Ex Parte ChenDownload PDFBoard of Patent Appeals and InterferencesJul 31, 201209944969 (B.P.A.I. Jul. 31, 2012) Copy Citation 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.) Appeal 2010-002228 Application 09/944,969 2 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. Appeal 2010-002228 Application 09/944,969 3 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? Appeal 2010-002228 Application 09/944,969 4 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 Appeal 2010-002228 Application 09/944,969 5 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. Appeal 2010-002228 Application 09/944,969 6 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. Appeal 2010-002228 Application 09/944,969 7 § 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 Appeal 2010-002228 Application 09/944,969 8 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). Appeal 2010-002228 Application 09/944,969 9 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 peb Copy with citationCopy as parenthetical citation