Ex Parte Taylor et alDownload PDFPatent Trial and Appeal BoardAug 27, 201311494292 (P.T.A.B. Aug. 27, 2013) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________________ Ex parte RICHARD TAYLOR and CHRIS TOFTS 1 ____________________ Appeal 2011-002998 Application 11/494,292 Technology Center 2100 ____________________ Before MARC S. HOFF, CARLA M. KRIVAK, and LARRY J. HUME, Administrative Patent Judges. HUME, Administrative Patent Judge. DECISION ON APPEAL This is a decision on appeal under 35 U.S.C. § 134(a) of the Final Rejection of claims 1, 2, and 8-16. The Examiner objects to claims 3-7, which are otherwise allowable if rewritten to overcome the objection. App. Br. 3. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE the rejection of claims 1, 2, and 8-16, and enter a new ground of rejection for claims 13 and 14 pursuant to our authority under 37 C.F.R. § 41.50(b). 1 The Real Party in Interest is Hewlett-Packard Development Company, LP. App. Br. 3. Appeal 2011-002998 Application 11/494,292 2 STATEMENT OF THE CASE 2 The Invention Appellants’ invention relates to analysis methods and apparatus for a real world model, and a computer program product that implements the model. Spec. 1:4-5 (“Field of Invention”). Exemplary Claim Claim 1 is an exemplary claim representing an aspect of the invention which is reproduced below (emphasis added to disputed limitation): 1. An analysis method, comprising: accepting an input model of a real-world process defining a relationship between a plurality of parameters, including n input parameters which may be varied and at least one output parameter representing an aspect of an output of the real-world process, where n is a positive integer; defining a two-dimensional (2D) plane that is divided into a first plurality of regions corresponding to a subset of possible values of a first one of the input parameters, wherein each of the regions in the first plurality is further divided into a second plurality of regions corresponding to a subset of possible values for a second one of the input parameters; estimating a sensitivity of the at least one output parameter to the input parameters in a plurality of the regions locating at least one region where the at least one output parameter is substantially insensitive to variations in the input parameters; and 2 Our decision refers to Appellants’ Appeal Brief (“App. Br.,” filed June 28, 2010); Reply Brief (“Reply Br.,” filed Nov. 17, 2010); Examiner’s Answer (“Ans.,” mailed Sep. 17, 2010); Final Office Action (“FOA,” mailed Mar. 8, 2010); and the original Specification (“Spec.,” filed Jul. 26, 2006). Appeal 2011-002998 Application 11/494,292 3 wherein the accepting, defining, estimating, and locating are performed by at least one computer. Prior Art The Examiner relies upon the following non-patent literature prior art in rejecting the claims on appeal: Jungyill Choi, et al., “Use of Multi-parameter sensitivity analysis to determine relative importance of factors influencing natural attenuation of mining contaminants,” Water Resources Res. pp. 1-7 (2000). (Hereinafter “Choi”) Christopher A. Brown, et al., “Scale-sensitivity, Fractal Analysis and Simulations,” Int. J. Mach. Tools Manufact., vol. 38, no. 5-6, pp. 633-637 (1998). (Hereinafter “Brown”) Sorel Bosan and Thomas R. Harris, “A Visualization-Based Analysis Method for Multiparameter Models of Capillary Tissue-Exchange,” Annals of Biomedical Engineering, vol. 24, pp. 124-138 (1996). (Hereinafter “Bosan”) Rudolf Vetschera and Heinz Walterscheid, “A process- oriented framework for the evaluation of managerial support systems,” ELSEVIER Information & Management 28 pp. 197-213 (1995). (Hereinafter “Vetschera”) Rejections on Appeal 3, 4 1. Claims 1 and 12 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Choi. Ans. 3. 3 We note the Examiner withdrew the § 112, second paragraph rejection of claims 1-16 (Ans. 3), and that claims 3-7 are objected to, but drawn to allowable subject matter, and are not part of this Appeal. Ans. 15. 4 We also note the Examiner clarified the bases for rejection of claims 1, 2, and 8-11 presented in the Final Rejection (FOA 3). Ans. 3-4. Appeal 2011-002998 Application 11/494,292 4 2. Claims 2 and 13-16 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over the combination of Choi and Brown. Ans. 4. 3. Claims 8-11 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over the combination of Choi in view of the taking of Official Notice by the Examiner. Id. ISSUE Appellants argue (App. Br. 4-7; Reply Br. 2-5) the Examiner’s unpatentability rejection of claim 1 under 35 U.S.C. § 103(a) over Choi is in error. These contentions present us with the following issue: Did the Examiner err in finding Appellants’ claimed method is rendered unpatentable by Choi, particularly does Choi teach or suggest all the limitations of claim 1, including the step of “defining a two-dimensional (2D) plane that is divided into a first plurality of regions . . . wherein each of the regions in the first plurality is further divided into a second plurality of regions corresponding to a subset of possible values for a second one of the input parameters,” as recited in claim 1? ANALYSIS We agree with Appellants’ conclusions with respect to claims 1, 2, and 8-16, and we disagree with (1) the findings and reasons set forth by the Examiner in the action from which this appeal is taken and (2) the reasons and rebuttals set forth by the Examiner in the Examiner’s Answer in response to Appellant’s Arguments. We highlight and address specific findings and arguments regarding claim 1 for emphasis as follows. Appeal 2011-002998 Application 11/494,292 5 Appellants contend Choi does not teach or suggest “defining a 2D plane divided into regions in the manner recited in claim 1, or estimating the sensitivity of an output parameter in a plurality of such regions.” App. Br. 7; see also Reply Br. 2. Instead, Appellants contend the Examiner’s citation to Choi merely shows a generalized six-step procedure that statistically evaluates parametric sensitivity, and the cited portion of Choi does not disclose the specific limitations in dispute. App. Br. 7-8 (citing Choi p. 2, col. 2; and Figs. 2 and 3). Appellants also point out the “cited portion of Choi simply illustrates the basic concept of multi-parametric sensitivity analysis using two parameters . . . [and t]here is no disclosure in this Figure that teaches or suggests . . .[the specific ‘defining’ step], as recited in claim 1.” App. Br. 9. Appellants conclude by asserting Choi’s Figure 3 “corresponds to the 6-step procedure disclosed in Choi, which was addressed above . . . [and that] this broad disclosure regarding calculating values and making comparisons with distributions does not teach or suggest the specific recitations of independent claim 1.” App. Br. 10. In the Answer, the Examiner asserts that “[c]laim 1 is drawn to basic sensitivity analysis for a multi-parameter process,” and that “Appellants appear to only argue the ‘defining’ limitation.” Ans. 15 (emphasis in original). The Examiner further asserts that “Appellants appear to argue for the features of their fig. 2 . . . [and that c]laim 1 does not require (as later explained) the features of Appellant’s fig. 2.” Ans. 16. In further response to Appellants’ contentions, the Examiner states that “Choi does not use the same language (thus, the 103) . . . [as in claim 1]” (Ans. 17), so that “[i]n other words, in a multi-parameter sensitivity Appeal 2011-002998 Application 11/494,292 6 analysis, the ‘nesting’ of parameters naturally follows from consideration of the problem. Consider fig. 2 and note the grid formed by ‘P1’, ‘P2’. The particular nesting is arbitrary.” Ans. 18. Choi’s Figure 2 is reproduced below: Figure 2. Basic Concept of multi-parametric sensitivity analysis (MPSA) using a hypothetical model with only two parameters. In countering Appellants’ argument regarding the deficiencies of Choi, the Examiner asserts: Appeal 2011-002998 Application 11/494,292 7 The rectangle [of Choi Fig. 2] is a subset of the plane to which it belongs. Consider parameter 1 (P1) first: P1 is divided into intervals (columns - regions - for each plane corresponding to values of R). Note the plane is not required to be parallel to the grid (the defined plane in the figure is angled up in the direction of larger values of P1. The set of columns constitutes the total plurality of regions for P1. Three different planes (plurality of subsets of columns), each infinite in the “P2” direction, are created by the intersection of the cylindrical surface with the original infinite plane. Consider now parameter P2. A subset of the P2 columns is defined by the number of columns corresponding to the longer length of the solid drawn line in fig. 2, in the direction of the “P2” axis . . . [t]he intersection of the subset of P2 columns with the subset of P1 columns defines a finite 2D plane (of a family of such planes) - a checkerboard array of squares. Choi [thereby] discloses . . . [the defining step of Appellants’ claim 1]. Ans. 19-20. We disagree with the Examiner since there is no evidence in the record before us, and no teaching or suggestion in the cited prior art, that the “nesting” as characterized by the Examiner in claim 1 is “arbitrary.” We find while Choi’s Fig. 2 discloses “defining a two-dimensional (2D) plane that is divided into a first plurality of regions” (i.e., the grid of regions in the P1-P2 plane), Choi is silent on subdividing each of the first plurality of regions into “a second plurality of regions corresponding to a subset of possible values for a second one of the input parameters,” as recited in Appellants’ claim 1. We find no teaching or suggestion in Choi of further dividing each of the plural regions in the P1-P2 plane into a second plurality of regions. We therefore find there is no teaching or suggestion in the cited prior art, nor is there any evidence of record supporting the Examiner’s Appeal 2011-002998 Application 11/494,292 8 conclusion the clause in claim 1 of “wherein each of the regions in the first plurality is further divided into a second plurality of regions corresponding to a subset of possible values for a second one of the input parameters,” is merely arbitrary, and thus obvious over Choi. Accordingly, Appellants have provided sufficient evidence and/or argument to persuade us of at least one reversible error in the Examiner’s characterization of the cited art and related claim construction. Therefore, we cannot sustain the Examiner’s obviousness rejection of independent claim 1. We find the rejection of claims 13 and 15 as being unpatentable under 35 U.S.C. § 103(a) over the combination of Choi and Brown turns on the same dispositive issue presented with respect to claim 1. We find the cited prior art does not teach or suggest the “defining” step in claim 13, or “a controller arranged to . . . define a two-dimensional (2D) plane that is divided into a first plurality of regions . . . wherein each of the regions in the first plurality is further divided into a second plurality of regions corresponding to a subset of possible values for a second one of the input parameters,” as recited in apparatus claim 15. Therefore, we also cannot sustain the Examiner’s rejection of claims 13 and 15 under 35 U.S.C. § 103(a), or the rejection of claims 2, 8-12, 14, and 15, variously depending from claims 1, 13, and 15. Appeal 2011-002998 Application 11/494,292 9 NEW GROUND OF REJECTION 35 U.S.C. § 101–Non-Statutory Subject Matter: Claims 13 and 14 We enter a new ground of rejection for claims 13 and 14 under 35 U.S.C. § 101 as being directed to non-statutory subject matter. Claim 13 recites, in pertinent part, “[a] computer program product, arranged to interact with a computer, the computer program product configured to perform a method when executed by the computer, the method comprising . . . .” We interpret the recitation in independent claim 13 of “computer program product” includes computer code. Giving claim 13 the broadest reasonable construction, we find claim 13 encompasses the computer program product, i.e., computer code, being embodied on a carrier wave, since claim 13 recites the open transitional phrase “comprising,” and does not preclude the computer program product from being embodied in a carrier wave. 5 A signal (i.e., a computer program product embodied in a carrier wave) does not fit within at least one of the four statutory subject matter categories under 35 U.S.C. § 101. In re Nuijten, 500 F.3d 1346, 1357 (Fed. Cir. 2007), and Subject Matter Eligibility of Computer Readable Media, 1351 Off. Gaz. Pat. Office 212 (Feb. 23, 2010). 5 By way of defining the recited “computer program product,” Appellants’ Specification merely states “[i]t will be appreciated by those skilled in the art that these pieces of code can be combined into a single program or suite of programs, and the computer 230 may be a single computer, a networked computer, or any processor or group of processors, with the code, memory and processing distributed or concentrated in a number of ways.” Spec. 10:29-32. Appeal 2011-002998 Application 11/494,292 10 Since claim 13, as construed above, encompasses a propagating, transitory signal, we find claim 13 is directed to non-statutory subject matter. Dependent claim 14 is also directed toward non-statutory subject matter for the same reasons discussed supra. CONCLUSIONS (1) The Examiner erred with respect to the unpatentability rejections of claims 1, 2, and 8-16 under 35 U.S.C. § 103(a) over the cited prior art, and the rejections are not sustained. (2) Claims 13 and 14 are newly rejected under 35 U.S.C. § 101 as being directed to non-statutory subject matter. DECISION The decision of the Examiner to reject claims 1, 2, and 8-16 is reversed. This decision contains a new ground of rejection of claims 13 and 14 pursuant to 37 C.F.R. § 41.50(b). 37 C.F.R. § 41.50(b) provides that “[a] new ground of rejection . . . shall not be considered final for judicial review.” 37 C.F.R. § 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: Appeal 2011-002998 Application 11/494,292 11 (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. . . . 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 Copy with citationCopy as parenthetical citation