Ex Parte Sankaran et al

Patent Trial and Appeal Board

Nov 26, 2012

09804851 (P.T.A.B. Nov. 26, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte SARAT C. SANKARAN, VINEET JAIN, and
NANCY B. CAPELLI
____________

Appeal 2010-009615
Application 09/804,851
Technology Center 3600
____________

Before HUBERT C. LORIN, JOSEPH A. FISCHETTI, and BIBHU R.
MOHANTY, Administrative Patent Judges.

MOHANTY, Administrative Patent Judge.

DECISION ON APPEAL
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STATEMENT OF THE CASE
The Appellants seek our review under 35 U.S.C. § 134 (2002) of the
final rejection of claims 35 and 38-41 which are all the claims pending in the
application. We have jurisdiction under 35 U.S.C. § 6(b) (2002).

SUMMARY OF THE DECISION
We AFFIRM-IN-PART and enter NEW GROUNDS OF
REJECTION under 37 C.F.R. § 41.50(b).

THE INVENTION
The Appellants’ claimed invention is directed to a method and
apparatus for financial planning and control (Spec. 4). Claim 35, reproduced
below, is representative of the subject matter on appeal.

35. A computer-implemented method for controlling spending in a
business that includes a plurality of departments, the method
comprising the computer-implemented steps of:
receiving first data input that specifies a spending capacity for a
department from the plurality of departments;
in response to receiving the first data input, creating and storing
first data in a public area, wherein the first data defines the spending
capacity for the department, and wherein the public
area is accessible by every user in the plurality of departments;
receiving second data input that specifies one or more planned
expenses for the department;
in response to receiving the second data input, creating and
storing second data in a private area, wherein the second data defines
the one or more planned expenses based on the second data input, and
wherein the private area is only accessible by users in the department,
and wherein the private area is separate from the public area;
automatically determining whether the second data is greater
than the first data;
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when the second data is greater than the first data,
rejecting the planned expenses related to the second data: and
transmitting a notification that the planned expenses have been
rejected; and
when the second data is not greater than the first data, storing the
second data in the public area;
receiving third data input that specifies a new spending capacity
for the department from the plurality of departments;
in response to receiving the third data input, creating and
storing third data in the public area, wherein the third data defines the
new spending capacity tor the department;
receiving fourth data input that specifies one or more planned
expenses for the department:
in response to receiving the fourth data input, creating and
storing fourth data in the private area, wherein the fourth data defines
the one or more planned expenses based on the fourth data input;
automatically determining whether the fourth data is greater
than the third data;
when the fourth data is greater than the third data,
rejecting the planned expenses related to the fourth data;
and
transmitting a notification that the new planned expenses
have been rejected: and
when the fourth data is not greater than the third data, replacing
the second data with the fourth data in the public area,
wherein each private area is comprised of one or more
computer memory locations assigned to each respective department,
and, wherein the public area is comprised of one or more computer
memory locations assigned to the plurality of departments.

THE REJECTIONS
The Examiner relies upon the following as evidence in support of the
rejections:
Lautzenheiser US 6,351,734 B1 Feb. 26, 2002
Their US 7,130,822 B1 Oct. 31, 2006

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The following rejections are before us for review:
1. Claims 35 and 39 are rejected under 35 U.S.C. § 101.
2. Claim 39 is rejected under 35 U.S.C. § 112, second paragraph.
3. Claims 35 and 38-41 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Lautzenheiser and Their.

FINDINGS OF FACT
We find that the findings of fact used in the Analysis section below
are supported by at least a preponderance of the evidence1.

ANALYSIS
Rejections under 35 U.S.C. § 101
The Appellants argue that the rejection of claims 35 and 39 under 35
U.S.C. § 101 is improper (Br. 19-20). In contrast, the Examiner has
determined that the claims are properly rejected (Ans. 4-5, 9-10).
We agree with the Appellants. Claim 35 requires that first data is
stored in a “public area” and that this area “is comprised of one or more
computer memory locations.” The claim also requires a “private area” only
accessible by users in the department which is also comprised of “one or
more computer memory locations.” The claim also includes a method step
for “transmitting” a notification. These steps of the claim are not directed to
an abstract idea and taking the whole claim into account they are not
insignificant extra solution activity as well. For these reasons this rejection

1 See Ethicon, Inc. v. Quigg, 849 F.2d 1422, 1427 (Fed. Cir. 1988)
(explaining the general evidentiary standard for proceedings before the
Patent Office).
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of claim 35 is not sustained. Claim 39 contains similar language and the
rejection of this claim is not sustained for these same reasons.

Rejection under 35 U.S.C. § 112, second paragraph
The Examiner has determined that the claim is properly rejected
because it is unclear whether “hardware” or “software” is being claimed
(Ans. 3-4, 10). In contrast, the Appellants argue that the rejection of claim
39 under 35 U.S.C. § 112 is improper (Br. 20-21) because for example the
“means for creating and storing” could be carried out by either hardware,
software, or combinations thereof (Br. 21). We agree with the Examiner,
though for a different reasoning as outlined below.

Principles of Law
Means-plus-function claim language must be construed in accordance
with 35 U.S.C. § 112, sixth paragraph, by “look[ing] to the specification and
interpret[ing] that language in light of the corresponding structure, material,
or acts described therein, and equivalents thereof, to the extent that the
specification provides such disclosure.” In re Donaldson Co., 16 F.3d 1189,
1193 (Fed. Cir. 1994) (en banc).
When no structure is described in the Specification to support a
means-plus-function limitation in a claim, the disclosure is inadequate to
explain to one of ordinary skill in the art what is meant by the claim
language. In such a situation, a means-plus-function claim would not be
amenable to construction and thus would fail to particularly point out and
distinctly claim the invention as required by the second paragraph of section
112.
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“[I]f one employs means-plus-function language in a claim, one
must set forth in the specification an adequate disclosure
showing what is meant by that language. If an applicant fails to
set forth an adequate disclosure, the applicant has in effect
failed to particularly point out and distinctly claim the invention
as required by the second paragraph of section 112.” In re
Donaldson Co., 16 F.3d 1189, 1195 (Fed.Cir.1994) (en banc).
…. This duty to link or associate structure to function is the
quid pro quo for the convenience of employing § 112, ¶ 6. See
O.I. Corp. v. Tekmar Co., 115 F.3d 1576, 1583 (Fed. Cir.
1997). “Fulfillment of the § 112, ¶ 6 trade-off cannot be
satisfied when there is a total omission of structure.”
Atmel[Corp. v. Info. Storage Devices, Inc., 198 F.3d 1374, 1382
(Fed. Cir. 1999)]. While corresponding structure need not
include all things necessary to enable the claimed invention to
work, it must include all structure that actually performs the
recited function. See Cardiac Pacemakers, Inc. v. St. Jude
Med., Inc., 296 F.3d 1106, 1119 (Fed.Cir.2002).
Default Proof Credit Card Sys. v. Home Depot U.S.A., Inc., 412 F.3d
1291, 1298 (Fed. Cir. 2005).
When the means-plus-function limitation in a claim is a computer-
enabled means-plus-function limitation, one must set forth in the
specification sufficient description of an algorithm associated with the
function recited in the claim in order to avoid a finding that an applicant has
failed to particularly point out and distinctly claim the invention as required
by the second paragraph of section 112.
It is certainly true that the sufficiency of the disclosure of
algorithmic structure must be judged in light of what one of
ordinary skill in the art would understand the disclosure to
impart. See, e.g., Intel Corp. v. VIA Techs., 319 F.3d 1357,
1367 (Fed. Cir. 2003) (knowledge of a person of ordinary skill
in the art can be used to make clear how to implement a
disclosed algorithm); Atmel Corp., 198 F.3d at 1379 (“[T]he
‘one skilled in the art’ analysis should apply in determining
whether sufficient structure has been disclosed to support a
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means-plus-function limitation.”). That principle, however, has
no application here, because in this case there was no algorithm
at all disclosed in the specification. The question thus is not
whether the algorithm that was disclosed was described with
sufficient specificity, but whether an algorithm was disclosed at
all.
Aristocrat Techs. Australia Pty. Ltd. v. Int’l Game Tech., 521 F.3d 1328,
1337 (Fed. Cir. 2008).
When there is insufficient description of an algorithm in the
Specification to support a computer-enabled means-plus-function limitation
in a claim, the disclosure will be considered inadequate to explain to one of
ordinary skill in the art what is meant by the claim language.
For computer-implemented means-plus-function claims where
the disclosed structure is a computer programmed to implement
an algorithm, “the disclosed structure is not the general purpose
computer, but rather the special purpose computer programmed
to perform the disclosed algorithm.” WMS Gaming, Inc. v. Int'l
Game Tech., 184 F.3d 1339, 1349 (Fed.Cir.1999). Thus the
patent must disclose, at least to the satisfaction of one of
ordinary skill in the art, enough of an algorithm to provide the
necessary structure under § 112, ¶ 6. This court permits a
patentee to express that algorithm in any understandable terms
including as a mathematical formula, in prose, see In re
Freeman, 573 F.2d 1237, 1245-46 (CCPA 1978), or as a flow
chart, or in any other manner that provides sufficient structure.
The district court correctly determined that the structure recited
in the ′505 specification does not even meet the minimal
disclosure necessary to make the claims definite. Simply
reciting “software” without providing some detail about the
means to accomplish the function is not enough. See Aristocrat
Techs. Austl. Pty v. Int'l Game Tech., 521 F.3d 1328,
(Fed.Cir.2008) (“For a patentee to claim a means for
performing a particular function and then to disclose only a
general purpose computer as the structure designed to perform
that function amounts to pure functional claiming. Because
general purpose computers can be programmed to perform very
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different tasks in very different ways, simply disclosing a
computer as the structure designated to perform a particular
function does not limit the scope of the claim to ‘the
corresponding structure, material, or acts' that perform the
function, as required by section 112 paragraph 6.”). This court
does not impose a lofty standard in its indefiniteness cases. See,
e.g., Med. Instrumentation & Diagnostics Corp. v. Elekta AB,
344 F.3d 1205, 1214 (Fed.Cir.2003). But in this case, the
claims are already quite vague. Without any corresponding
structure, one of skill simply cannot perceive the bounds of the
invention.
Finisar Corp. v. DirecTV Group, Inc., 523 F.3d 1323, 1340-41 (Fed. Cir.
2008).
When a specification discloses no algorithm corresponding to a
computer-enabled means-plus-function limitation in a claim, an applicant
has necessarily failed to particularly point out and distinctly claim the
invention as required by the second paragraph of section 112. See also
Aristocrat, 521 F.3d 1328, 1333 (quoting Harris Corp. v. Ericsson Inc., 417
F.3d 1241, 1253 (Fed. Cir. 2005) (“‘[t]he corresponding structure for a §
112 ¶ 6 claim for a computer-implemented function is the algorithm
disclosed in the specification.’ Harris 417 F.3d at 1249.”); Net MoneyIN,
Inc. v. Verisign, Inc. 545 F.3d 1359, 1367 (Fed. Cir. 2008) (“[A] means-
plus-function claim element for which the only disclosed structure is a
general purpose computer is invalid if the specification fails to disclose an
algorithm for performing the claimed function.”). See also Blackboard, Inc.
v. Desire2Learn Inc., 574 F.3d 1371 (Fed. Cir. 2009) (finding Blackboard’s
means-plus-function claims indefinite because the patent describes an
undefined component, i.e., a black box, that performs the recited function
but does not disclose how the component performs the function). See
further Ex parte Catlin, 90 USPQ2d 1603, 1605 (BPAI 2009) (precedential)
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(during prosecution, computer-enabled means-plus-function claims will be
held unpatentable under 35 U.S.C. § 112, second paragraph, as being
indefinite if a specification fails to disclose any algorithm corresponding to
the recited function in the claims).

Analysis for Rejection under 35 U.S.C. § 112, second paragraph
We issue a NEW GROUNDS OF REJECTION of claim 39 under 35
U.S.C. § 112, second paragraph, as being indefinite.
We count several limitations in claim 39 which are in means-plus-
function format. We will focus on the “means for creating and
storing…spending capacity data in a public area” limitation. But the
analysis to follow applies equally as well to other means-plus-function
limitations in claim 39.
The limitation “means for creating and storing…spending capacity
data in a public area” includes the term “means.” A claim limitation that
includes the term “means” is presumed to be intended to invoke means-plus-
function treatment, i.e., treatment under 35 U.S.C. §112, sixth paragraph.
Rodime PLC v. Seagate Tech., Inc., 174 F.3d 1294, 1302 (Fed. Cir. 1999)
(“presumed an applicant advisedly used the word “means” to invoke the
statutory mandates for means-plus-function clauses.”).
Construing means-plus-function claim language in accordance with
35 U.S.C. § 112, sixth paragraph, is a two-step process.
The first step in construing a means-plus-function claim
limitation is to define the particular function of the claim
limitation. Budde v. Harley-Davidson, Inc., 250 F.3d 1369,
1376 (Fed.Cir.2001). “The court must construe the function of
a means-plus-function limitation to include the limitations
contained in the claim language, and only those limitations.”
Cardiac Pacemakers, Inc. v. St. Jude Med., Inc., 296 F.3d 1106,
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1113 (Fed.Cir.2002). Thus, according to the language of claim
11, the function of the “horizontal drive means” is “rotating
said lamp unit in a horizontal direction.” Ordinary principles of
claim construction govern interpretation of this claim language,
see id., and, for all the reasons discussed in the preceding two
sections, we construe this function according to its ordinary
meaning as not requiring rotation through 360°.
The next step in construing a means-plus-function claim
limitation is to look to the specification and identify the
corresponding structure for that function. “Under this second
step, ‘structure disclosed in the specification is “corresponding”
structure only if the specification or prosecution history clearly
links or associates that structure to the function recited in the
claim.’” Med. Instrumentation & Diagnostics Corp. v. Elekta
AB, 344 F.3d 1205, 1210 (Fed.Cir.2003) (quoting B. Braun
Med. Inc. v. Abbott Labs., 124 F.3d 1419, 1424 (Fed.Cir.1997)).
Golight, Inc. v. Wal-Mart Stores Inc., 355 F.3d 1327, 1333-34 (Fed. Cir.
2004).
Step 1- The first step in construing a means-plus-function claim
limitation is to define the particular function in the means-plus-function
limitation.
The particular function of the means-plus-function claim limitation at
issue is “for creating and storing…spending capacity data in a public area”.
Further, given that the claim as a whole is directed to a “computer-
automated apparatus” which we have construed as reasonably broadly
involving a computer, one of ordinary skill in the art would construe the
claim limitation “means for creating and storing…spending capacity data in
a public area” to refer to a computer-enabled means-plus-function limitation.
Step 2- The next step in construing a means-plus-function claim
limitation is to look to the Specification and identify the corresponding
structure for that function. Given that the claim limitation “means for
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creating and storing…spending capacity data in a public area” is a computer-
enabled means-plus-function limitation, this requires looking to the
Specification and identifying the algorithm corresponding to the function
“creating and storing…spending capacity data in a public area”.
In that regard, we note that in the Summary of Claimed Subject
Matter (App. Br. 10) the Appellants have attempted to show where in the
Specification, by page and line number, there is disclosed structure, material,
or acts corresponding to each claimed function as required by 37 C.F.R.
§ 41.37(c)(1)(v) (2007). With regard to the claim 39 means-plus-function
limitation at issue, the Appellants attempt to show that the disclosed
structure is shown at page 9:10-12 and Figure 8 at 3. We find no algorithm
to disclose “means for creating and storing…spending capacity data in a
public area” at page 9:10-12 and Figure 8 at 3.
The Specification therefore fails to disclose an algorithm
corresponding to the recited function at issue in claim 39 such that one of
ordinary skill in the art could determine the scope of claim 39. Accordingly,
we reject claim 39 under 35 U.S.C. § 112, second paragraph, as being
indefinite.
As our rationale for rejecting this claim differs from the Examiner’s
we denominate this rejection as a NEW GROUNDS OF REJECTION under
37 C.F.R. § 41.50(b).

Rejections under 35 U.S.C. § 103(a)
The Appellants argue that the rejection of claim 35 is improper
because the prior art does not disclose the claim limitation “wherein the
private area is only accessible by users in the department” (Br. 21-23). In
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contrast, the Examiner has determined that the cited claim limitation is
found in Their at col. 6:41-47 (Ans. 7, 11).
We agree with the Appellants. Their at Col. 6:45-47 states that
“[b]ecause Guy is a high level executive defined as a reviewer for all five
regions, he can view the entire hierarchy.” Here, it is clear that Guy can
view the hierarchy. Guy however is defined as being a high level executive
such as the CFO and owner (Their at col. 5: 20-28, col. 6:15-20). This status
of Guy is further shown in Figure 4 of the Their reference. Thus, Guy is not
considered to be a member of that department, but rather a high-level
executive that can view the hierarchy. As Guy is not considered a member
of the department, the rejection of record for claim 35 is not sustained.
Claims 38, 40 and 41 contain similar language and the rejection of these
claims is not sustained for these same reasons.
The rejection of claim 39 under 35 U.S.C. § 112, second paragraph
has been affirmed under a new grounds of rejection (see above). The
rejection of claim 39 under 35 U.S.C. § 103(a) falls pro forma because it is
necessarily based on a speculative assumption as to the scope of these
claims. See In re Steele, 305 F.2d 859, 862-63 (CCPA 1962).

CONCLUSIONS OF LAW
We conclude that Appellants have shown that the Examiner erred in
rejecting claims 35 and 39 under 35 U.S.C. § 101.
We conclude that Appellants have not shown that the Examiner erred
in rejecting claim 39 under 35 U.S.C. § 112, second paragraph.
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We conclude that Appellants have shown that the Examiner erred in
rejecting claim 35, 38, and 40-41 under 35 U.S.C. § 103(a) as unpatentable
over Lautzenheiser and Their.
We conclude that Appellants have shown that the Examiner erred in
rejecting claim 39 pro forma under 35 U.S.C. § 103(a) as unpatentable over
Lautzenheiser and Their as the rejection of the claim under 35 U.S.C. § 112,
second paragraph has been sustained.

DECISION
The Examiner’s rejection of claims 35, 38, and 40-41 is reversed. The
Examiner’s rejection of claim 39 is sustained.
This decision contains new grounds of rejection pursuant to 37 C.F.R.
§ 41.50(b). 37 C.F.R. § 41.50(b) provides “[a] new ground of rejection
pursuant to this paragraph shall not be considered final for judicial review.”
37 CFR § 41.50(b) also provides that the Appellants, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new ground of rejection to
avoid termination of the appeal 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 §
41.52 by the Board upon the same record ....

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No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. §
1.136(a)(1)(iv).

AFFIRMED-IN PART; 37 C.F.R. § 41.50(b)

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