• An Easy Patent Eligibility Exercise
  • July 7, 2012 | Author: Courtenay C. Brinckerhoff
  • Law Firm: Foley & Lardner LLP - Washington Office
  • While we struggle to understand the ramifications of difficult patent eligibility cases like Prometheus and Myriad, it can be helpful to examine an application that plainly fails to satisfy 35 USC § 101. When the USPTO Board of Patent Appeals and Interferences affirmed the Examiner’s rejections in Ex parte Nerenberg, it may not have added much to § 101 jurisprudence, but its holding of non-patent eligibility means that we all are free to practice the self-improvement methods described in Nerenberg’s patent application.

    The Claims At Issue

    U.S. patent application 11/733,255 is directed to “Integration Of Pursuit Of Goals With Physical Activity.” Claim 1 was deemed to be representative of the claims on appeal:

    1. A method, comprising instructing a first person to execute an activity, wherein executing the activity comprises performing at least one physical exercise and reciting words during said performing the at least one physical exercise, wherein the recited words relate to at least one goal of the first person, wherein the at least one goal is unrelated to and not a consequence of the at least one physical exercise, and wherein said instructing the first person is performed by a second person.

    As described in the application, the methods address the difficulty that people have achieving their goals, and “integrates pursuit of goals with physical activity, which transfers psychotherapy and counseling from the office of a therapist, coach, teacher, etc. to an exercise environment such as a gymnasium (“gym”), office, etc.” In particular:

    [T]he present invention combines physical exercise with words that the client/patient recites while performing the physical exercise. The words may be recited before, during, and/or after performance of each repetition of one or more repetitions within one or more sets of the physical exercise. The recited words relate to at least one goal of the client/patient, wherein the at least one goal is unrelated to and not a consequence of the physical exercise.

    The application describes the words as “power thoughts” that “facilitate[] accomplishment of the at least one goal.”

    A power thought empowers the client/patient to think the way the client/patient chooses to think and provides a basis for the client/patient to control his or her thoughts, feelings, and/or actions and/or combinations thereof to improve performance in all areas of life, such as by staying focused on positive goals, thoughts, and/or feelings, and by removing deterrents to effectiveness.

    Examples include:

    “I will have compassion for those who offend me”
    “I am becoming healthier and stronger”
    “I will put my wife’s needs before my own”
    “I can do it and I am grateful”

    The invention is illustrated in detail as follows:

    [C]onsider a scenario in which the first person 1 is receiving counseling from the second person 2 who is a psychologist with respect to the issue of the first person 1 being able to be control the first person’s anger (step 31); i.e., the first person 1 is overly susceptible to becoming angry. In step 32, the psychologist instructs the first person 1 to perform a specified number (e.g., two) sets of bench pressing of an appropriate amount of weight, wherein in each cycle of each set the first person 1 recites “I will control my anger”. The cycles of each set collectively define the rhythmic pattern of the bench pressing exercise. Bench pressing is performed by a person while down such that the back of the person is in contact with a flat horizontal surface such as a bench. Each bench pressing cycle comprises a lifting phase (in which the weight is lifted) and a subsequent lowering phase (in which the lifted weight is lowered). In this example, the first person 1 recites “I will control my anger” in either the lifting phase or the lowering phase (but not both), which is in accordance with reciting the words synchronously with respect to the rhythmic pattern when performing the bench pressing exercise.

    The Examiner’s Rejections

    In an Office Action issued in 2009, the Examiner rejected the claims under 35 USC § 101 as failing to satisfy the “machine or transformation test” set forth in the Federal Circuit’s 2008 Bilski decision.

    The Examiner also asserted that the claims were obvious in view of an earlier patent application to Westreich (“Kinematics Teaching Method”) which was cited for teaching  a method “comprising instructing a first person to execute an activity, wherein executing the activity comprises performing at least one physical exercise and reciting words during said performing the at least one physical exercise . . . wherein the recited words relate to at least one goal of the first person....”

    The Applicant’s Arguments

    On the § 101 issue, the Applicant argued:

    [T]he instructing step in claim 1 results in performance of at least one physical exercise by the first person, which is a physical transformation of a physiological state of the first person.

    On the § 103 issue, the Applicant emphasized that Westreich did not teach a method “wherein the recited words relate to at least one goal of the first person, wherein the at least one goal is unrelated to and not a consequence of the at least one physical exercise.” Rather, according to the Applicant “the very essence ofWestreich’s invention is to learn subject matter through performing a dance that relates to the subject matter to be learned.”

    The Examiner’s Counter-Arguments

    With regard to the § 101 rejection, the Examiner stated:

    The physiological state change of a human subject does not fall in the above transformation test ([which requires transformation of an] article or materials).

    With regard to the § 103 rejection, the Examiner stated that Westreich does teach a method as claimed, such as when “the teacher asks the student to perform a physical exercise (in this case a dancing move) while saying for example a word that begins with the letter “M”. Here, it is very clear that the goal of the above activity is to learn the letter “M” (i.e. the recited words relate to at least one goal of the first person); however, it is also well understood that such physical activity would result in a body change (such as muscular strength), which is unrelated to the goal (i.e. the at least one goal is unrelated to and not a consequence of the at least one physical exercise).”

    The Board Decision

    In a decision rendered May 31, 2012, the Board noted that the jurisprudence surrounding § 101 “has undergone significant clarification” since the Examiner’s Answer was issued in 2009, but noted that “it remains the case that failing to satisfy the machine-or-transformation test is a factor weighing against the patent eligibility of a process claim.” The Board agreed with the Examiner that any physiological transformation of the subject of the claimed method did not bring the claims under § 101.

    On the other hand, the Board did not agree with the Examiner on the § 103 issue:

    We find that Westreich discloses performing a physical exercise which relates to the words being spoken and as such are related to the goal of the person.

    Non-Patent Elligbile Means Freedom-to-Operate

    The Board’s holding that these claims do not relate to subject matter that can be patented means that we all are free to combine our physcial exercise with verbal reinforcements of other self-improvement goals. The next time you go to the gym, your workout could follow the plan outlined in Table 2 of the Nerenberg application:

    Lifting: I can do it
    Lowering: and I am grateful
    Lifting: I will put my wife’s needs
    Lowering: before my own
    Lifting: I can do it
    Lowering: and I am grateful
    Lifting: I will put my wife’s needs
    Lowering: before my own

    Clearly the public good is served by keeping such methods in the public domain!