Ex Parte Bross et al

Patent Trial and Appeal Board

Jun 26, 2013

10495635 (P.T.A.B. Jun. 26, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte WOLFGANG BROSS, NORBERT HEUMUELLER,
and FRITZ OESTERLE
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Appeal 2011-009221
Application 10/495,635
Technology Center 3600
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Before MURRIEL E. CRAWFORD, ANTON W. FETTING, and
BIBHU R. MOHANTY, Administrative Patent Judges.

CRAWFORD, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2011-009221
Application 10/495,635

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STATEMENT OF THE CASE
Appellants seek our review under 35 U.S.C. § 134 of the Examiner’s
final decision rejecting claims 1 to 17. We have jurisdiction over the appeal
under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.
Claim 1 is illustrative:
1. A computer-based method for logging transaction-tax-
related transactions, wherein each of the transactions to be logged
may include a previously calculated transaction-tax amount of the
transaction, the method comprising:
receiving a logging request for a particular one of the
transaction-tax-related transactions;
evaluating the logging rules with transaction data of the
particular transaction, wherein the logging rules define which
transactions have to be logged and which data items of each
transaction have to be logged based on at least one of a type of
each transaction and a jurisdiction that is relevant for each
transaction;
selecting, in response to an outcome of the evaluation which
specifies that the particular transaction is to be logged, the data
items of the particular transaction which have to be logged; and
logging, in response to the outcome of the evaluation which
specifies that the transaction is to be logged, the selected
data items of the particular transaction;
wherein the method is carried out by a software module
executed by a computer, where the software module is invocable
independently of a software module for the previous calculation
of the transaction-tax amount of the particular transaction.

Appellants appeal the following rejections:
1. Claims 5 to 14 and 16 to 17 under 35 U.S.C. § 101 as being directed to
non-statutory subject matter.

Appeal 2011-009221
Application 10/495,635

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2. Claims 1 to 17 under 35 U.S.C. § 103(a) as unpatentable over
Gryglewicz (US 6,993,502 B1; iss. Jan. 31, 2006) and Elston (US
2002/0143655 A1; pub. Oct. 3, 2002).

ANALYSIS
Non-statutory subject matter
The Examiner directs our attention to pages 8 and 19 Appellants'
Specification which states that a data set or file can be transmitted via the
Internet and that machine readable program code will be required for a
HTTP request and finds that this composes a signal over the given
connection (Ans. 11).
While the Appellants are correct that Specification indicates that the a
data set or file can be stored on a hard disc, CD, disc, or DVD, the
Appellants have not directed our attention to a location where the
Specification limits the term computer-readable storage medium so as to
exclude a signal per se. In our view, when the phrase “computer-readable
storage medium” is given its broadest reasonable construction, it
encompasses both non-transitory and transitory media and thus is directed to
non-statutory subject matter. 35 U.S.C. § 101. See In re Nuijten, 500 F.3d
1346, 1356-57 (Fed. Cir. 2007) (transitory embodiments are not directed to
statutory subject matter); Subject Matter Eligibility of Computer-Readable
Media, supra; U.S. Patent & Trademark Office, Interim Examination
Instructions for Evaluating Subject Matter Eligibility Under 35 U.S.C. §
101, 2 (Aug. 24, 2009) (available at http://
www.uspto.gov/web/offices/pac/dapp/opla/2009-08-
25_interim_101_instructions.pdf); U.S. Patent & Trademark Office,
Appeal 2011-009221
Application 10/495,635

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Evaluating Subject Matter Eligibility Under 35 USC § 101: August 2012
Update, 11-14 (Aug. 2012) (available at
http://www.uspto.gov/patents/law/exam/101_training_aug2012.pdf).
In this case, our construction of a computer-readable storage medium
as encompassing transitory media is appropriate because Appellants'
Specification fails to expressly limit a “computer-readable storage medium”
to non-transitory media; and the claim does not include recitations either
expressly or implicitly limiting the “computer-readable storage medium” to
non-transitory media.
In view of the foregoing, we will sustain this rejection of the
Examiner.

Obviousness
We will not sustain this rejection because we agree with the
Appellants that Gryglewicz does not disclose evaluation logging rules which
define which transactions have to be logged and which data items of each
transaction have to be logged. The Examiner relies on Gryglewicz column
2, lines 46 to 58 for teaching this subject matter
We find that column 2, lines 46 to 58 of Gryglewicz discloses that the
system and method therein uses business rules to determine how taxes are
calculated, which tax authorities taxes are calculated, and what taxes should
be collected. However, this portion of Gryglewicz does not disclose a
determination of which transactions have to be logged and which data items
of each transaction have to be logged.

Appeal 2011-009221
Application 10/495,635

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In view of the foregoing, we will not sustain the rejection of claim 1
and claims 2 to 4 dependent thereon. We will also not sustain this rejection
as it is directed to the remaining claims because each of these claims recite
using rules to determine which transactions and which data items of each
transaction have to be logged.

DECISION
We affirm the Examiner’s § 101 rejection.
We reverse the Examiner’s § 103(a) rejection.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).

AFFIRMED-IN-PART

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