Robert James. Prinz et al.

Patent Trials and Appeals Board

Aug 30, 2019

14684736 - (D) (P.T.A.B. Aug. 30, 2019)

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.
14/684,736 04/13/2015 Robert James Prinz B88200 1210US.1 7732
26158 7590 08/30/2019
WOMBLE BOND DICKINSON (US) LLP
ATTN: IP DOCKETING
P.O. BOX 7037
ATLANTA, GA 30357-0037
EXAMINER
PIERCE, WILLIAM M
ART UNIT PAPER NUMBER
3711
NOTIFICATION DATE DELIVERY MODE
08/30/2019 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):
BostonPatents@wbd-us.com
IPDocketing@wbd-us.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte ROBERT JAMES PRINZ
and
TROY A. RECKNAGEL
____________

Appeal 2018-0011371
Application 14/684,736
Technology Center 3700
____________

Before PHILIP J. HOFFMANN, CYNTHIA L. MURPHY, and
KENNETH G. SCHOPFER, Administrative Patent Judges.

MURPHY, Administrative Patent Judge.

DECISION ON APPEAL
The Appellants2 appeal under 35 U.S.C. § 134 from the Examiner’s
rejections of claims 1–22. We have jurisdiction over this appeal under
35 U.S.C. § 6(b).
We REVERSE.

1 A hearing was held on August 7, 2019.
2 “The real party in interest is Brunswick Bowling and Billiards Corporation.”
(Appeal Br. 2.)
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STATEMENT OF THE CASE
The present appeal involves “[s]ystems and methods” for “safely
returning bowling balls to a bowler.” (Spec., Abstract.)
Independent Claims on Appeal
1. A system for safely returning bowling balls to a bowler,
the system comprising:
a return mechanism that returns the bowling balls to a
retrieval area for retrieval by the bowler;
a housing on the return mechanism, wherein the housing
comprises a throat through which the bowling balls are returned
from the return mechanism to the retrieval area;
an array of sensors that senses a presence of an object in
the throat; and
a controller in communication with the array of sensors,
the controller controlling the return mechanism based upon the
presence of the object in the throat being detected by one or
more of the sensors of the array of sensors;
wherein the controller comprises a memory having stored
bowling ball recognition data that is outputted by the array of
sensors when a bowling ball is returned through the throat,
wherein the controller compares the stored bowling ball
recognition data to actual input signals outputted by the array of
sensors when the object is detected in the throat, and wherein
the controller modifies the operation of the return mechanism
when the stored bowling ball recognition data is different than
the actual input signals.
18. A method for safely returning bowling balls to a bowler,
the method comprising:
returning bowling balls via a return mechanism to a
retrieval area for retrieval by the bowler;
sensing a presence of a bowling ball in a throat defined in
the return mechanism and through which the bowling balls are
returned, wherein one or more sensors sense the presence of the
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bowling ball, and communicate the sensing of the presence of
the bowling ball to a controller of the system; and
comparing bowling ball recognition data stored in a
memory associated with the controller to signals that are
communicated to the controller by the one or more sensors
detecting the presence of the bowling ball in the throat; and
modifying an operation of the return mechanism when
the stored bowling ball recognition data is different than the
signals communicated by the one or more sensors when they
sense that the bowling ball is present in the throat of the
housing.
Rejections
I. The Examiner rejects claims 18–22 under 35 U.S.C. § 101 as
being directed to an abstract idea without significantly more. (Final
Action 2.)
II. The Examiner rejects claims 1–9, 11, 14–16, and 18–22 under
35 U.S.C. § 103 as unpatentable over VanDuyn3 and Sick.4 (Final
Action 6.)
III. The Examiner rejects claims 10, 12, and 17 under 35 U.S.C.
§ 103 as unpatentable over VanDuyn, Sick, and Study.5 (Final Action 6.)
IV. The Examiner rejects claim 13 under 35 U.S.C. § 103 as
unpatentable over VanDuyn, Sick, and Honeywell.6 (Final Action 9.)

3 US 5,868,629, issued February 9, 1999.
4 Sick Sensor Intelligence, Transforming the Light Curtain: Using Pattern
and Object Recognition for Safer Material (publication date unknown).
5 US 7,248,174 B2, issued July 24, 2007.
6 Honeywell Int’l Inc., Safety Light Curtain Installation Manual and open
SAFETY Light Curtain (©1993–2001).
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ANALYSIS
Independent claims 1 and 18 set forth a system and a method,
respectively, involving a “return mechanism” that defines a “throat” through
which bowling balls are returned “to a retrieval area for retrieval by the
bowler.” (Appeal Br., Claims App.) The disclosed system/method
“recognize[s] when a bowling ball is moving through the throat,” and “can
therefore recognize when objects other than bowling balls are moving
through the throat.” (Spec. ¶ 39.)7 “[W]hen a bowling ball is detected as
moving through the throat,” the return mechanism “continue[s] in normal
operation.” (Id.) “When an object other than a bowling ball is detected,” the
system/method “stop[s] the return mechanism from running.” (Id.)
Rejection I — 35 U.S.C. § 101
The Patent Act defines subject matter eligible for patent protection as
“any new and useful process, machine, manufacture, or composition of
matter, or any new and useful improvement thereof.” (35 U.S.C. § 101.)
Yet the Supreme Court has “long held” that this provision contains an
important implicit exception: “[l]aws of nature, natural phenomena, and
abstract ideas are not patentable.” (Ass’n for Molecular Pathology v. Myriad
Genetics, Inc., 569 U. S. 576, 589 (2013) (internal quotation marks and
citation omitted).) These three concerns are “judicially created exceptions to
§ 101,” or more concisely, “judicial exception[s].” (McRO, Inc. v. Bandai
Namco Games Am. Inc., 837 F.3d 1299, 1311, 1312 (Fed. Cir. 2016).) Thus,
an abstract idea is a judicial exception to something (e.g., a method) that
would otherwise be considered statutory subject matter.

7 Our quotations to the Specification omit reference numerals.
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In Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 573 U.S. 208 (2014), the
Supreme Court provided a two-step test to guard against an attempt to patent
purely an abstract idea. (Id. at 217–18.) In Alice step one, a determination is
made as to whether the claim at issue is “directed to” an abstract idea. (Id.
at 218.) If not, it can be concluded that no attempt is being made to patent
purely an abstract idea, and the Alice Test for patent eligibility is complete.8
The 2019 REVISED PATENT SUBJECT MATTER ELIGIBILITY GUIDANCE,
84 Fed. Reg. 50 (Jan. 7, 2019) (“2019 Guidance”) provides us with a two-
prong strategy (Step 2A) to determine whether a claim is “directed to” an
abstract idea under Alice step one. (See id. at 50–57.) In the first prong
(Prong One), an evaluation is made as to “whether the claim recites a
judicial exception.” (Id. at 54.) “If the claim does not recite a judicial
exception,” “it is not directed to a judicial exception” and “is eligible.”
(Id.)9 In other words, if a claim does not recite a judicial exception (e.g., an
abstract idea), the Alice Test for patent eligibility is complete, and the claim
passes muster under 35 U.S.C. § 101.

8 If the claim at issue is directed to an abstract idea, Alice step two must be
performed. In Alice step two, a determination is made as to whether
additional elements in the claim “amount[] to significantly more” than the
abstract idea itself. (Alice, 573 U.S. at 218 (internal quotation marks and
citation omitted).)
9 If the claim at issue does recite a judicial exception, the second prong of
Step 2A (Prong Two) must be performed. In Prong Two, an evaluation is
made as to whether “the claim as a whole integrates the recited judicial
exception into a practical application of the exception.” (2019 Guidance, 84
Fed. Reg. at 54.) If not, the claim is directed to a judicial exception, and the
2019 Guidance requires the performance of a Step 2B analysis. In Step 2B,
an evaluation is made as whether additional elements in the claim “amount
to significantly more than the exception itself.” (Id. at 56.)
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Here, the Examiner maintains that independent claim 18 is directed to
an abstract idea. (See Final Action 2.) “In accordance with judicial
precedent,” the 2019 Guidance synthesizes abstract-idea subject matter into
three groupings: “[m]ental processes,” “[m]athematical concepts,” and
“[c]ertain methods of organizing human activity.” (2019 Guidance, 84 Fed.
Reg. at 52.) With particular reference to mental processes, they are
“concepts performed in the human mind,” and include “observation,”
“evaluation,” “judgement,” and/or “opinion.” (Id.)
The Examiner more specifically determines that independent claim 18
is “directed to the concept of sensing and modifying any device capable of
returning a bowling ball.” (Final Action 2.) And the Examiner appears to
characterize this concept as an abstract idea. (Answer 5.) The Examiner
also maintains, generally, that independent claim 18 is “so broad” that it
“can be performed mentally by a person.” (Id. at 4.)
Per the 2019 Guidance, we begin our directed-to analysis by
evaluating, under Prong One of Step 2A, whether independent claim 18
recites an abstract idea. As set forth below, we agree with the Appellants
that it does not.
Independent claim 18 recites “returning bowling balls via a return
mechanism to a retrieval area for retrieval by [a] bowler.” (Appeal Br.,
Claims App.) This step is not a mental process that can be performed in a
person’s mind, as a person cannot, in his/her mind, physically move a
bowling ball to a retrieval area. This step is also not a mathematical concept
and/or a method of organizing human activity.
Independent claim 18 recites “sensing a presence of a bowling ball in
a throat defined in the return mechanism and through which the bowling
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balls are returned.” (Appeal Br., Claims App.) The Examiner does not
explain why this constitutes an abstract idea. Insofar as such sensing can be
equated to the mental process of observing, the Examiner does not
adequately address how a person could practically observe a bowling ball
while it is in the throat of a return mechanism.
Independent claim 18 recites that “one or more sensors sense the
presence of the bowling ball.” (Appeal Br., Claims App.) The Examiner
seems to say that using a sensor is an abstract idea. (See, e.g., Final
Action 3.) But the actual use of a sensor is not a mental process, a
mathematical concept, and/or a method of organizing human activity.10
Independent claim 18 recites that the one or more sensors
“communicate the sensing of the presence of the bowling ball to a
controller.” (Appeal Br., Claims App.) According to the Examiner,
“[w]hile the claim does call for ‘a controller,’” this controller “can merely be
a person in control of the operation of the machine.” (Answer 4.) Even if
this is true, the Examiner does not adequately address how a sensor
communicating to a person (as opposed to a person observing a sensor)
constitutes a mental process, a mathematical equation, and/or a method of
organizing human activity.
Independent claim 18 recites “comparing bowling ball recognition
data stored in a memory associated with the controller to signals that are

10 This is not to say that using a sensor would always be sufficient to
integrate an abstract idea into a practical application under Prong Two of
Step 2A of the 2019 Guidance. (See 2019 Guidance, 84 Fed. Reg. at 54–55.)
However, before reaching Prong Two, it must first be established that
independent claim 18 recites an abstract idea. If it does not, there is no need
to perform the Prong-Two evaluation. (See id. at 54.)
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communicated to the controller by the one or more sensors.” (Appeal Br.,
Claims App.) The Examiner points out, correctly, that the Federal Circuit
has sometimes found that data-comparison steps recite an abstract idea. (See
Answer 4.) For example, the Federal Circuit has “treated analyzing
information by steps people go through in their minds, or by mathematical
algorithms, without more, as essentially mental processes within the
abstract-idea category.” (Electric Power Group LLC v. Alstom S.A., 830
F.3d 1350, 1354 (Fed. Cir. 2016).) But these cases are undergirded by the
inability to “differentiate” the information-analyzing steps at issue from
“ordinary mental processes.” (Id. at 1355.)
If a person observes the appearance of an object and then compares
this appearance to the appearance of another object in his/her memory, this
data-comparison step could constitute a mental process. Here, however, the
data-comparison step involves “signals that are communicated to the
controller by the one or more sensors.” (Appeal Br., Claims App.) The
Examiner does not adequately address how a person’s mind is equipped to
practically receive, and then practically compare, sensor-communicated
signals.
Independent claim 18 recites “modifying an operation of the return
mechanism when the stored bowling ball recognition data is different than
the signals communicated by the one or more sensors when they sense that
the bowling ball is present in the throat of the housing.” (Appeal Br., Claims
App.) According to the Examiner, this “‘modifying’” step can “be
performed mentally by a person.” (Answer 4.) A person could perhaps
judge/opine, in his/her mind, whether the operation of a mechanism should
be modified. But this differs from actually modifying the operation of the
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mechanism, as is required by independent claim 18. And a person cannot
actually modify the operation of a mechanism (e.g., stop the mechanism
from running) in his/her mind.11
Accordingly, independent claim 18 does not recite an abstract idea (or
any other judicial exception) and, therefore, under Prong One of the 2019
Guidance, is patent eligible. In other words, the Alice Test for patent
eligibility is complete, and independent claim 18 passes muster under
35 U.S.C. § 101.12
The Examiner also implies that independent claim 18 is an attempt to
preempt “any machine now know[n] or designed in the future that would
include a safety sensor that would modify its operation.” (Final Action 2.)
Inasmuch as the Examiner is concerned that the Appellants’ claimed
method entails nothing more than “adding a sensor array to a bowling ball
return and using any type of ball data to make it safer” (Answer 6), this
concern should be addressed under 35 U.S.C. § 102 (novelty) and/or
35 U.S.C. § 103 (obviousness). We must “take care not to confuse or
intermingle patentability requirements of these separate sections with

11 This is not to say that the step of modifying a mechanism’s operation
would always be sufficient to integrate an abstract idea into a practical
application under Prong Two of Step 2A of the 2019 Guidance. (See 2019
Guidance, 84 Fed. Reg. at 54–55.) Such an operation-modifying step could
constitute, in certain circumstances, insignificant post-solution activity under
Prong Two. (See id. at 55.) But before reaching Prong Two, it must first be
established that independent claim 18 recites an abstract idea. And if
independent claim 18 does not recite a judicial exception, there is no need to
perform the Prong-Two evaluation. (See id. at 54.)
12 As such, there is no need to perform Prong Two of Step 2A, and there is
no need to perform Step 2B, of the 2019 Guidance. Likewise, there is no
need to perform step two of the Alice Test.
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patent eligibility analysis under section 101.” (2019 Guidance, 84 Fed. Reg.
at 54 n.21.)
Thus, we are persuaded by the Appellants’ arguments (see Appeal
Br. 6–9; Reply Br. 2–8) that the Examiner does not sufficiently establish that
independent claim 18, and the claims depending therefrom, are directed to
an abstract idea without significantly more.
Rejections II–IV — 35 U.S.C. § 103
An “electronic publication” can be considered a prior art reference if
it is “publicly available” before the effective filing date of a patent
application. (MANUAL OF PATENT EXAMINING PROCEDURE (“MPEP”)
§ 2128 II(A) (9th ed., Rev. 08.2017, Jan. 2018).) “Prior art disclosures on
the Internet” are “considered to be publicly available as of the date the item
was publicly posted.” (MPEP § 2128 II(B).) “Absent evidence of the date
that the disclosure was publicly posted, if the publication itself does not
include a publication date (or retrieval date), it cannot be relied upon as prior
art.” (Id.)
Here, the Examiner’s obviousness rejections all rely upon a reference,
Sick, which is an electronic publication. (See Final Action 6, 9.) The
Examiner acknowledges that Sick “does not appear to have a date printed on
his document.” (Id. at 6.) The Examiner does maintain that “Google list[s]
it available as of July 4, 2014” (id.), but the Examiner does not point to, and
we do not see, evidence of this on the record. As such, on the record before
us, the Examiner does not show that Sick qualifies as a prior art reference.
Thus, we are persuaded by the Appellants’ arguments (see Appeal
Br. 16; Reply Br. 8–9) that the Examiner does not sufficiently establish that
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independent claims 1 and 18, and the claims depending therefrom, would
have been obvious based on the prior art.
DECISION
We REVERSE the Examiner’s rejections of claims 1–22.
REVERSED