Ex Parte Alden et al

Board of Patent Appeals and Interferences

Nov 22, 2010

09740584 (B.P.A.I. Nov. 22, 2010)

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.
09/740,584 12/18/2000 Jeffrey Morgan Alden GP-301022 6367
7590 11/23/2010
General Motors Corporation
Legal Staff
Mail Code 482-C23-B21
P.O. Box 300
Detroit, MI 48265-3000
EXAMINER
LEE, EUGENE
ART UNIT PAPER NUMBER
2815
MAIL DATE DELIVERY MODE
11/23/2010 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 JEFFREY MORGAN ALDEN and DANIEL J. REAUME
____________________

Appeal 2010-001298
Application 09/740,5841
Technology Center 2800

____________________

Before JOSEPH F. RUGGIERO, MARC S. HOFF, and CARLA M.
KRIVAK, Administrative Patent Judges.

HOFF, Administrative Patent Judge.

DECISION ON APPEAL2

1 The real party in interest is General Motors Corporation.
2 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or filing a request for rehearing, as
recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE” (paper
delivery mode) or the “NOTIFICATION DATE” (electronic delivery mode)
shown on the PTOL-90A cover letter attached to this decision.
Appeal 2010-001298
Application 09/740,584

STATEMENT OF CASE
Appellants appeal under 35 U.S.C. § 134(a) from a Non-Final
Rejection of claims 1-19. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm-in-part.
Appellants’ invention concerns a process for analyzing a sub-model of
a full system model. Calculation entities in the sub-model that depend on
entities in the full model that are outside the sub-model are converted to
temporary data entities. Any data entity in the sub-model from which a
converted temporary data entity depends is deleted. The process also
determines if there are any isolated cycles in the sub-model, and if so, which
of the entities in the isolated cycle will be an output entity. The process
further adds all global variables to the sub-model that are used in the full
model (Spec. 3-4).
Claim 1 is exemplary of the claims on appeal:
1. A method of analyzing a sub-model of a full system model, said
system model representing a system, said method comprising the steps of:
defining the sub-model as a collection of entities in a visual medium;
determining which of the entities in the sub-model are calculation
entities and which are data entities;
converting the calculation entities in the sub-model that depend on
entities in the full model that are not included in the sub-model into
temporary data entities;
identifying output entities in the sub-model, where the output entities
are calculation entities that do not have an output to another entity; and
visually analyzing changes in the sub-model in response to
performing the calculations for the calculation entities, wherein visually
analyzing changes in the sub- model includes analyzing changes in the size
of at least one data entity.

The Examiner does not rely upon prior art in rejecting the claims on
appeal.
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Claims 1-19 stand rejected under 35 U.S.C. § 112, second paragraph,
as failing to particularly point out and distinctly claim what Appellants
consider to be their invention.
Claims 1-12 stand rejected under 35 U.S.C. § 101 as being directed to
non-statutory subject matter.
Throughout this decision, we make reference to the Appeal Brief
(“App. Br.,” filed July 8, 2008), the Reply Brief (“Reply Br.,” filed August
19, 2008) and the Examiner’s Answer (“Ans.,” mailed June 26, 2008) for
their respective details.

ISSUES
With respect to the § 112 rejection, Appellants argue that the
Examiner erred in finding that several phrases in the claims on appeal lack
antecedent basis or are otherwise indefinite (App. Br. 3-5).
With respect to the § 101 rejection, Appellants argue that the claims
on appeal recite patent-eligible subject matter because the claims are tied to
a particular machine or apparatus. According to Appellants, the presence of
the claim limitations “defining the sub-model as a collection of entities in a
visual medium” and “visually analyzing changes in the sub-model” mean
that the claim is tied to a particular apparatus and cannot be performed
mentally (Reply Br. 3-4).
Appellants’ contentions present us with the following issues:
1. Do Appellants’ claims recite language lacking antecedent basis?
2. Are Appellants’ claims indefinite under § 112, second paragraph?
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3. Does Appellants’ claimed invention satisfy the machine-or-
transformation test described in In re Bilski, 545 F.3d 943 (Fed. Cir. 2008)
and is the claimed invention directed to an abstract idea?

PRINCIPLES OF LAW
The test for definiteness under 35 U.S.C. § 112, second paragraph, is
whether “those skilled in the art would understand what is claimed when the
claim is read in light of the specification.” Orthokinetics, Inc. v. Safety
Travel Chairs, Inc., 806 F.2d 1565, 1576 (Fed. Cir. 1986) (citations
omitted). Claims must “particularly point[] out and distinctly claim[] the
subject matter which the applicant regards as his invention.” 35 U.S.C.
§ 112, ¶ 2. However, “[o]nly claims not amenable to construction or
insolubly ambiguous are indefinite….A claim term is not indefinite just
because it poses a difficult issue of claim construction.” Star Scientific, Inc.
v. R.J. Reynolds Tobacco Co., 537 F.3d 1357, 1371 (Fed. Cir. 2008)
(internal citations and quotation marks omitted). “Thus, the definiteness of
claim terms depends on whether those terms can be given any reasonable
meaning.” Datamize, LLC v. Plumtree Software, Inc., 417 F.3d 1342, 1347
(Fed. Cir. 2005).
“‘[T]he failure to provide explicit antecedent basis for terms does not always
render a claim indefinite.’ . . . [D]espite the absence of explicit antecedent
basis, ‘[i]f the scope of a claim would be reasonably ascertainable by those
skilled in the art, then the claim is not indefinite.’” Energizer Holdings, Inc.
v. Int’l Trade Comm’n, 435 F.3d 1366, 1370-71 (Fed. Cir. 2006).
Antecedent basis can also be implied. Id. (holding that the term “anode gel”
implicitly provided antecedent basis for a “zinc anode” in the same claim).
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The law in the area of patent-eligible subject matter for process claims
has recently been clarified by the Supreme Court in Bilski v. Kappos, 130
S. Ct. 3218 (2010). The Court in Bilski confirmed that “[t]he Court’s
precedents provide three specific exceptions to § 101’s broad patent-
eligibility principles: ‘laws of nature, physical phenomena, and abstract
ideas.’” Bilski 129 S. Ct. at 3225, (quoting Diamond v. Chakrabarty, 447
U.S. 303, 309 (1980)).3 As to the machine-or-transformation test, the Court
held that “[t]his Court’s precedents establish that the machine-or-
transformation test is a useful and important clue, an investigative tool, for
determining whether some claimed inventions are processes under § 101”
but “[t]he machine-or-transformation test is not the sole test for deciding
whether an invention is a patent-eligible ‘process.’” Id. at 3227. The Court
further held that the term “process,” as used in § 101, does not categorically
exclude business methods. Id. at 3222.

ANALYSIS
REJECTION UNDER 35 U.S.C. § 112, SECOND PARAGRAPH
We are persuaded by Appellants’ arguments, and agree that the
Examiner erred in finding that several claim phrases lack antecedent basis.
With respect to the phrase “entities in the full model” (claim 1, lines
6-7), the Examiner states that it is unclear whether “entities” refers to
calculation entities or data entities (Ans. 7). It is clear from Appellants’
Specification that calculation entities may depend on either (other)

3 These three exceptions also apply to claims directed to machines and
articles of manufacture.
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calculation entities, or data entities, or both (Spec. 5). Appellant therefore
need not limit the term “entities,” because the term may refer to either type.
With respect to “converting” (claim 1, line 6), the Examiner finds that
it is unclear what “converting” occurs because calculation entities and data
entities are both values (Ans. 4). The Examiner’s finding is erroneous
because Appellants’ Specification makes clear that calculation entities are
calculated based on other data and/or calculation entities, whereas data
entities are numeric values (constants) provided as “inputs” (Spec. 5).
“Converting” calculation entities to temporary data entities thus has a
definite meaning, because the two types of entities are not equivalent.
We find that it was error for the Examiner to find the term “the
calculations” (claim 1, lines 10-11) lacks proper antecedent basis. The
claimed “calculation entities,” when read in light of the specification,
inherently include calculations. Antecedent basis is thus implied. See
Energizer Holdings, supra. For similar reasons, it was error to reject “the
size” (claim 1, line 12) for lack of antecedent basis. A data entity, being a
value, inherently has a magnitude or size.
We do not agree with the Examiner that “connecting arcs” in claim 2
lacks antecedent basis.4 Appellants are presenting an original recitation of
this property of the temporary data entities.

Footnote continued on next page.
4 Appellants amended claim 2, by Preliminary Amendment filed February 6,
2001, to include the phrase “connecting arcs.” No subsequent amendment to
claim 2 appears in the record. Notwithstanding the fact that the Claims
Appendix of Appellants’ Brief presents the original version of claim 2 as
appealed and that the Examiner states in the Answer that Appellants’ version
of the claims in the Appendix is correct, it is clear from the record that the
amended version of claim 2 is the version now pending. Appellants and the
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Similarly, we do not agree with the Examiner that the phrases
“isolated cycles” (claim 3) and “all global variables” (claim 7) lack
antecedent basis, as Appellants are merely presenting an original recitation
of properties of the sub-model.
Appellants have established that the Examiner erred in rejecting
claims 1-19 under § 112, second paragraph, due to a lack of antecedent
basis. Accordingly, we will not sustain the § 112 rejection of claims 1-19.
REJECTION UNDER 35 U.S.C. § 101
We select claim 1 as representative of this group of claims, pursuant
to our authority under 37 C.F.R. § 41.37(c)(1)(vii).
The Examiner rejected claims 1-12 as directed to patent-ineligible
subject matter, arguing that under In re Bilski, 545 F.3d 943 (Fed. Cir.
2008), the claimed method must be (1) tied to a particular machine or
apparatus or (2) transform a particular article to a different state or thing
(Ans. 5). The Examiner concluded that the claimed invention failed this
“machine-or-transformation” test because claims 1-12 are not tied to a
particular machine or apparatus, but rather are a series of mental steps that
can be performed without a machine or apparatus, and because such a series
of mental steps likewise fails to transform any particular article to a different
state or thing (Ans. 5-6).

Examiner clearly believe that the amended version is pending, as well,
because Appellants present argument traversing the Examiner’s rejection of
claim 2 as lacking antecedent basis, and the Examiner’s rejection is based on
language only present in the amended version. We will therefore treat the
version of claim 2 presented in Appellants’ amendment of February 6, 2001,
as the actual text of claim 2 pending and under appeal.
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Appellants respond that “it just does not seem possible that a person
could perform [the method steps of claims 1-12] mentally” (Reply Br. 3).
Further, Appellants argue, the step of visually analyzing changes in the sub-
model is a visual step that requires eyes (Reply Br. 4); the claimed invention
requires defining the sub-model as a collection of entities in a visual medium
(Id.); and said visual medium would be part of some type of machine or
apparatus (Id.).
Subsequent to the Examiner’s Answer and Reply Brief, the Supreme
Court held that while “[t]he machine-or-transformation test is not the sole
test for deciding whether an invention is a patent-eligible ‘process.’” the
machine-or-transformation test “is a useful and important clue, an
investigative tool, for determining whether some claimed inventions are
processes under § 101.” Bilski v. Kappos, 130 S. Ct. 3218, 3227 (2010).
We agree with the Examiner’s finding that claims 1-12 on appeal
recite a process that does not satisfy the machine-or-transformation test. The
claimed steps of defining the sub-model as a collection of entities,
determining which entities are calculation entities and which are data
entities, converting “dependent” calculation entities into temporary data
entities, identifying output entities, and visually analyzing changes in the
sub-model including analyzing changes in the size of at least one data entity
are in no way tied to any particular machine or apparatus, and do not recite
any transformation of any particular article to a different state or thing.
Further, we regard the invention recited in claim 1 to recite a patent-
ineligible abstract idea. We agree with the Examiner that representative
claim 1 recites a series of steps that may be performed mentally. We are not
persuaded by Appellants’ argument that “defining the sub-model as a
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collection of entities in a visual medium” affirmatively requires a visual
medium, because the phrase “visual medium” is merely descriptive of
abstract “entities” that are to be “defined,” the step of “defining”
encompassing a mental process.
Contrary to Appellants’ argument (Reply Br. 4), we regard
Appellants’ step of “visually analyzing changes in the sub-model” as
insufficient to remove the claimed invention from the realm of mere abstract
ideas. Appellants further limit this step as including “analyzing changes in
the size of at least one data entity.” According to Appellants’ Specification,
the claimed “analyzing changes” corresponds to determining whether a
given entity’s value has increased or decreased due to the change in the new
input. Appellants disclose, but do not affirmatively claim, visually
representing the change in an entity’s value (Spec. 10). Because Appellants
do not claim such visual representation, let alone any apparatus necessary to
perform said visual representation, Appellants have not shown that the
Examiner erred in concluding that representative claim 1 is directed to a
patent-ineligible abstract idea.
Because Appellants have not persuaded us that the Examiner erred in
concluding that claims 1-12 are directed to non-statutory subject matter, we
will sustain the § 101 rejection of claims 1-12.

CONCLUSIONS
1. Appellants’ claims do not recite language lacking antecedent basis.
2. Appellants’ claims are not indefinite under § 112, second
paragraph.
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3. Appellants’ claimed invention does not satisfy the machine-or-
transformation test described in In re Bilski, and is directed to an abstract
idea.
ORDER
The Examiner’s § 112 rejection of claims 1-19 is reversed. The
Examiner’s § 101 rejection of claims 1-12 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).

AFFIRMED-IN-PART

ELD

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