
54; buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1351-55 (Fed. Cir. 2014);
SmartGene, Inc. v. Advanced Biological Labs., SA, 555 F. App’x 950,
951—52, 954—55 (Fed. Cir. 2014). Further, steps and functions that may be
performed in the human mind constitute abstract ideas. CyberSource Corp.
v. Retail Decisions, Inc., 654 F.3d 1366, 1371—73 (Fed. Cir. 2011).
Also, Appellant’s preemption argument overlooks the explanation in
the 2015 Update that “questions of preemption are inherent in the two-part
framework from Alice Corp. and Mayo” and “are resolved by using this
framework” to determine patent-eligible subject matter. 2015 Update 8; see
Ans. 4. For claims covering a patent-ineligible concept, preemption
concerns “are fully addressed and made moot” by an analysis under the
Mayo!Alice framework. Ariosa Diagnostics, Inc. v. Sequenom, Inc.,
788 F.3d 1371, 1379 (Fed. Cir. 2015).
Mayo!Alice Step Two
Appellant asserts that the Examiner erred in rejecting claims 1,17,
and 20 under § 101 because the claims “add significantly more to the
abstract concept so that when considered both individually and ‘as an
ordered combination’” the additional elements transform the nature of the
claims into patent-eligible subject matter. Br. 9. In particular, Appellant
contends that the claims “cannot be practiced without implementing a
machine — the kiosk — which must include specific functionality such as
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providing ‘an accurate representation of the military decoration rack created
to the user’s specifications.’” Id. In addition, Appellant contends that “[b]y
tying implementation of appellant’s claims to including deploying a kiosk
with specific functionality, appellant’s claims go far beyond reciting the idea
of selling something and then instructing the implementer to just ‘apply it.’”
Id.
Appellant’s arguments do not persuade us of Examiner error because
the Examiner determines that the “additional limitation in the form of a
kiosk ... is not sufficient to amount to significantly more than” a patent-
ineligible concept. Ans. 3—4, 7—8; see Final Act. 3—5, 25—26. The Examiner
properly reasons that “[tjhere is no ‘inventive concept’ in Appellant’s use of
a generic kiosk to perform well-understood, routine, and conventional
activities commonly used in industry.” Ans. 4; see Final Act. 25—26. In
addition, the Examiner determines that the claims do not cover significantly
more than a patent-ineligible concept because they recite generic computer
components performing generic computer functions “(i.e., storing data,
receiving data, translating data, and translating data) that are well-
understood, routine and conventional activities previously known to the
industry.” Ans. 7; see Final Act. 3—4, 25—26. For example, in claim 17 the
“input interface” performs the generic function of receiving data, the
“processing unit” performs the generic function of processing data, the
“display unit” performs the generic function of displaying data, and the
“communication unit” performs the generic function of communicating data.
Br. 13 (Claims App.)
Appellant’s contentions require a narrow interpretation of the claim
term “kiosk.” Broadly but reasonably interpreted, that term encompasses
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“an interactive computer terminal available for public use, as one with
Internet access or site-specific information.”2 To the extent the term “kiosk”
connotes structure beyond a computer, an unspecified kiosk structure does
not suffice to transform the nature of the claims into significantly more than
a patent-ineligible concept. “[N]ot every claim that recites concrete,
tangible components escapes the reach of the abstract-idea inquiry.” In re
TLI Commc ’ns LLC Patent Litig., 823 F.3d 607, 611 (Fed. Cir. 2016); see
Alice, 134 S. Ct. at 2353, 2360 (noting that “[a]ll of the claims are
implemented using a computer”). For example, in Content Extraction &
Transmission LLC v. Wells Fargo Bank, 776 F.3d 1343, 1347 n.l, 1349
(Fed. Cir. 2014), the Federal Circuit decided that claims requiring a
computer and a scanner did not include enough additional elements to impart
patent eligibility.
Appellant contends that the claims “enhance and improve upon the
transaction of purchasing a military decoration rack.” Br. 9. But the claims
merely automate steps and functions in the manual process of purchasing a
military decoration rack. See Spec. 1—4, 6, 15—18; see also Ans. 5—6, 8.
In particular, the Examiner reasons that “old and well-known regulation
data,” e.g., as described in AR 670-1, “serves as the basis for Appellant’s
business plan, yet [Appellant] merely automates this business plan using
generic computer technology.” Ans. 8. The “mere automation of manual
processes using generic computers does not constitute a patentable
improvement in computer technology.” Credit Acceptance, 859 F.3d
at 1055.
2 Dictionary.com, http://www.dictionary.com/browse/kiosk?s=t.
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Appellant asserts that the Supreme Court in Diamond v. Diehr “found
that the computer controlled an industrial process was enough” to impart
patent eligibility due to the transformation and reduction of an article to a
different state or thing. Br. 10. Appellant then contends that “the instant
claims are directed to allowing a user to design a military decoration rack in
conformance with regulations that are subject to change, visualizing the end
product, and then transforming the design into concrete reality, thus
effecting a transformation.” Id. In Diamond v. Diehr, however, the “claims
involve[d] the transformation of. . . raw, uncured synthetic rubber, into a
different state or thing,” namely, cured synthetic rubber, and they
“describe[d] in detail a step-by-step method for accomplishing” that
transformation. Diamond, 450 U.S. at 184. In contrast, the claims here do
not include steps producing an analogous change in a physical object. No
claim requires the production of an actual military decoration rack.
Summary for Independent Claims 1,17, and 20
For the reasons discussed above, Appellant’s arguments have not
persuaded us that the Examiner erred in rejecting claims 1,17, and 20 under
§101. Hence, we sustain the rejection of claims 1,17, and 20.
Dependent Claims 2-16,18, and 19
Appellant does not make any separate substantive patentability
arguments for dependent claims 2—16, 18, and 19. Br. 7—10. Because
Appellant does not argue the claims separately, we sustain the § 101
rejection of claims 2—16, 18, and 19 for the same reasons as claims 1,17,
and 20. See 37 C.F.R. § 41.37(c)(l)(iv).
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DECISION
We affirm the Examiner’s decision to reject claims 1—20.
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). See
37 C.F.R. §41.50(f).
AFFIRMED
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