Ex Parte Chen

Board of Patent Appeals and Interferences

Jul 31, 2012

09944969 (B.P.A.I. Jul. 31, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte KAY-YUT CHEN
____________

Appeal 2010-002228
Application 09/944,9691
Technology Center 2100
____________

Before LANCE LEONARD BARRY, JEAN R. HOMERE, and
JAMES R. HUGHES, Administrative Patent Judges.

HUGHES, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
This is an appeal under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 1-23, which are all the claims remaining in the
application. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.

1 Application filed August 30, 2001. The real party in interest is
Hewlett-Packard Development Company, LP. (App. Br. 1.)
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Invention
Appellant’s invention relates to the field of business processes. In
particular, this invention is drawn to predicting the economic impact of
changes in business policies. (Spec. 1, ll. 3-5.)2
Representative Claim
Independent claim 1, reproduced below with the key disputed
limitations emphasized, further illustrates the invention:
1. A computer-implemented method of determining an
economic impact of business policies, comprising the computer
executing the steps of:

a) providing player definitions defining a plurality of
players and an associated set of rules defining a possible
decision space, a decision-making process tree, an information
set, an outcome function, and a payoff function for each player;

b) translating the player definitions into at least one
codified script; and

c) executing the at least one codified script, wherein a
result of the outcome and payoff functions at the end of
execution of a script stage determines the economic impact of
the business policies defined by the rules.

Rejections on Appeal
1. The Examiner rejects claims 1-23 under 35 U.S.C. § 101 as
being directed to nonstatutory subject matter.
2. The Examiner rejects claims 10-17 and 22 under 35
U.S.C. § 101 as being directed to nonstatutory subject matter.

2 We refer to Appellant’s Specification (“Spec.”), Reply Br. (“Reply Br.”)
filed October 26, 2009) and Appeal Brief (“App. Br.”) filed June 8, 2009.
We also refer to the Examiner’s Answer (“Ans.”) mailed August 26, 2009.
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3. The Examiner rejects claims 10-17 and 22 under 35 U.S.C.
§ 112, second paragraph for failing to particularly point out and distinctly
claim the subject matter which applicant regards as the invention.
4. The Examiner rejects claims 1-23 under 35 U.S.C. § 103(a) as
being unpatentable over Chaturvedi/IDA (Chaturvedi et al., Institute for
Defense Analyses, Synthetic Economies: The Application of Distributed
Interactive Computing Environments for Policy and Management Decision
Making (Sep. 1997)), Chaturvedi/ACM (Alok R. Chaturvedi and Shailendra
R. Mehta, Simulations in Economics and Management, 42(3)
Communications of the ACM, 60-61 (March 1999))¸ Honarvar (US Pat.
6,405,173 B1, June 11, 2002 (filed Feb. 26, 1999), Sugges (Peter R. Sugges,
The Use of Computerized Games to Simulate Business Behavior Under
Different Policies, IEEE Winter Simulation Conference, 563-567 (1979)),
and Fischbacher (Urs Fischbacher, Institute for Empirical Research in
Economics, University of Zurich, z-Tree – Zurich Toolbox for Readymade
Economic Experiments – Experimenter’s Manual (Sep. 1999)).
Grouping of Claims
Based on Appellant’s arguments in the Briefs, we will decide the
appeal on the basis of representative claim 1. See 37 C.F.R.
§ 41.37(c)(1)(vii).

ISSUES
1. Under § 101, did the Examiner err in finding that claims 1-9,
18-21, and 23 are not directed to a process?
2. Under § 101, did the Examiner err in finding that claims 10-17
and 22 are directed to software per se?
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3. Under § 112, second paragraph, did the Examiner err in finding
that claims 1-17 and 22 are indefinite?
4. Under § 103, did the Examiner err in finding that the cited
combination of references would have taught or suggested “translating the
player definitions into at least one codified script,” within the meaning of
independent claims 1, 10, and 18?

FINDINGS OF FACT
We adopt the Examiner’s findings in the Answer and the Final Office
Action as our own, except as to those findings that we expressly overturn or
set aside in the analysis as follows.

ANALYSIS
§101
Claims 1-9, 18-21, and 23
Appellant contends that the claimed process is limited to a practical
application of a principle to transform specific data that represents specific
physical objects (players). (Reply Br. 3-4.) We disagree for essentially the
same reasons given by the Examiner, discussed infra.
Appellant contends that claim 1 recites providing player definitions
defining a plurality of players and an associated set of rules, and according
to Appellant’s Specification the players can be humans or computers. Thus,
according to Appellant, the player definitions represent physical objects,
such as humans or computers. (Reply Br. 3.) Appellant further contends
that claim 1 recites that the player definitions are translated into at least one
codified script. The translating of the player definitions (which represent
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physical objects, such as humans or computers) into at least one codified
script involves a transformation that satisfies the requirements of In re
Bilski, 545 F.3d 943 (Fed. Cir. 2008) (en banc), aff’d sub nom. Bilski v.
Kappos, 130 S.Ct. 3218 (2010). (Id.)
The Examiner contends that method claims 1-9 and 18-21 and 23 do
not recite a step for transforming subject matter to a different state or thing,
or positively recite a sufficient tie to another statutory class of invention.
(Ans. 4.)
We recognize that “the Supreme Court has made clear that a patent
claim’s failure to satisfy the machine-or-transformation test is not dispositive
of the § 101 inquiry.” Cybersource Corp. v. Retail Decisions, Inc., 654 F.3d
1366, 1371 (Fed. Cir. 2011) (citing Bilski,130 S.Ct. at 3227). However, if
the “acts” of a claimed process manipulate only numbers, abstract concepts
or ideas, or signals representing any of the foregoing, the acts are not being
applied to appropriate subject matter. See Gottschalk v. Benson, 409 U.S.
63, 71-72 (1972). This reasoning is applicable in the present case.
Claim 1 recites that the claimed player definitions are transformed
into at least one codified script. However, the player definitions are not
physically transformed into a different state or thing, i.e., it is still data. At
best, these steps amount to mere manipulations of data — manipulations that
can be performed entirely mentally — that fall short of transforming data
sufficient to pass muster under § 101.
Based on this record, we conclude that the Examiner did not err in
finding that claim 1 is directed to non-statutory subject matter. Accordingly,
we affirm the Examiner’s rejection of claims 1-9, 18-21 and 23 under § 101.

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Claims 10-17 and 22
Appellant contends that the modules recited in claim 10 include
hardware components (and possibly software components) and are,
therefore, directed to statutory subject matter. (Reply Br. 4.)
The Examiner contends that “[c]laims to apparatus without structure
and comprising solely software modules unrelated to any computer-readable
media or memory encompass computer programs per se, which are non-
statutory under 35 U.S.C. 101.” (Ans. 5.) We agree with the Examiner for
the reasons discussed infra.
Appellant has not pointed out where Appellant’s Specification
indicates that claimed “modules” are solely directed to hardware entities.
Further, by Appellant’s own admission, the claimed “modules” may be
directed to software. Our reviewing court has clearly stated that “[t]he four
categories [of § 101] together describe the exclusive reach of patentable
subject matter. If a claim covers material not found in any of the four
statutory categories, that claim falls outside the plainly expressed scope of
§ 101 even if the subject matter is otherwise new and useful.” In re Nuijten,
500 F.3d 1346, 1354 (Fed. Cir. 2007). This reasoning is applicable in the
present case. The Examiner reasonably construed that claim 10 may be
directed to software and, therefore, covers material outside of the four
statutory categories.
Based on this record, we conclude that the Examiner did not err in
finding that claim 10 includes non-statutory subject matter. Accordingly, we
affirm the Examiner’s § 101 rejection of claims 10-17 and 22.

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§ 112, second paragraph
The Examiner contends that claims 10-17 and 22 are indefinite
because claim 10 is an apparatus claim that does not recite any structure.
(Ans. 5.). We disagree for the reasons discussed infra.
While claim 10 is an apparatus claim that recites “modules”, the fact
that the modules may be software, as discussed supra, does not render the
claim indefinite under § 112, second paragraph. Even if the claimed
modules are software, claim 10 is nonetheless directed to an apparatus.
Based on this record, we find that the Examiner erred in finding that
claim 10 is indefinite. Accordingly, we reverse the Examiner’s § 112,
second paragraph, rejection of claims 10-17 and 22.
§103
Appellant contends that the cited combination of references fail to
teach or suggest “translating the player definitions into at least one codified
script,” as recited in claim 1 and commensurate language recited in claims
10 and 18. (App. Br. 7 et seq.) We agree for the reasons discussed infra.
The Examiner took Official Notice that it is well-known in the art of
“programming, and specifically in the art of programming for automated
economic games simulation, to use a scripting language to define and
execute the simulation.” (Ans. 8.) The Examiner submitted Jepsen (Tom
Jepsen, How Programming Languages Evolve, IT Pro, 68-77 (November/
December 1999)) as evidence for the Official Notice taken. (Id.)
We agree with Appellant that the cited portions of Jepsen are merely a
general discussion of scripting languages and do not teach or suggest
translating anything into a codified scripting language. (App. Br. 8.) We do
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not find, nor has the Examiner established, that the remaining cited
references cure this deficiency. As mentioned above, independent claims 10
and 18 recite commensurate language.
Based on this record, we conclude that Appellant has shown the
Examiner erred in finding that the cited combination of references would
have taught or suggested “translating the player definitions into at least one
codified script,” as recited in claims 1, 10, and 18. Accordingly, we reverse
the Examiner’s § 103 rejection of claims 1-23.

CONCLUSION OF LAW
Appellant has not shown that the Examiner erred in rejecting claims
1-23 under 35 U.S.C. § 101.
Appellant has shown that the Examiner erred in rejecting claims 10-17
and 22 under 35 U.S.C. § 112, second paragraph.
Appellant has shown that the Examiner erred in rejecting claims 1-23
under 35 U.S.C. § 103(a).

DECISION
We affirm the Examiner’s rejections of claims 1-23 under 35 U.S.C.
§ 101.
We reverse the Examiner’s rejection of claims 10-17 and 22 under 35
U.S.C. § 112, second paragraph.
We reverse the Examiner’s rejection of claims 1-23 under 35 U.S.C.
§ 103(a).
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Because we have affirmed at least one ground of rejection with
respect to each claim on appeal, the Examiner’s decision is affirmed. See 37
C.F.R. § 41.50(a)(1).
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED

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