Ex Parte Blume

Board of Patent Appeals and Interferences

Apr 19, 2010

10251874 (B.P.A.I. Apr. 19, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte LEO R. BLUME
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Appeal 2008-000938
Application 10/251,874
Technology Center 2400
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Decided: April 20, 2010
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Before JAMES D. THOMAS, ST. JOHN COURTENAY III, and
JAMES R. HUGHES, Administrative Patent Judges.

THOMAS, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
This is an appeal under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 1, 4 through 13, and 15 through 36. Claims 2, 3, and 14
have been cancelled. We have jurisdiction under 35 U.S.C. § 6(b).1

1 The above-noted panel only recently received this appeal for decision.
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Application 10/251,874

2
We vacate all of the rejections before us under 35 U.S.C. § 103 and
institute a new ground of rejection within the provisions of 37 C.F.R.
§ 41.50(b).

Invention
A system and method for creating and managing electronic group
representations for meetings uses a meeting memory manager (MMM) to
collect and maintain important artifacts of meetings so that meeting
participants can easily access the meeting artifacts. The group
representation created by the MMM, i.e., the MMM meeting, is a persistent
collective representation of the meeting participants, along with important
artifacts associated with the meeting. (Abstract, ll. 1-6; Fig. 1.)

Illustrative Claim
1. A method for creating and managing persistent group
representations for meetings, comprising:
establishing a meeting among participants located at a physical
meeting location, comprising:
creating a meeting identification for the meeting; and
inviting and enrolling the participants for the meeting;
tracking meeting artifacts of the meeting, wherein the meeting
artifacts include meeting documents; and
managing searches and accesses of the meeting artifacts by the
meeting participants.

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Prior Art and Examiner’s Rejections
The Examiner relies on the following references as evidence of
unpatentability:
Larson US 5,907,324 May 25, 1999
Tang US 2002/0086663 A1 Jul. 4, 2002
Slutsman US 6,604,129 B2 Aug. 5, 2003
(filed Mar. 25, 1999)
Capek US 2003/0204474 A1 Oct. 30, 2003
(filed Apr. 25, 2002)
Lee EP 1098504 A2 May 9. 2001

All claims on appeal, claims 1, 4 through 13, and 15 through 36, stand
rejected under 35 U.S.C. § 103. In a first stated rejection, the Examiner
relies upon Slutsman in view of Larson, further in view of Capek, as to
claims 1, 4 through 11, 13, 15 through 17, 25 through 27, 30, and 34. In a
second stated rejection as to claims 18 through 24, the Examiner relies upon
Slutsman in view of Larson, further in view of Lee. In a third stated
rejection as to claims 29 and 35, the Examiner relies upon Slutsman in view
of Larson and Capek, further in view of Tang. In a fourth stated rejection of
claims 31 and 32, the Examiner relies upon Slutsman in view of Larson and
Lee, further in view of Tang. As to claims 12 and 36, in a fifth stated
rejection, the Examiner relies upon Slutsman in view of Larson and Capek,
further in view of Official Notice. As to claim 33, in a sixth stated rejection,
the Examiner relies upon Slutsman in view of Larson and Lee, further in
view of Official Notice. Lastly, in a seventh stated rejection as to claim 28,
the Examiner relies upon Slutsman in view of Larson and Capek, further in
view of Lee.
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FINDINGS OF FACT
At Specification page 1, lines 2 and 3, it is stated that the “technical
field relates to computer software systems, and, in particular, to systems for
creating and managing persistent group representations for meetings.” The
brief description of Figure 1 at page 2, lines 6 and 7, indicates that this figure
“illustrates exemplary software components of a meeting memory manager
(MMM) that creates and manages persistent representations for meetings.”
Additionally, Specification page 2, lines 17 through 23 are reproduced here:
Described here is a system and method for creating and managing an
electronic group representation for meetings using a software module,
referred to as a meeting memory manager (MMM). The electronic
group representation created by the MMM, i.e., the MMM meeting, is
a persistent representation of meeting participants, along with
important artifacts associated with the meeting. The MMM typically
collects and maintains the meeting artifacts so that the meeting
artifacts can be easily accessed by the meeting participants.

ANALYSIS
We vacate the seven rejections under 35 U.S.C. § 103 encompassing
all claims on appeal because we conclude that all claims on appeal, claims 1,
4 through 13, and 15 through 36, are “barred at the threshold by § 101.” In
re Comiskey, 554 F.3d 967, 973 (Fed. Cir. 2009) (citing Diamond v. Diehr,
450 U.S. 175, 188 (1981)). Therefore, the following new ground of
rejection is set forth in this Opinion within the provisions of 37 C.F.R.
§ 41.50(b).

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NEW REJECTION UNDER 35 U.S.C. § 101
PRINCIPLES OF LAW
Statutory Subject Matter
The subject matter of claims permitted within 35 U.S.C. § 101 must
be a machine, a manufacture, a process, or a composition of matter.
Moreover, our reviewing court has stated that “[t]he four categories [of
§ 101] together describe the exclusive reach of patentable subject matter. If
the claim covers material not found in any of the four statutory categories,
that claim falls outside the plainly expressed scope of § 101 even if the
subject matter is otherwise new and useful.” In re Nuijten, 500 F.3d 1346,
1354 (Fed. Cir. 2007), reh’g en banc denied, 515 F.3d 1361 (Fed. Cir.
2008), cert. denied, 127 S. Ct. 70 (2008). Accord In re Ferguson, 558 F.3d
1359 (Fed. Cir. 2009). This latter case held that claims directed to a
“paradigm” are nonstatutory under 35 U.S.C. § 101 as representing an
abstract idea. Thus, a “signal” cannot be patentable subject matter because it
is not within any of the four categories. In re Nuijten, 500 F.3d at 1357.
Laws of nature, abstract ideas, and natural phenomena are excluded from
patent protection. Diamond v. Diehr, 450 U.S. at 185. A claim that recites
no more than software, logic or a data structure (i.e., an abstraction) does not
fall within any statutory category. In re Warmerdam, 33 F.3d 1354, 1361
(Fed. Cir. 1994).

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ANALYSIS
With this background in mind, claims 1, 4 through 13, and 15 through
36 are rejected under 35 U.S.C. § 101 as being directed to non-statutory
subject matter.
Consistent with our earlier-noted invention statement from
Appellant’s disclosed Abstract, the reference to Figure 1, and the brief
quoted material in our Findings of Fact portion of this Opinion, the disclosed
and claimed invention is directed to software per se, namely a software or
program module. The features of representative independent claim 1 recited
in the body in of the claim are directed to features attributed to the meeting
memory manager (MMM) 100 in Figure 1 which illustrates the various
software components of this module. In fact, the substance of this module is
directly claimed in the body of independent claim 18. The “computer” in
the preamble of this claim is problematic since there is no recitation in the
body of this claim of any structure or hardware elements to comprise or
otherwise configure the computer, but only the recitations associated with
the meeting memory manager module of Figure 1. Only software
processes/functionalities are actually recited, thus making them consistent
with the recitations in method independent claim 1. The user interface of
claim 18 is depicted as a software component, a user interface 140 in Figure
1. Similarly, the claimed “a component to establish close proximity wireless
communications” appears to be directed to signal embodiments as well as a
software component that comprises a part of the MMM service element 160
in Figure 1.
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Turning to independent claim 25, which recites a computer readable
storage medium, the body of this claim is identical in substance to the
subject matter of representative independent claim 1. As such, the analysis
here corresponds to our earlier analysis as to that claim. Moreover, the
medium includes transitory embodiments, such as to comprise signals per se
in accordance with the description at Specification page 4, line 15. Note
also the analysis provided by Subject Matter Eligibility of Computer
Readable Media, 1351 Off. Gaz. Pat. Office 212 (Feb. 23, 2010).
Lastly, common among all claims on appeal is the recitation of a
group representation of a meeting which is the MMM meeting itself, which
representation in turn is a pure data structure or construct that falls outside of
the statutory categories of invention.

CONCLUSION AND DECISION
We have pro forma reversed the seven outstanding rejections under
35 U.S.C. § 103 that encompass all claims on appeal, claims 1, 4 through 13,
and 15 through 36. We have instituted a new ground of rejection within
37 C.F.R. § 41.50(b). This new rejection of all claims on appeal is based
upon 35 U.S.C. § 101 since these claims are directed to non-statutory subject
matter.
This decision contains a new ground of rejection pursuant to
37 C.F.R. § 41.50(b). Section 41.50(b) provides that “[a] new ground of
rejection . . . shall not be considered final for judicial review.”
Section 41.50(b) also provides that the Appellant, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
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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).

REVERSED
37 C.F.R. § 41.50(b)

msc

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