Ex Parte Burt et al

Board of Patent Appeals and Interferences

Sep 15, 2010

10881705 (B.P.A.I. Sep. 15, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte PHILIP N. BURT, PAUL TIMMINS, and
ANURADHA SHIVNATH
____________________

Appeal 2009-006155
Application 10/881,705
Technology Center 2100
____________________

Before ST. JOHN COURTENAY III, THU A. DANG, and
DEBRA K. STEPHENS, Administrative Patent Judges.

STEPHENS, Administrative Patent Judge.

DECISION ON APPEAL1

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for 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 2009-006155
Application 10/881,705

2
Appellants appeal under 35 U.S.C. § 134(a) (2002) from a final
rejection of claims 2-5, 8-11, 14-17, 20-23, and 33-35. Claims 1, 6, 7, 12,
13, 18, 19, and 24-32 have been cancelled. We have jurisdiction under 35
U.S.C. § 6(b) (2008).
We vacate the rejection under 35 U.S.C. § 102(e) before us and
institute a new ground of rejection within the provisions of 37 C.F.R.
§ 41.50(b).

Introduction
According to Appellants, the invention is a system and method for
enabling a data storage service provider to generate charge information for
users of a data storage system (Spec. 2, ll. 27-30).

STATEMENT OF THE CASE
Exemplary Claim
Claim 33 is an exemplary claim and is reproduced below:
33. A method, comprising:
obtaining data records including:

(a) asset information pertaining to storage assets in a data
storage system; the storage assets including redundant storage
assets having raw storage capacities exceeding usable storage
capacities, the storage assets further including (i) internal
storage assets directly accessible by respective host computers
and (ii) external storage assets separate from the host
computers, the asset information being organized according to
(i) host-visible structure and (ii) location and protection, the
host-visible structure including logical volumes, volume
groups, file systems and databases, the location and protection
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including internal and external storage, the external storage
further including primary storage and replica storage;

(b) utilization information pertaining to use of the storage
assets, the utilization information being organized according to
(i) total capacity, (ii) used capacity, (iii) accessible capacity,
and (iv) allocated capacity, these capacities being expressed in
terms of raw and usable amounts; and

(c) grouping information reflecting a grouping of the
storage assets and the users into respective charge-related
groups;

selectively aggregating the asset and utilization information
according to the grouping to obtain asset and utilization values usable
for chargeback-related purposes; and

presenting a graphical user interface reflecting the grouping, the
graphical interface including information fields in which respective
ones of the asset and utilization values are displayed.

Prior Art
Tabellion US 2004/0098383 A1 May 20, 2004

Rejection
Claims 2-5, 8-11, 14-17, 20-23, and 33-35 stand rejected under
35 U.S.C. § 102(e) as being anticipated by Tabellion. We vacate the prior
art rejection encompassing all claims on appeal because we conclude that all
claims on appeal, claims 2-5, 8-11, 14-17, 20-23, and 33-35, 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
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following new ground of rejection is set forth in this Opinion within the
provisions of 37 C.F.R. § 41.50(b).

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); 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.
Claim 33
Not every method claim is patent-eligible under § 101. See Bilski v.
Kappos, --- U.S.---, 130 S. Ct. 3218, 3229-30, --- L.Ed.2d (2010) (discussing
the process claims in Gottschalk v. Benson, 409 U.S. 63 (1972) and Parker
v. Flook, 437 U.S. 584 (1978) being non-statutory under § 101). To make
this determination, we first apply the machine-or-transformation test, which
the Court has stated is a useful in determining whether a claim is a process
under § 101. Bilski, 130 S. Ct. at 3231, 3227. The machine-or-
transformation test states “an applicant may show that a process claim
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satisfies § 101 either by showing that his claim is tied to a particular
machine, or by showing that his claim transforms an article.” In re Bilski,
545 F.3d 943, 961 (Fed. Cir. 2008) (en banc) (citation omitted), aff’d, Bilski,
130 S. Ct. The U.S. Supreme Court recently reaffirmed that “the machine-
or-transformation test is a useful and important clue . . . for determining
whether some claimed inventions are processes under § 101.” Bilski, 130 S.
Ct. at 3227.
Claim 33 recites a method for: (1) obtaining data records; (2)
selectively aggregating; and (3) presenting a graphical user interface.
Because none of these steps is tied to any machine, whether particular or
otherwise, claim 33 does not satisfy the first prong of the machine-or-
transformation test. Additionally, these steps (e.g., obtaining, aggregating,
and presenting) do not transform an article into a different state or thing.
Instead we find these steps recite what could be broadly but reasonably
construed as software code or a person performing the obtaining,
aggregating, and presenting steps. “Abstract software code is an idea
without physical embodiment.” Microsoft Corp. v. AT&T Corp., 550 U.S.
437, 449 (2007). Thus, we conclude these concepts of obtaining,
aggregating, and presenting are steps in a non statutory process. Thus,
Appellants attempt to patent abstract software code implementing an
accounting system. To the extent recited in the claims, the asset
information, utilization information, and grouping information are data and
the data records and graphical user interface appear to be software entities in
and of themselves and they are not necessarily stated or claimed to be
embodied in hardware structure.
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Accordingly, we find the invention recites an abstract idea. For the
reasons set forth above, we also find claims 2-5 and 8-11 each recites an
abstract idea. We therefore find that the method recited in claims 2-5, 8-11,
and 33 is directed to non-statutory subject matter under § 101.
Claim 34
“[A] machine is a concrete thing, consisting of parts, or of certain
devices and combination of devices. This includes every mechanical device
or combination of mechanical powers and devices to perform some function
and produce a certain effect or result.” In re Ferguson, 558 F.3d at 1364
(quotation marks, citations, and quotations omitted). Nominal recitations of
structure, such as non-limiting preamble recitations, are insufficient to bring
a claim within the scope of statutory subject matter. Cf. Ex parte Langemyr,
89 USPQ2d 1988, 1996 (BPAI 2008) (informative). Claim 34 must be
construed in its entirety. See Catalina Marketing Int’l, Inc., v.
Coolsavings.com Inc., 289 F.3d 801, 808 (Fed. Cir. 2002).
Aside from the nominal preamble recitations directed to a generic
display and processor, we conclude that claim 34 considered as a whole is
directed to the arrangement and display of data in the abstract.
Laws of nature, abstract ideas, and natural phenomena are excluded
from patent protection. Diamond v. Diehr, 450 U.S. 175, 185 (1981). 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 at 1361 (Fed. Cir. 1994).
Similarly, for the reasons set forth above, we conclude that claims 14-
17 and 20-23 are also directed to the arrangement and display of data in the
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abstract. Accordingly, we conclude that claims 14-17, 20-23, and 34 are
directed to non-statutory subject matter.
Claim 35
Claim 35 recites “[s]oftware encoded in one or more computer-
readable media for execution[,] and, when executed, operable to perform a
method comprising” the steps of “obtaining,” “aggregating,” and
“presenting.” Thus, claim 35 is directed to software per se, which falls
outside the scope of patentable subject matter. See In re Warmerdam, 33
F.3d at 1361-62. Accordingly, we conclude that claim 35 is not directed to
statutory subject matter.

CONCLUSION and DECISION

We have pro forma vacated the outstanding rejection over applied
prior art of all claims on appeal, claims 2-5, 8-11, 14-17, 20-23, and 33-35.
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.
A new ground of rejection is pursuant to 37 C.F.R. § 41.50(b).
37 C.F.R. § 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. § 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 grounds of
rejection to avoid termination of proceedings (37 C.F.R. § 1.197(b)) as to the
rejected claims:
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(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. § 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).

VACATED
37 C.F.R. § 41.50(b)

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BARRY W. CHAPIN
CHAPIN INTELLECTUAL PROPERTY LAW, LLC
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