In Re: Brown , 645 F. App'x 1014 ( 2016 )

NOTE: This disposition is nonprecedential.
United States Court of Appeals
for the Federal Circuit
______________________
IN RE: HOLLY BROWN, KEN NOVAK, KIM
GOELLNER,
Appellants
______________________
2015-1852
______________________
Appeal from the United States Patent and Trademark
Office, Patent Trial and Appeal Board in No. 09/795,210.
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Decided: April 22, 2016
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MARK D. KLINKO, Fay Sharpe, LLP, Cleveland, OH,
for appellants.
THOMAS W. KRAUSE, Office of the Solicitor, United
States Patent and Trademark Office, Alexandria, VA, for
appellee Michelle K. Lee. Also represented by BENJAMIN
T. HICKMAN, COKE STEWART.
______________________
Before PROST, Chief Judge, MOORE, and STOLL, Circuit
Judges.
PER CURIAM.
Holly Brown, Ken Novak, and Kim Goellner (collec-
tively, “Brown”) appeal from the Patent Trial and Appeal
2 IN RE: BROWN
Board’s (“Board”) decision holding claims 1–5, 7–9, 17, 18,
and 20–22 of U.S. Patent Application No. 09/795,210
unpatentable under 35 U.S.C. § 101. Because the assert-
ed claims cover only abstract ideas coupled with routine
and conventional hair-cutting steps, we affirm.
BACKGROUND
The ’210 application claims methods of cutting hair.
The specification indicates that an object of the invention
is to produce “consistent and reproducible hair styling
designs” while “balancing head shape overall.”
J.A. 14, 19. Claim 1 is representative of the claimed
subject matter, which recites:
1. A method of cutting hair comprising;
a) defining a head shape as one of bal-
anced, horizontal oblong or vertical oblong
by determining the greater distance be-
tween a first distance between a fringe
point and a low point of the head and a
second distance between the low point of
the head and the occipital bone;
b) designating the head into at least three
partial zones;
c) identifying at least three hair patterns;
d) assigning at least one of said at least
three hair patterns to each of the said par-
tial zones to either build weight or remove
weight in at least two of said partial
zones; and
e) using scissors to cut hair according to
said assigned hair pattern in each of the
said partial zones.
IN RE: BROWN 3
The specification provides an example of how to im-
plement the claimed steps: if a client has a vertical oblong
head shape, a hairstyle should be identified and assigned
to partial zones on the sides of the head to build weight,
and a second hairstyle should be identified and assigned
to the top of the head to remove weight. J.A. 19. The
specification teaches that practicing this method “effec-
tively allocates hair weight in opposition to head shape.”
J.A. 15. It discloses that the hair patterns used to build
or remove weight are known in the art. J.A. 13, 15.
Brown first appealed the examiner’s § 101 rejections
in 2011, which the Board affirmed in 2012. Brown then
petitioned to amend the claims to specify the use of scis-
sors in step (e), resulting in claim 1 as provided above.
The examiner again rejected the amended claims under
§ 101, and in 2015, the Board affirmed that the claims are
drawn to patent-ineligible subject matter. Brown ap-
peals. We have jurisdiction under 28 U.S.C.
§ 1295(a)(4)(A).
DISCUSSION
We review the Board’s determination of patent-
ineligible subject matter de novo. In re Ferguson, 558
F.3d 1359, 1363 (Fed. Cir. 2009). To determine whether
claims are directed to patent-ineligible abstract ideas, we
apply the two-step test introduced in Mayo Collaborative
Services v. Prometheus Laboratories, Inc., 132 S. Ct. 1289,
1296–98 (2012), and further explained in Alice Corp.
Party v. CLS Bank International, 134 S. Ct. 2347, 2355
(2014). First, we “determine whether the claims at issue
are directed to a patent-ineligible concept.” Alice, 134
S. Ct. at 2355. If so, we then “examine the elements of
the claim to determine whether it contains an ‘inventive
concept’ sufficient to ‘transform’ the claimed abstract idea
into a patent-eligible application.” Id. at 2357. We exam-
ine the elements of each claim both individually and as an
4 IN RE: BROWN
ordered combination. Id. at 2355. To transform an ab-
stract idea into a patent-eligible concept, the claims must
recite “more than simply stating the abstract idea while
adding the words ‘apply it.’” Id. at 2357 (quoting Mayo,
132 S. Ct. at 1294 (internal alterations omitted)).
At Mayo/Alice step one, the claims are drawn to the
abstract idea of assigning hair designs to balance head
shape. We agree with the Board’s determination that the
central purpose of the claimed method is the process
before cutting, and that the hair-cutting step constitutes
“insignificant post-solution activity.” Ex parte Brown,
No. 2014-004390, at 4 (P.T.A.B. Apr. 8, 2015). Brown
themselves state the object of the invention, providing a
“consistent and repeatable hair cut,” is “achieved through
the recited steps of defining a head shape, designating
zones, and assigning patterns to zones.” Appellants’
Br. 15–16. They do not dispute that the hair cutting step
“employs a well-known concept,” id. at 17, or that the hair
patterns applied are “industry recognized,” id. at 7. They
further suggest the inventive portion of the claims stem
from steps (a) and (d), defining a head shape and assign-
ing hair patterns to partial zones.
Brown argues the claims are not directed to an ab-
stract idea because steps (a), (b), and (e)—defining a head
shape, designating the head, and using scissors—require
physical manipulation. While step (a) provides instruc-
tions on how to define head shape, it does not recite
instructions for one to physically measure a head. No-
where in the specification does it indicate or suggest this
step must be performed physically, or what instrument
could be used. The head shapes depicted in Figure 2 of
the ’210 application, of which “horizontal oblong” and
“vertical oblong” head shapes are respectively shown
below, instead suggest one would perform step (a) visual-
ly. J.A. 28 at Fig. 2 (excerpted); see also J.A. 16 (“Figure 2
represents schematic views of the head depicting head
IN RE: BROWN 5
shape[.]”).
Step (b) is similarly not confined to physically designat-
ing the head into partial zones. The limitations are
drafted so broadly to encompass the mere idea of applying
different known hair styles to balance one’s head. Identi-
fying head shape and applying hair designs accordingly is
an abstract idea capable, as the Board notes, of being
performed entirely in one’s mind. These steps constitute
an abstract idea. And the final step, step (e), is to use
scissors to cut the hair after you determine the appropri-
ate hair style. Step (e) does not transform this abstract
idea into patent-eligible subject matter.
Much of Brown’s briefing focuses on the use of scissors
in step (e) to transform the abstract idea into a patent-
eligible concept. They argue the hair cutting step in
step (e) is a meaningful and necessary limitation, and
that the scissors used in that step render the claims
patent eligible under the machine-or-transformation test.
While it is true that a hair cut would not result without
practicing the final step of cutting hair, step (e) merely
instructs one to apply the abstract idea discussed above
with scissors. Such a limitation is not the type of addi-
tional feature Alice envisioned as imparting patent eligi-
bility. See Alice, 134 S. Ct. at 2358 (“Stating an abstract
idea while adding the words ‘apply it’ is not enough for
patent eligibility.”) (quoting Mayo, 132 S. Ct. at 1294
(internal quotation marks omitted)). We hold that step
6 IN RE: BROWN
(e), using scissors to cut hair, is insignificant post-solution
activity. Steps (a)–(d) teach the stylist how to choose the
hair style, step (e) amounts to “apply it.” These claims
are not eligible for patentability under Mayo/Alice.
We have considered Brown’s remaining arguments
and they are without merit.
CONCLUSION
For the foregoing reasons, the judgment of the Board
is affirmed.
AFFIRMED