Ex Parte Bierbrauer et al

Board of Patent Appeals and Interferences

Mar 28, 2012

10020048 (B.P.A.I. Mar. 28, 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.
10/020,048 12/14/2001 Matthias Stefan Bierbrauer DE920000125US1 (210) 7481
46320 7590 03/29/2012
CAREY, RODRIGUEZ, GREENBERG & O''KEEFE, LLP
STEVEN M. GREENBERG
950 PENINSULA CORPORATE CIRCLE
SUITE 2022
BOCA RATON, FL 33487
EXAMINER
LUDWIG, MATTHEW J
ART UNIT PAPER NUMBER
2178
MAIL DATE DELIVERY MODE
03/29/2012 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 MATTHIAS STEFAN BIERBRAUER and DANIEL HAENLE
____________

Appeal 2009-013354
Application 10/020,048
Technology Center 2100
____________

Before JOSEPH F. RUGGIERO, CARLA M. KRIVAK, and
DENISE M. POTHIER, Administrative Patent Judges.

POTHIER, Administrative Patent Judge.

DECISION ON APPEAL

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Application 10/020,048

2
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner‟s
rejection of claims 1-17. We have jurisdiction under 35 U.S.C. § 6(b). We
reverse. We enter a new ground of rejection under 35 U.S.C. § 101 for
claim 16.

Invention
Appellants‟ invention relates to a technique for moving a document
and a folder between a system and a repository. See Abstract.
1
Claim 1 is
reproduced below with the key disputed limitations emphasized:
1. A method for moving a single document between a document
processing system and a document repository, comprising the steps of:
obtaining structural information describing the the [sic] structural
elements of a sequential file of documents in which the single document
is located;
obtaining meta information describing the properties of the single
document;
obtaining document content of the single document;
creating a physical representation for the single document based on
the obtained structural information, meta information and document
content; and
transferring the created physical representation to the document
repository.

The Examiner relies on the following as evidence of unpatentability:
Hoffert US 5,903,892 May 11, 1999

Claims 1-17 are rejected under 35 U.S.C. § 103(a) as unpatentable
over Hoffert. Ans. 3-6.

1
Note, an Abstract may not exceed 150 words. See 37 C.F.R. § 1.72.
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Preliminary Matter
Initially, we consider Appellants‟ assertions that the Examiner has
failed to comply with MPEP § 1207.02 and 37 C.F.R. § 1.104(c) (App. Br.
3-4; Reply Br. 2) and the Examiner‟s objection to claims 1, 2, 5, 10, and 13
(Ans. 3, 8). Such issues are petitionable matters under 37 C.F.R. § 1.181
and will not be addressed on appeal. See MPEP §§ 1002 and 1201.

THE CONTENTIONS
Regarding independent claim 1, Appellants argue, among other
things, that the Examiner fails to identify what in Hoffert maps to the
recited: (1) structural information describing the structural elements of a
sequential file of documents (App. Br. 5-6; Reply Br. 4-6); (2) obtaining
meta information describing the properties of the single document (App. Br.
6; Reply Br. 7-8); and (3) transferring the created physical representation to
the document repository (App. Br. 7-8; Reply Br. 8-11).
In response, the Examiner states that “HTML itself is made up of
structured information based upon the markup language contained with the
[retrieved HTML] document [in Hoffert] and the structural elements would
be the tags found within the structured information.” Ans. 6. Additionally,
the Examiner finds “meta information” is suggested in Hoffert “by the use of
HTML tags” (Ans. 4, 7) and that the physical representation of the document
is disclosed in Hoffert when media content URLs found using the crawler
are stored in a repository (Ans. 4, 7-8).
The issues before us are then:
Under § 103, has the Examiner erred in rejecting claim 1 by finding
that Hoffert would have taught or suggested (a) obtaining meta information
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describing the properties of the single document and (b) transferring the
created physical representation to the document repository?

ANALYSIS
Based on the record before us, we find error in the Examiner‟s
rejection of claim 1. We agree with the Appellants (see App. Br. 4) that the
Examiner‟s rejection (Ans. 3-5) failed to identify in a clear manner what in
Hoffert teaches some of the limitations in claim 1, including the recited
structural information describing the structural elements of a sequential file
of documents and the recited document repository where the created
physical representation
2
of the document is transferred. In the Response to
Argument‟s section, the Examiner attempts to clarify his position. See Ans.
6-9. Yet, we still find problems with the Examiner‟s position.
For example, claim 1 recites the structural elements and meta
information as distinct components. However, the Examiner maps both the
recited structural elements of the sequential file of documents and the recited
meta information to the HTML tags. See Ans. 6 (stating “the structural
elements would be the [HTML] tags found within the structured
information”) and Ans. 7 (stating “the „meta information‟ is suggested in
[Hoffert] by the use of HTML tags”). We find this position unsupportable,
because the Examiner relies on the same HTML tags for two distinct
components of claim 1.
As another example, Appellants argue that the cited passage in
Hoffert (i.e., column 8 cited at Ans. 4) fails to teach transferring to the

2
Appellants state the physical representation of a document is “the binary
format.” See Spec. 3:14-16; Abstract.
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document repository. See App. Br. 8. The Examiner responds that Hoffert
discusses storing media content (Ans. 7) and that the claim “language fails to
preclude the Examiner from utilizing the reference to Hoffert to provide
media content URLs stored in a repository . . .” (Ans. 8). To extent that
Hoffert teaches the media URL is stored (col. 4, ll. 46-47), Hoffert at best
teaches the URL is stored in a database (col. 3, ll. 46-50), which can be a
document repository. However, the Examiner states that the physical
representation of a document is the media content (see Ans. 7) and not the
URL. Thus, the Examiner has not adequately demonstrated how the created
media content (e.g., the mapped physical representation of the document),
which is based on the obtained structural information, meta information, and
document content, is transferred to a document repository as recited.
Moreover, a search results‟ list produced from searching videos (e.g., those
by Steven Spielberg) is not taught or suggested to be transferred to a
document repository (col. 8, ll. 52-56) as required by claim 1.
Concerning independent claims 5 and 13, Appellants further assert
that the Examiner relies on the rejection for claim 1 and does not address the
limitation of “moving a folder and documents contained therein.” App. Br.
8. Notably, this recitation is located in the preamble, but other recitations in
claim 5 also recite “creating a physical representation for the folder . . .” and
“transferring the created physical representation to the document
repository.” The Examiner contends that Hoffert teaches using and scanning
directories and “suggests a folder structure and a similar retrieval of media
content through directories.” Ans. 8; see also col. 3, l.
61 – col. 4, l. 4. Hoffert also discusses adding information into the index
being created by the crawler. (Col. 4, ll. 4-8). Nonetheless, as discussed
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above when addressing claim 1, these teachings fail to teach or suggest
transferring the created physical representation for the folder (e.g., the
directories) to a document repository.
For the foregoing reasons, Appellants have persuaded us of error in
the rejection of: (1) independent claim 1; (2) independent claims 5, 10, and
13, which recite similar or commensurate limitations; and (3) dependent
claims 2-4, 6-9, 11, 12, and 14-17 for similar reasons.

NEW GROUND OF REJECTION UNDER 37 C.F.R. § 41.50(b)
Under 37 C.F.R. § 41.50(b), we enter the following a new ground of
rejection for claim 16 under § 101 as being directed to non-statutory subject
matter. Under § 101, there are four categories of subject matter that are
eligible for patent protection: (1) processes; (2) machines; (3) manufactures;
and (4) compositions of matter. 35 U.S.C. § 101. We find that claim 16
recites software and does not fall into one of these categories.
Claim 16 recites, “[a] data processing program for execution in a data
processing system comprising software code portions for performing a
method according to claim 1 when said program is run on said computer.”
That is, claim 16 recites nothing more than a “program” that comprises
“software code portions for performing a method according to claim 1 when
said program is run on said computer” (emphasis added). The above
limitations to a method of performing and run on a computer are functional
or intended use limitations -- not positively recited. See In re Schreiber, 128
F.3d 1473, 1478 (Fed. Cir. 1997). Moreover, Appellants do not describe or
define “a data processing program” in the disclosure. See generally
Specification. The clear import is that the invention of claim 16 can exist
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solely as software. Reciting descriptive material per se (e.g., data structure,
computer programs, or code) is non-statutory because the claim describes
only the manipulation of ideas or an abstraction (e.g., logic). See In re
Warmerdam, 33 F.3d 1354, 1361-62 (Fed. Cir. 1994).
Moreover, as the USPTO guidelines explain:
3

A claim that includes terms that imply the invention is
directed to a product . . . but fails to include tangible limitations
in accordance with its broadest reasonable interpretation is not
limited to a practical application, but rather wholly embraces or
encompasses the concept upon which the invention is based.
This is impermissible as such claim coverage would extend to
every way of applying the abstract idea, law of nature or natural
phenomenon.

Because claim 16 recites only a data structure (e.g., a program), the claim
fails to include tangible limitations. Thus, the claims coverage extends to
various ways of applying the code (e.g., an abstract idea) and is therefore
patent ineligible under § 101.

CONCLUSION
The Examiner erred in rejecting claims 1-17 under § 103. We newly
reject claim 16 under § 101.
This decision contains a new ground of rejection pursuant to 37
C.F.R. § 41.50(b) for claim 16. This section provides that “[a] new ground
of rejection… shall not be considered final for judicial review.”

3
Andrew H. Hirshfeld, Interim Examination Instructions for Evaluating
Subject Matter Eligibility Under 35 U.S.C. § 101 (Aug. 2009), available at
http://www.uspto.gov/web/offices/pac/dapp/opla/2009-08-
25_interim_101_instructions.pdf, at 3.
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Section 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. . . .

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).

DECISION
The Examiner‟s decision rejecting claims 1-17 is reversed. Claim 16
is newly rejected under § 101.

REVERSED
37 C.F.R. § 41.50(b)

kis