10883872 (B.P.A.I. May. 31, 2012)

Ex Parte Zbiciak et al

Board of Patent Appeals and InterferencesMay 31, 2012

10883872 (B.P.A.I. May. 31, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES ____________________ Ex parte JOSEPH R. ZBICIAK and JAGADEESH SANKARAN ____________________ Appeal 2009-014324 Application 10/883,872 Technology Center 2600 ____________________ Before ALLEN R. MacDONALD, ROBERT E. NAPPI, and MICHAEL R. ZECHER, Administrative Patent Judges. MacDONALD, Administrative Patent Judge. DECISION ON APPEAL Appeal 2009-014324 Application 10/883,872 2 STATEMENT OF CASE Introduction Appellants appeal under 35 U.S.C. § 134 from a final rejection of claims 1, 2, 4, and 6. We have jurisdiction under 35 U.S.C. § 6(b). Exemplary Claim Exemplary claim 1 under appeal reads as follows: A method of converting image data in pixel form into embedded zero-tree wavelet encoded data comprising the steps of: converting image data in pixel form into wavelet coefficients; converting the wavelet coefficients into bit plane format packing a single bit plane for a block of wavelet coefficients into a bit plane data word of a predetermined length, said block of wavelet coefficients thereby formed into a plurality of bit plane data words; determining if wavelet coefficients are greater than a threshold by determining whether a bit corresponding to said wavelet coefficient of a bit plane data word corresponding to said threshold is "1" or "0" by operating upon a block of wavelet coefficients simultaneously by employing bit-wise logical operations upon a corresponding bit plane data word; encoding each wavelet coefficient dependent upon the results of said determination whether said wavelet coefficients is greater than said threshold. Appeal 2009-014324 Application 10/883,872 3 Rejections 1. In the Final Rejection dated June 13, 2008, the Examiner rejected claims 1, 2, 4, and 6 under 35 U.S.C. § 101 as being directed to non-statutory subject matter because the claims “merely manipulate data without ever producing a useful, concrete and tangible result.” (Final Rej. 3).1 2. In each of the three Examiner’s Answers dated March 3, 2009, April 1, 2009, and May 12, 2009, the Examiner rejected claims 1, 2, 4, and 6 under 35 U.S.C. § 101 as being directed to non-statutory subject matter because “the claims neither transform underlying subject matter nor positively tie to another statutory category that accomplishes the claimed method steps, and therefore do not qualify as a statutory process.” (Third Ans. 3). 2 3. The Examiner rejected claims 1, 2, 4, and 6 under 35 U.S.C. § 103(a) as being unpatentable over various combinations of Schumacher (US 7,333,663 B1), Yip (US 6,266,450 B1), Shapiro (US 5,412,741), and Shapiro (Embedded Image Coding Using Zerotrees of Wavelet Coefficients, IEEE Transactions on Signal Processing, Vol. 41, No. 12, 3445-3462 (Dec. 1993)). 1 The Examiner did not repeat this rejection in the Answer dated March 3, 2009. Instead the Examiner added a new § 101 rejection based on the so called “machine or transformation” analysis. 2 The second and third Answers correct minor errors in the first Answer. However, in each Answer the Examiner designated the rejection under § 101 as a new ground of rejection thus giving Appellants an opportunity to respond to this new rejection or reopen prosecution after each Answer. Appeal 2009-014324 Application 10/883,872 4 Appellants’ Contentions 35 U.S.C. § 101 Original Final Rejection 1. Appellants contend that the Examiner erred in rejecting claim 1 under 35 U.S.C. § 101 in the final rejection because claim 1 recites: (a) “conversion of one thing (image data in pixel form) into another, different thing (embedded zero-tree wavelet encoded data)” and (b) “a technique for changing the state of a thing into another state which has a utility in the new state.” (App. Br. 7). 2. Appellants contend that the Examiner erred in rejecting claim 1 under 35 U.S.C. § 101 in the final rejection because claim 1 of “[t]his application at page 25, line 29 to 32 states that wavelet schemes such as described and claimed in this application are useful in image data compression.” (App. Br. 7). 3. Appellants contend that the Examiner erred in rejecting claim 1 under 35 U.S.C. § 101 because: Claim 1 recites the determining step "operating upon a block of wavelet coefficients simultaneously by employing bit-wise logical operations upon a corresponding bit plane data word." Recitation of a physical thing, namely "a corresponding bit plane data word" provides a connection to a concrete, tangible object and negates preemption of a (sic) abstract idea, natural phenomenon or law of nature. (App. Br. 7-8). Appeal 2009-014324 Application 10/883,872 5 35 U.S.C. § 101 New Ground of Rejection 4. In response to the Examiner’s new ground of rejection in the first and second Examiner’s Answers, Appellants contend that the Examiner erred in rejecting claim 1 under 35 U.S.C. § 101 because: The EXAMINER'S ANSWER lists a supposed new ground of rejection at page 3, line 4 to page 4, line 2. This is incorrect. This is not a new ground of rejection. The FINAL REJECTION includes an identical rejection of claims 1, 2, 4 and 6 under 35 U.S.C. 101 as non-statutory subject matter at page 2, line 4 to page 3, line 11. The APPEAL BRIEF includes arguments against this rejection at page 7, line 2 to page 8, line 10. The EXAMINER'S ANSWER includes at page 11, lines 13 to 21 response to the Applicants' argument regarding this rejection in the APPEAL BRIEF. The Applicants' arguments are fully developed in the APPEAL BRIEF. The Examiner's arguments are fully developed in the FINAL REJECTION and the EXAMINER'S ANSWER. No further response by the Applicants is needed. (First Reply Br. 2). 5. In response to the Examiner’s new ground of rejection in the third Examiner’s Answer, Appellants again contend that the Examiner erred in rejecting claim 1 under 35 U.S.C. § 101 because: The EXAMINER'S ANSWER of May 12, 2009 lists a supposed new ground of rejection at page 3, lines 4 to 20 and at page 4, line 10 to page 5, line 9. This is incorrect. This is not a new ground of rejection. The FINAL REJECTION of June 13, 2008 includes an identical rejection of claims 1, 2, 4 and 6 under 35 U.S.C. 101 as non-statutory subject matter at page 2, line 4 to page 3, line 11. Appeal 2009-014324 Application 10/883,872 6 The APPEAL BRIEF filed November 12, 2008 includes arguments against this rejection at page 7, line 2 to page 8, line 10. The EXAMINER'S ANSWER of May 12, 2009 includes at page 12, lines 5 to 14 response to the Applicants' argument regarding this rejection in the APPEAL BRIEF. The Applicants' arguments are fully developed in the APPEAL BRIEF filed November 12, 2008. The Examiner's arguments are fully developed in the FINAL REJECTION and the EXAMINER'S ANSWER. No further response by the Applicants is needed. The EXAMINER'S ANSWER of May 12, 2009 differs from the two previous EXAMINER'S ANSWER of March 3, 2009 and of April 1, 2009 only in new citation of In re Bilski, 88 USPQ2nd 1385 (Fed. Cir. 2008) in support of this rejection. This new citation does not change the position of the Examiner or of the Applicants. (Second Reply Br. 2). ISSUES Did the Examiner err in rejecting claims 1, 2, 4, and 6 under 35 U.S.C. § 101 because these claims are directed to statutory subject matter? ANALYSIS 35 U.S.C. § 101 Rejection We have reviewed the Examiner’s § 101 rejection in light of Appellants’ arguments (Appeal Brief and Reply Briefs) that the Examiner has erred. We disagree with Appellants’ conclusions. We concur with the conclusions reached by the Examiner. Appeal 2009-014324 Application 10/883,872 7 Appellants’ above contentions 4 and 5, both argue that the Examiner’s Answers do not contain a new ground of rejection. Appellants are mistaken. The language of the rule is permissive. (See 37 C.F.R. § 41.39 (a)(2)). Therefore, the Examiner may designate any rejection as a new ground of rejection. However, such a “new ground” designation is particularly appropriate where, as here, the Examiner substantially changes the rationale supporting a rejection. See In re De Blauwe, 736 F.2d 699, 706 n.9 (Fed. Cir. 1984) (stating that where the Office advances “a position or rationale new to the proceedings, an applicant must be afforded an opportunity to respond to that position or rationale by submission of contradicting evidence”). The Appeal contains only § 101 arguments by Appellants (above contentions 1-3) which are directed to the “concrete, tangible, and useful” § 101 rejection which is no longer before this Board. We now consider above contentions 1-3 to the extent that these contentions are applicable to the § 101 rejection actually before us. Claim 1 is a method claim. Appellants do not contend that claim 1 recites a particular machine (which might satisfy the machine prong of the machine-or-transformation test). However, it appears that Appellants do argue that claim 1 satisfies the transformation prong of the machine-or- transformation test because it converts one thing into another thing (above contention 1) and that claim 1 involves physical things such as a “bit plane data word” (above contention 3). We disagree. Contrary to Appellants’ unsupported contention 3, a “data word” is not physical. Rather, “data” is “an item of information” and a “word” is the “unit” or amount of the data. 3 The mere manipulation or reorganization of data does not satisfy the 3 Microsoft Dictionary 2002, p.141 and p.573. Appeal 2009-014324 Application 10/883,872 8 transformation prong. See Cybersource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1375 (Fed. Cir. 2011). Thus, the argued converting of data of claim 1 fails to meet the transformation test. 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. Id at 1371. However we conclude that, absent any other factors weighing either toward or against patent eligibility, the two machine-or- transformation factors both weighing against patent eligibility are alone sufficient to establish a prima facie case of patent-ineligibility, i.e., are sufficient to set forth the basis for the rejection so as to put the patent applicant on notice of the reasons why the applicant is not entitled to a patent. Cf. In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992). See Bilski v. Kappos, __ U.S. __, 130 S.Ct. 3218, 3227 (2010) (while the machine-or- transformation test is not the sole test for deciding whether an invention is a patent-eligible process, it is “a useful and important clue, an investigative tool, for determining whether some claimed inventions are processes under § 101”). We conclude that the Examiner correctly determined that claim 1 fails to recite patent-eligible subject matter. Appellants have presented no arguments that convince us otherwise. Specifically, Appellants have not pointed to any convincing factors that weigh towards patent eligibility, and we are unable to find any factors that weigh towards patent eligibility. Appeal 2009-014324 Application 10/883,872 9 CONCLUSIONS (1) The Examiner has not erred in rejecting claims 1, 2, 4, and 6 as being unpatentable under 35 U.S.C. § 101. 4 (2) Claims 1, 2, 4, and 6 are not patentable. DECISION The Examiner’s rejection of claims 1, 2, 4, and 6 under 35 U.S.C. § 101 is affirmed. 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 msc 4 Because we affirm the Examiner’s new § 101 rejection, we do not reach the rejections under § 103. The § 103 rejections are not discussed further herein.