Ex Parte LI

Board of Patent Appeals and Interferences

Jun 11, 2012

11945650 (B.P.A.I. Jun. 11, 2012)

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.
11/945,650 11/27/2007 Jing Li 090738-0106 7760
23524 7590 06/11/2012
FOLEY & LARDNER LLP
150 EAST GILMAN STREET
P.O. BOX 1497
MADISON, WI 53701-1497
EXAMINER
NGUYEN, CHUONG P
ART UNIT PAPER NUMBER
3665
MAIL DATE DELIVERY MODE
06/11/2012 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte JING LI
____________
Appeal 2010-001245
Application 11/945,650
Technology Center 3600
____________

Before KALYAN K. DESHPANDE, DAVID M. KOHUT, and
MICHAEL R. ZECHER, Administrative Patent Judges.

ZECHER, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2010-001245
Application 11/945,650

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I. STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner‟s
Final Rejection of claims 1-18. App. Br. 2;
1
Reply Br. 2. We have
jurisdiction under 35 U.S.C. § 6(b).
We reverse and enter a new ground of rejection.
Appellant’s Invention
Appellant invented an apparatus, computer-readable medium, and
method for allocating traffic routes based on multiple tiers of user
classification. Spec. ¶ [0002].
Illustrative Claim
1. A device for assigning routes for a plurality of
users allocated to different classes, the system comprising:
a computer-readable medium having computer-readable
instructions stored therein, the instructions comprising
identifying a first group of users based on a user
classification, wherein each user of the first group of
users has a first user classification;
identifying a second group of users based on the
user classification, wherein each user of the second group
of users has a second user classification, wherein the first
user classification is different from the second user
classification;
calculating a disutility value for each user of the
first group of users and for each user of the second group
of users using a travel disutility function based on an
origin and a destination of each user of the first group of
users and each user of the second group of users;
executing a bi-level problem solver to optimize the
disutility value based on the user classification; and

1
All references to the Appeal Brief are to the Appeal Brief filed April 20,
2009, which replaced the Appeal Brief filed February 11, 2009.
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Application 11/945,650

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recommending a route to each user of the first
group of users and to each user of the second group of
users based on the bi-level problem execution;
a communication interface, the communication interface
sending the recommended route to each user of the first group
of users and to each user of the second group of users; and
a processor, the processor coupled to the communication
interface and to the computer-readable medium and configured
to execute the instructions.

Prior Art Relied Upon
Slivka US 2003/0225600 A1 Dec. 4, 2003

Applicant‟s Admitted Prior Art (“AAPA”)—Spec. ¶¶ [0023-0026].

Rejections on Appeal
Claims 1-3, 5, 7-9, 11, 13-15, and 17 stand rejected under 35 U.S.C.
§ 102(b) as being anticipated by Slivka. Ans. 3-6.
Claims 4, 6, 10, 12, 16, and 18 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over the combination of Slivka and AAPA.
Ans. 6-7.
Examiner’s Findings and Conclusions
The Examiner finds that Slivka describes “executing a bi-level
problem solver to optimize the disutility value based on the user
classification[,]” as recited in independent claims 1, 7, and 13. See Ans. 4
and 8-9. In particular, the Examiner finds that Slivka—namely paragraphs
[0022-0024] and [0037-0038]—discloses how to optimize the disutility
value (i.e., passenger name record (“PNR”) value) using both a rules engine
and a process performed by the passenger flow model (“PFM”) software.
Ans. 8.
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Appellant’s Contentions
Appellant contends that Slivka fails to describe “„executing a bi-level
problem solver to optimize‟ the PNR value „based on the user
classification,‟” as recited in independent claims 1, 7, and 13. App. Br. 16;
Reply Br. 16 (emphasis in original). At best, Appellant argues that Slivka
discloses calculating a PNR value. Reply Br. 17. Appellant alleges that
Slivka fails to describe any optimization process associated with the
calculation of the PNR value, let alone the use of a “bi-level problem solver”
in optimizing the PNR value. See App. Br. 17; Reply Br. 17-18.

II. ISSUE
The dispositive issue before us is whether the Examiner erred in
finding that Slivka describes “executing a bi-level problem solver to
optimize the disutility value based on the user classification[,]” as recited in
independent claims 1, 7, and 13?

III. ANALYSIS
35 U.S.C. § 102(b) Rejection—Slivka
Claims 1, 7, and 13
Based on the record before us, we find error in the Examiner‟s
anticipation rejection of independent claims 1, 7, and 13, which recite, inter
alia, “executing a bi-level problem solver to optimize the disutility value
based on the user classification[.]”
We begin our analysis by first considering the scope and meaning of
the claim term “a bi-level problem solver,” which must be given its broadest
reasonable interpretation consistent with Appellant‟s disclosure. See In re
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Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997); see also In re Zletz, 893 F.2d
319, 321 (Fed. Cir. 1989) (stating that during examination “claims must be
interpreted as broadly as their terms reasonably allow”). Appellant‟s
Specification discloses that “[a] bi-level dynamic travel decision making
problem finds the optimal travel time and dynamic routing solutions for
traffic management system 100.” Spec. ¶ [0023]. Moreover, Appellant‟s
Specification discloses that “[t]raffic assignment calculator 128 solves
equations (1)-(7) of the bi-level problem and computes the best time-
dependent routes for each class of user at each time interval.” Spec.
¶ [0034]. We note that while Appellant‟s Specification does not provide an
explicit definition for “a bi-level problem solver,” we review the disclosure
for the context of this term in order to properly construe its meaning.
Upon reviewing Appellant‟s Specification for context, we conclude
that the claim term “a bi-level problem solver” may be broadly, but
reasonably construed as a set of equations. With this claim construction in
mind, we turn to the merits of the Examiner‟s anticipation rejection.
We agree with Appellant that Slivka, at best, discloses calculating a
PNR value. Reply Br. 17. In particular, we find that Slivka‟s computer
environment includes both a rules engine and PFM software that work in
conjunction to calculate PNR values based on one or more rules (e.g.,
frequent flyer status, class of service, passenger prioritization, etc.)
associated with disrupted passengers. See ¶¶ [0022-0024] and [0037-0038].
However, we find that Slivka is silent with respect to executing a set of
equations to optimize the process associated with calculating the PNR value
based on the corresponding passenger classification (e.g., first class, coach,
frequent flyer status, etc.). Moreover, while an ordinarily skilled artisan
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would have appreciated that optimizing the process associated with
calculating Slivka‟s PNR value involves only routine skill in the art, see In
re Harza, 214 F.2d 669 (CCPA 1960), such a finding is insufficient for an
anticipation rejection. Therefore, we find that the Examiner improperly
relied upon Slivka to describe the disputed claim limitation.
Since Appellant has shown at least one error in the rejection of
independent claims 1, 7, and 13, we need not reach the merits of Appellant‟s
other arguments. It follows that the Examiner has erred in finding that Slivka
anticipates independent claims 1, 7, and 13.
Claims 2, 3, 5, 8, 9, 11, 14, 15, and 17
Since dependent claims 2, 3, 5, 8, 9, 11, 14, 15, and 17 incorporate by
reference the same disputed claim limitation as their respective independent
claims 1, 7, and 13, we find that the Examiner erred in rejecting these claims
for the same reasons set forth in our discussion of independent claims 1, 7,
and 13.
35 U.S.C. § 103(a) Rejection—Combination of Slivka and AAPA
Claims 4, 6, 10, 12, 16, and 18
We find that AAPA does not remedy the above-noted deficiency in
the Examiner‟s anticipation rejection of independent claims 1, 7, and 13. As
a result, we find that the Examiner has erred in concluding that the
combination of Slivka and AAPA renders dependent claims 4, 6, 10, 12, 16,
and 18 unpatentable for the same reasons set forth in our discussion of
independent claims 1, 7, and 13.

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IV. NEW GROUND OF REJECTION
We enter the following new ground of rejection pursuant to our
authority under 37 C.F.R. § 41.50(b).
35 U.S.C. § 101 Rejection
Claim 7
Independent claim 7 recites, in pertinent part, “[a] computer readable-
medium having computer-readable instructions therein that, upon execution
by a processor, cause the processor to assign routes for a plurality of users
allocated to different classes. . . .”
According to Appellant‟s Specification, a computer readable medium
may be embodied in a carrier wave, such as those used in transmitting and
receiving electronic mail or in accessing a network (e.g., Internet or a local
area network). ¶ [0077]. Consequently, we find that the claimed “computer
readable-medium” can be broadly, but reasonably construed to encompass
no more than a transitory, propagating signal. Further, since the claim is not
limited to a non-transitory, tangible medium within one of the four statutory
classes of 35 U.S.C. § 101,
2
we find that independent claim 7 is directed to
non-statutory subject matter.

2
“A transitory, propagating signal . . . is not a „process, machine,
manufacture, or composition of matter‟ [under 35 U.S.C. § 101]” and,
therefore, does not constitute patentable subject matter under § 101. In re
Nuijten, 500 F.3d 1346, 1357 (Fed. Cir. 2007). Claims that are so broad that
they read on nonstatutory as well as statutory subject matter are
unpatentable. Cf. In re Lintner, 458 F.2d 1013, 1015 (CCPA 1972) (citation
omitted) (“Claims which are broad enough to read on obvious subject matter
are unpatentable even though they also read on nonobvious subject
matter.”). “A claim drawn to such a computer readable medium that covers
both transitory and non-transitory embodiments may be amended to narrow
(Footnote continued on next page.)
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Claims 8-12
For the same reasons set forth supra, we find that dependent claims 8-
12 are also directed to non-statutory subject matter.

V. CONCLUSIONS
1. The Examiner has erred in rejecting claims 1-3, 5, 7-9, 11, 13-
15, and 17 as being anticipated under 35 U.S.C. § 102(b).
2. The Examiner has erred in rejecting claims 4, 6, 10, 12, 16, and
18 as being unpatentable under 35 U.S.C. § 103(a).
3. We have entered a new ground of rejection against claims 7-12
as being directed to non-statutory subject matter under 35 U.S.C. § 101.

VI. DECISION
We reverse the Examiner‟s decision to reject claims 1-18. However,
we newly reject claims 7-12 as being directed to non-statutory subject matter
under 35 U.S.C. § 101.
37 C.F.R. § 41.50(b) provides that, “[a] new ground of rejection
pursuant to this paragraph shall not be considered final for judicial review.”
37 C.F.R. § 41.50(b) also provides that the Appellant, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new grounds of rejection to

the claim to cover only statutory embodiments to avoid a rejection under 35
U.S.C. § 101 by adding the limitation „non-transitory‟ to the claim.” David
J. Kappos, Subject Matter Eligibility of Computer Readable Media, 1351
OFF. GAZ. PAT. OFFICE 212 (Feb. 23, 2010).
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avoid termination of proceedings (37 C.F.R. § 1.197 (b)) as to the rejected
claims:
(1) Reopen prosecution. Submit an appropriate amendment of the
claims so rejected or new evidence relating to the claims so rejected,
or both, and have the matter reconsidered by the examiner, in which
event the proceeding will be remanded to the examiner. . . .
(2) Request rehearing. Request that the proceeding be reheard under
37 C.F.R. § 41.52 by the Board upon the same record. . . .

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).

REVERSED
37 C.F.R. § 41.50(b)

ELD