Ex Parte Burkhart et al

Board of Patent Appeals and Interferences

Sep 22, 2010

11246581 (B.P.A.I. Sep. 22, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
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34533 7590 09/24/20 10
INTERNATIONAL CORP (BLF)
C/O BIGGERS & OHANIAN, LLP
P.O. BOX 1469
AUSTIN, TX 78767-1469
APPLICATION NO.
EXAMINER
KAMAL, SHAHID
111246,581 1010712005 Michael J. Burkhart AUS920050440US 1 6997
FILING DATE
I ARTUNIT I PAPERNUMBER I
FIRST NAMED INVENTOR
Please find below andlor attached an Office communication concerning this application or proceeding.
NOTIFICATION DATE
The time period for reply, if any, is set in the attached communication.
ATTORNEY DOCKET NO.
DELIVERY MODE
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
CONFIRMATION NO.
09/24/2010 ELECTRONIC
office @biggerslaw.com
jennifer @biggerslaw.com
michelle @biggerslaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
Ex parte MICHAEL J . BURKHART,
DANIEL C. EISENHAUER,
DANIEL M. SCHUMACHER, and
THOMAS J. WATSON
Appeal 2009-008220
Application 1 1/246,58 1
Technology Center 3600
Before MURRIEL E. CRAWFORD, HUBERT C. LORIN, and
ANTON W. FETTING, Administrative Patent Judges.
LORIN, Administrative Patent Judge.
1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. 5 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. 5 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 2009-008220
Application 1 1/246,58 1
STATEMENT OF THE CASE
Michael J. Burkhart, et al. (Appellants) seek our review under 35
U.S.C. 5 134 of the final rejection of claims 1-20. We have jurisdiction
under 35 U.S.C. 5 6(b) (2002).
SUMMARY OF DECISION
We REVERSE and enter a NEW GROUND OF REJECTION,
pursuant to our authority under 37 C.F.R. 5 41.50(b).~
THE INVENTION
The invention is directed to "methods, systems, and products for
creating rules for the administration of end-user license agreements."
Specification 1 : 13- 14.
Claim 1, reproduced below, is illustrative of the subject matter on
appeal.
1. A computer-implemented method for creating rules for the
administration of end-user license agreements ('EULAs'), the method
comprising:
identifying, from historical license data, a license
administration pattern, the license administration pattern representing
a trend in an organization's administration of the EULAs, terms in the
EULAs, or material subject to the EULAs; and
creating in dependence upon the license administration pattern,
a license administration rule, the license administration rule
representing a conditional expression used to establish conditions for
accepting or rejecting the EULAs.
2 Our decision will make reference to the Appellants' Appeal Brief ("Br.,"
filed Jul. 21, 2008) and the Examiner's Answer ("Answer," mailed Sep. 18,
2008).
Appeal 2009-008220
Application 1 1/246,58 1
THE REJECTION
The Examiner relies upon the following as evidence of
unpatentability :
Ginter US 5,910,987 Jun. 8, 1999
The following rejection is before us for review:
1. Claims 1-20 are rejected under 35 U.S.C. 5 102(b) as being anticipated
by Ginter.
ISSUES
The Appellants argue that Ginter does not describe (1) "identifying,
from historical license data, a license administration pattern, the license
administration pattern representing a trend in an organization's
administration of the EULAs, terms in the EULAs, or material subject to the
EULAs" (claim 1) and (2) "creating in dependence upon the license
administration pattern, a license administration rule, the license
administration rule representing a conditional expression used to establish
conditions for accepting or rejecting the EULAs" (claim 1). See Br. 5 and 7
respectively. The issue is whether Ginter describes expressly or inherently,
claim limitations (1) and (2).
FINDINGS OF FACT
The Examiner relied on col. 24,ll. 1-24 and col. 233,ll. 21-38 as
describing both claim limitations (1) and (2). Answer 3. Col. 24,ll. 1-24 of
Ginter is reproduced below:
preferred embodiment of the present invention, uniquely
supports efficient maintenance of usage history for: (a)
Appeal 2009-008220
Application 1 1/246,58 1
Col
rental, (b) flat fee licensing or purchase, (c) licensing or
purchase discounts based upon historical usage variables,
and (d) reporting to users in a manner enabling users to
determine whether a certain item was acquired, or acquired
within a certain time period (without requiring the use of
conventional database mechanisms, which are highly
inefficient for these applications). Bitmap meter methods
record activities associated with electronic appliances,
properties, objects, or portions thereof, and/or administrative
activities that are independent of specific properties, objects,
etc., performed by a user and/or electronic appliance such
that a content and/or appliance provider and/or controller of
an administrative activity can determine whether a certain
activity has occurred at some point, or during a certain
period, in the past (for example, certain use of a commercial
electronic content product and/or appliance). Such
determinations can then be used as part of pricing and/or
control strategies of a content and/or appliance provider,
and/or controller of an administrative activity. For example,
the content provider may choose to charge only once for
access to a portion of a property, regardless of the number of
times that portion of the property is accessed by a user.
233,ll. 21-38 of Ginter is reproduced below:
other identifying information. It may also or alternatively
provide or include one or more passwords or other
information used to identify or otherwise verifylauthenticate
an individual's identity, such as voice print and retinal scan
information. For example, a portable appliance 2600 can be
used as a smart card that carries various permissions and/or
method information for authorizations and budgets. This
information can be stored securely within portable appliance
2600 in a secure database 610 arrangement. When a user
attempts to purchase or license an electronic product or
otherwise use the "smart card" to authorize a process,
portable appliance 2600 may query the user for
identification information or may initiate an identification
process employing scanned or otherwise entered information
(such as user fingerprint, retinal or voice analysis or other
techniques that may, for example, employ mapping and/or
Appeal 2009-008220
Application 1 1/246,58 1
matching of provided characteristics to information securely
stored within the portable appliance 2600).
ANALYSIS
We have reviewed col. 24,ll. 1-24 and col. 233,ll. 21-38 of Ginter
(see supra) but do not find there any express or inherent description of the
two claim limitations at issue.
Col. 24,ll. 1-24 describes the use of bitmap meters to record usage of
information to support efficient maintenance of usage history for licensing
purposes which can then be used as part of a pricing strategy. Col. 233,ll.
21-38 describes ways of providing authenticating information when
purchasing or licensing a product via, for example, a portable appliance. In
neither disclosure is there any mention of end-use license agreements
(EULAs) or a license administration pattern, let alone a license
administration pattern representing a trend in an organization's
administration of the EULAs, terms in the EULAs, or material subject to the
EULAs. Consequently, we do not find that the Examiner has made out a
prima facie case of anticipation for the claimed subject matter.
NEW GROUNDS
Process Claims 1-8
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, No. 08-964,2010 WL 2555192 (U.S. June 28,2010). The
Court held that the term "process" as used in 5 101, does not categorically
exclude business methods. Id. at *9.
Appeal 2009-008220
Application 1 1/246,58 1
The Court is unaware of any argument that the "ordinary,
contemporary, common meaning," Diehr, supra, at 182, of "method"
excludes business methods. Nor is it clear how far a prohibition on
business patents would reach, and whether it would exclude
technologies for conducting a business more efficiently.
"At the same time, some business method patents raise special
problems in terms of vagueness and suspect validity." Id. (citing eBay Inc.
v. MercExchange, L.L.C., 547 U.S. 388, 397 (2006)) (Kennedy, J.,
concurring).
In searching for a limiting principle, this Court's precedents on
the unpatentibility of abstract ideas provide useful tools. See infra 12-
15. Indeed, if the Court of Appeals were to succeed in defining a
narrower category or class of patent applications that claim to instruct
how business should be conducted, and then rule that the category is
unpatentable because, for instance, it represents an attempt to patent
abstract ideas, this conclusion might well be in accord with
controlling precedent.
Id.
Claims 1-9 are drawn to business methods. Taking claim 1 as
representative, the broadest reasonable construction of the claimed process
in light of the Specification as it would be interpreted by one of ordinary
skill in the art is that it provides a series of instructions that do no more than
identify a license administration pattern based on historical license data and,
based on the pattern, creating a rule representing a conditional expression for
accepting or rejecting EULAs. The claim reasonably broadly covers creating
any rule representing any conditional expression for accepting or rejecting
EULAs which can be said to be based on a license administration pattern,
random or not, based on historical license data. In effect, the claimed process
vaguely explains a method for creating a rule representing a conditional
Appeal 2009-008220
Application 1 1/246,58 1
expression for accepting or rejecting EULAs given certain information3
about a license administration pattern.
Accordingly, as claimed, the process provides nothing more than
vague instructions in how to conduct a business, principally how to create a
rule representing a conditional expression for accepting or rejecting EULAs,
given certain information about a license administration pattern. That is, the
claimed process proposes following a simple formula for creating a rule
representing a conditional expression for accepting or rejecting EULAs:
identify a license administration pattern based on historical license data and,
based on the pattern, create a rule.
3 The "type" of information the claimed process uses limit the claimed
subject matter only in terms of the content of the information. They are
properly characterized as nonfunctional descriptive material. In the context
of prior art rejections, a distinction over the prior art based on nonfunctional
descriptive material is patentably inconsequential. See In re Ngai, 367 F.3d
1336, 1339 (Fed. Cir. 2004) where, in the context of a prior art rejection, the
court held that attaching instructions to an otherwise known product did not
render the product patentable over the prior art. See also In re Gulack, 703
F.2d 1381, 1385 (Fed. Cir. 1983) (when descriptive material is not
functionally related to the substrate, the descriptive material will not
distinguish the invention from the prior art in terms of patentability) and Ex
parte Mathias, 84 USPQ2d 1276 (BPAI 2005) (non-precedential) (Federal
Circuit Appeal No. 2006- 1103; WL 2433879, affirmed without written
opinion Aug. 19, 2006) (patentable weight need not be given to descriptive
material absent a new and unobvious functional relationship between the
descriptive material and the substrate). We see no reason why recitations of
nonfunctional descriptive material should not be similarly treated as
inconsequential in the process of determining whether claimed subject
matter is statutory under 35 U.S.C. 5 101.
Appeal 2009-008220
Application 1 1/246,58 1
We now turn to the question of whether the claimed process subject
matter is patent-eligible under 35 U.S.C. 5 101. Various factors must be
considered and weighed when analyzing claims as a whole before reaching a
conclusion on patent subject matter eligibility.
The factors relevant in this case are the lack of an expressed recitation
in the claims to a particular machine or transformation and that the claims
are mere statements of a general concept.
There is an implied recitation in the claims of a machine; that is, the
phrase "computer-implemented" in the preamble of the claim implies that
the claimed process is conducted in the computer field.
"Generally, the preamble does not limit the claims." Allen Eng 'g
Corp. v. Bartell Zndus., Znc., 299 F.3d 1336, 1346 (Fed. Cir. 2002). It is
arguable that the phrase "computer-implemented" in the preamble is
"necessary to give life, meaning, and vitality" to the claim. See Pitney
Bowes, Znc. v. Hewlett-Packard Co., 182 F.3d 1298, 1305 (Fed. Cir. 1999).
At best, it implies the use of a general purpose computer. Given that the
body of the claim provides no further insight into the workings of the
computer, the phrase "computer-implemented" suggests at best a nominal
use of a general purpose computer. See Gottschalk v. Benson, US (1972):
"The general purpose computer is designed to perform operations under
many different programs." A nominal recitation of a general purpose
computer is not an express recitation to a particular machine. Thus, we do
not find that the claimed process is tied to a particular machine.
Also, the phrase "computer-implemented" in the preamble implies
operating the subsequently-recited steps in a "computer-implemented"
environment, e.g., in the computer field. "Flook stands for the proposition
Appeal 2009-008220
Application 1 1/246,58 1
that the prohibition against patenting abstract ideas 'cannot be circumvented
by attempting to limit the use of the formula to a particular technological
environment' or adding 'insignificant postsolution activity."' Bilski, 130
S. Ct. 3218, 3230 (quoting Diamond v. Diehr, 450 U.S. 175, 191-192
(1 98 1)). The phrase "computer-implemented," suggesting at best a nominal
use of a general purpose computer, imposes no meaningful limits on the
scope of the claim apart from describing a field in which to conduct the
process. A field-of-use limitation is insufficient to render an otherwise
patent-ineligible process patent-eligible. See Diehr, 450 U.S., 191 (1981).
Cf. SiRF Technology, Znc. v. International Trade Commission, 601 F.3d
1319, 1333 (Fed. Cir. 2010)
In order for the addition of machine to impose a meaningful
limit on the scope of a claim, it must play a significant part
in permitting the claimed method to be performed, rather
than function solely as an obvious mechanism for permitting
a solution to be achieved more quickly, i.e., through the
utilization of a computer for performing calculations.
There is also no recitation of a transformation, expressly or inherently.
And, as we have reasonably broadly construed it, the subject matter of
claim 1 is a series of instructions for identifying a license administration
pattern based on historical license data and, based on the pattern, creating a
rule. The vague instructions listed in the claim do no more than instruct how
business should be conducted; that is, to create a rule based on identifying a
license administration pattern based on historical license data. The claim
covers any use of the concept of creating a rule based on identifying a
license administration pattern based on historical license data, known and
unknown. The instructions could be performed by any general purpose
computer, existing or future-devised. In the words of Gottschalk v. Benson,
Appeal 2009-008220
Application 1 1/246,58 1
409 U.S. 63,72 (1972), the claimed process "would wholly pre-empt the
[creating of a rule representing a conditional expression for accepting or
rejecting EULAs based on identifying a license administration pattern based
on historical license data] and in practical effect would be a patent on the
[concept] itself."
For the foregoing reasons, based upon consideration of all of the
relevant factors with respect to claims 1-9 as a whole, claims 1-9 are held to
claim an abstract idea and are therefore rejected as ineligible subject matter
under 35 U.S.C. 5 101. Accordingly, we will enter a new ground of rejection
of claims 1-9 under 35 U.S.C. 5 101 because they claim an abstract idea.
Apparatus Claims 9-1 3
It should be noted that, in challenging the rejection of the claims over
the cited prior art under 5 103, the Appellants' brief does not separately
address the apparatus claims 9-13. Given this, we presume the Appellants
take the view that these claims should be treated the same as method claims
1-8. This would be a fair view because claim 9, for instance, includes the
identical steps of claim 1; the only difference being that claim 9 is drawn to
a system comprising a "computer memory operatively coupled to [a]
computer processor" with instructions capable of conducting the steps of
claim 1. A "memory" and a "processor" are standard components of a
general purpose computer. The claim limitations to structure ("memory" and
"processor" in claim 9) do no more to limit the claimed subject matter than
the claim term "computerized" does to the process of claim 1. They are
indicative of a field of use within which to manifest the abstract idea of
creating of a rule representing a conditional expression for accepting or
Appeal 2009-008220
Application 1 1/246,58 1
rejecting EULAs based on identifying a license administration pattern based
on historical license data. Field-of-use limitations are insufficient to render
otherwise patent-ineligible subject matter patent-eligible. See Diehr, 450
U.S. at 191.
Accordingly, claims 9-13 are also rejected under 35 U.S.C. $ 101 as
being directed to non-statutory subject matter for reciting abstract ideas.
Article Claims 14-20
Article claims 14-20 are drawn to a "computer program product
embodied on a computer-readable medium" comprising instructions for
performing the abstract concept of creating a rule representing a conditional
expression for accepting or rejecting EULAs based on identifying a license
administration pattern based on historical license data (as set forth in claim
4 1). These claims encompass transitory propagating signals per se. We reach
this reasonably broad construction because the Specification is silent as to
the meaning of "computer program product embodied on a computer-
readable medium" and dependent claim 16, for example, limits the
computer-readable medium to a "transmission medium." A signal does not
fit within at least one of the four statutory subject matter categories under 35
U.S.C. $101. In re Nuijten, 500 F.3d 1346, 1357 (Fed. Cir. 2007).
Accordingly, claims 14-20 are rejected under 35 U.S.C. $ 101 as being
directed to non-statutory subject matter for encompassing a signal.
4 See Subject Matter Eligibility of Computer Readable Media, 135 1 Off.
Gaz. Pat. Office 212 (Feb. 23, 2010).
Appeal 2009-008220
Application 1 1/246,58 1
DECISION
The decision of the Examiner to reject claims 1-20 under 35 U.S.C.
5 102(b) as being anticipated by Ginter is reversed.
We enter a new ground of rejection of claims 1-20 under 35 U.S.C.
g 101.
Since we have entered a new rejection, our decision is not a final
agency action. 37 C.F.R. 5 41.50(b) provides that, "[a] new ground of
rejection pursuant to this paragraph shall not be considered final for judicial
review." 37 C.F.R. 5 41.50(b) also provides that the Appellant, WITHIN
TWO MONTHS FROM THE DATE OF THE DECISION, must exercise one
of the following two options with respect to the new grounds of rejection to
avoid termination of proceedings (37 C.F.R. 5 1 .I97 (b)) 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 37 C.F.R. 5 41.52 by the Board upon the same record . . .
Appeal 2009-008220
Application 1 1/246,58 1
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. 5 1.136(a). See 37 C.F.R.
5 1.136(a)(l)(iv) (2007).
REVERSED; 37 C.F.R. 6 41.50(b)
mev
INTERNATIONAL CORP (BLF)
C/O BIGGERS & OHANIAN, LLP
P.O. BOX 1469
AUSTIN TX 78767-1469