Ex Parte Chen et al

Board of Patent Appeals and Interferences

Jan 26, 2012

11230446 (B.P.A.I. Jan. 26, 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.
11/230,446 09/20/2005 Zhongming Chen CA920040149US1 (027) 4003
46320 7590 01/26/2012
CAREY, RODRIGUEZ, GREENBERG & O''KEEFE, LLP
STEVEN M. GREENBERG
950 PENINSULA CORPORATE CIRCLE
SUITE 2022
BOCA RATON, FL 33487
EXAMINER
CHEMPAKASERIL, ANN J
ART UNIT PAPER NUMBER
2166
MAIL DATE DELIVERY MODE
01/26/2012 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 ZHONGMING CHEN and HONGLING ZHANG
_____________

Appeal 2009-012206
Application 11/230,446
Technology Center 2100
____________

Before ERIC S. FRAHM, DENISE M. POTHIER, and ERIC B. CHEN,
Administrative Patent Judges.

FRAHM, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF THE CASE
Introduction
Appellants appeal under 35 U.S.C. § 134 from the Examiner’s final
rejection of claims 1 to 4 and 12-15.1 We have jurisdiction under 35 U.S.C.
§ 6(b).
We will sustain the non-statutory subject matter rejection of claims
12-15 and the anticipation rejection of claims 1-4 and 12-15. However, we
will not sustain the non-statutory subject matter rejection of claims 1-4
newly made by the Examiner in the Answer.
Appellants’ Invention
Appellants’ invention is concerned with a computer-implemented
business model data management method (claims 1-4) and a computer
program product for business object data management comprising a
computer useable medium having computer usable program code tangibly
embodied therein, the code configured to perform the business model data
management method (claims 12-15). Appellants claim and disclose a
business model data management method including identifying a business
object, locating data management rules, and executing the located data
management rules to represent an identified business object in a database
120 (claims 1 and 12; Fig. 1; ¶¶ [0006] and [0014]).

1 Claims 5-11 stand withdrawn as being directed to a non-elected invention
(Non-Final Office Action mailed Oct. 29, 2007, at 4).

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Exemplary Claims
Claims 1 and 12, reproduced below with emphases added, are
representative of the subject matter on appeal:
1. A computer-implemented business model data management
method comprising:

identifying a business object within a business object structure
document for a business application;

locating data management rules for said identified business object in a
business object descriptor document; and,

executing said located data management rules to represent said
identified business object in a database for said business application.

12. A computer program product for business object data
management comprising a computer useable medium having computer
usable program code tangibly embodied therein, the computer useable
program code comprising:
computer usable program code configured to identify a business
object within a business object structure document for a business
application;
computer usable program code configured to locate data management
rules for said identified business object in a business object descriptor
document; and,
computer usable program code configured to execute said located data
management rules to represent said identified business object in a database
for said business application.

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Examiner’s Rejections
The following rejections are before us for review:
(1) Claims 12-15 stand rejected under 35 U.S.C. § 101 as being
directed to non-statutory subject matter. Ans. 5-6.
(2) Claims 1-4 and 12-15 stand rejected under 35 U.S.C. § 102(e) as
being anticipated by Bierenbaum (US 6,970,844 B1; filed Aug. 25, 2000).
Ans. 6-8.
(3) Claims 1-4 stand newly rejected under 35 U.S.C. § 101 as being
directed to non-statutory subject matter. Ans. 4-5.
Examiner’s Findings
The Examiner’s conclusion (Ans. 5) that claims 12-15 are directed to
non-statutory subject matter is based on the determination that claims 12-15
are not limited to tangible embodiments. The Examiner determines (Ans. 9-
10) that paragraph [0014] of the Specification supports an interpretation that
the computer useable medium recited in claim 12 can be either tangible (e.g.,
paper, removable storage, or hard disk drive), or intangible (e.g., any
medium that can contain, store, communicate, propagate, or transport the
computer program, like a carrier-wave signal).
In making the anticipation rejection, the Examiner relies upon
Bierenbaum (col. 12, ll. 25-35 and 45-50; col. 16, ll. 56-60) as disclosing the
features set forth in independent claim 1 of a business model data
management method, and in independent claim 12 of a computer program
product having computer usable program code for performing the method of
claim 1 (Ans. 6-7 and 11-12).

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The Examiner’s conclusion (Ans. 4-5) that claims 1-4 are directed to
non-statutory subject matter is based on the determination that claims 1-4
recite a method which is not tied to another statutory class (e.g., an apparatus
such as a special purpose computer), and does not transform an article or
thing to a different state or thing.
Appellants’ Contentions
Regarding the non-statutory subject matter rejection of claims 12-15,
Appellants argue (App. Br. 4-6; Reply Br. 3-5) that the preamble of claim 12
calls for a “tangible” embodiment of the computer useable medium
containing the computer usable program code; therefore, claim 12 passes
muster under In re Beauregard, 53 F.3d 1583, 1584 (Fed. Cir. 1995) (noting
that the USPTO conceded that “computer programs embodied in a tangible
medium, such as floppy disks, are patentable subject matter under 35 U.S.C.
§ 101 . . . .”) Appellants assert (App. Br. 6; Reply Br. 3-5) that the
Examiner erred in determining that claim 12 can be broadly interpreted as
encompassing intangible media like carrier-wave signals. Appellants also
assert that the Examiner erred in determining that claim 12 recites
nonfunctional descriptive material, because “claim 12 clearly recites data
structures and computer programs that impart functionality when employed
as a computer component.” (Reply Br. 5).
With regard to the anticipation rejection applying Bierenbaum,
Appellants dispute the teachings of Bierenbaum with respect to whether the
Examiner has applied an overly broad interpretation to the claim term “data
management rules,” as recited in claims 1 and 12 (App. Br. 10). Appellants

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contend that: (i) Bierenbaum’s relationships of business model objects
governed by rules of inheritance are “not equivalent to the location of ‘data
management rules for an identified business object’” (App. Br. 11); and (ii)
the rules of inheritance in object oriented programming are not equivalent to
data management rules (Reply Br. 6-7). Appellants also contend (Reply Br.
7-10) that the Examiner is ambiguous and fails to particularly point out the
features of the claims and where they can be found in the Bierenbaum,
including column 12.
Regarding the non-statutory subject matter rejection of claims 1-4,
Appellants argue (Reply Br. 2-3) that the third step (last clause) of claim 1
constitutes a transformation of an article to a different state or thing as
required by In re Bilski, 545 F.3d 943, 956 n.12 (Fed. Cir. 2008).
Appellants assert (Reply Br. 2-3) that under Bilski, 545 F.3d at 962, the
transformation of data passes muster if it is central to the purpose of the
claimed process. In the instant case, Appellants argue (Reply Br. 3) that the
recited business object in a database for a business application (see claim 1)
is data that represents physical and tangible objects that have been
transformed.

ISSUES
Based on Appellants’ arguments, the issues are:
(1) Are claims 12-15 drawn to non-statutory subject matter?
(2) Does Bierenbaum teach the business model data management
method as recited in claims 1 and 12?
(3) Are claims 1-4 drawn to non-statutory subject matter?

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FINDINGS OF FACT
1. Appellants’ Specification (Spec. ¶ [0014]) describes computer-usable
or computer-readable media as follows:
Any suitable computer readable medium may be utilized.
The computer-usable or computer-readable medium may be, for
example but not limited to, an electronic, magnetic, optical,
electromagnetic, infrared, or semiconductor system, apparatus,
device, or propagation medium. More specific examples (a
nonexhaustive list) of the computer-usable or computer-
readable medium would include the following: an electrical
connection having one or more wires, a portable computer
diskette, a hard disk, a random access memory (RAM), a read-
only memory (ROM), an erasable programmable read-only
memory (EPROM or Flash memory), an optical fiber, a
portable compact disc read-only memory (CD-ROM), an
optical storage device, a transmission media such as those
supporting the Internet or an intranet, or a magnetic storage
device. Note that the computer-usable or computer-readable
medium could even be paper or another suitable medium upon
which the program is printed, as the program can be
electronically captured, via, for instance, optical scanning of the
paper or other medium, then compiled, interpreted, or otherwise
processed in a suitable manner, if necessary, and then stored in
a computer memory. In the context of this document, a
computer-usable or computer-readable medium may be any
medium that can contain, store, communicate, propagate, or
transport the program for use by or in connection with the
instruction execution system, apparatus, or device.
(Spec. ¶ [0014]) (emphasis added).
2. Bierenbaum describes a business model design process (Fig. 2a) that
identifies “organizational units making up the real-world business to be
modeled” (col. 16, ll. 58-59), and creates objects representing each

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organizational unit and assigns properties to the objects, such as name,
address, or contact person (col. 16, ll. 59-62).
3. Bierenbaum describes rules of inheritance that govern relationships of
business model objects in column 12 as follows:
The relationships of the business model objects are
governed by the rules of inheritance and reference. If a child
object is of the same type as the parent object, it may inherit the
properties of the parent object and of ancestors of the parent
object. For example, if a parent object includes a “Name”
property set to “Main Office” and a “City” property set to “New
York,” a child object of the parent object may inherit the
“Name” property set to “Main Office” and the “City” property
set to “New York”.

(Column 12, lines 45-53) (emphasis added). Furthermore,
A business model object may be able to reference other
business model objects in the tree. If a business model object
references another business model object, the referenced
business model object, or a property thereof, may be included
as a property of the referencing business model object. For
example, a business model object in the tree may be able to
reference a sibling business model object in the tree, and thus
have access to the properties of the sibling business model
object.

(Column 12, lines 57-65).
4. Bierenbaum also describes a business model constructed by defining
business model objects as follows:
A business model may be constructed by defining the
business model objects that represent the elements of a[
Financial Service Organization] FSO and arranging the
business model objects in a relationship that represents the
FSO from an organizational viewpoint. This relationship may

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be called a “business relationship” or “inheritance
relationship.” In one embodiment, the relationship among
business model objects may be described as a hierarchical tree
structure. The business model objects on the tree may be
referred to as “nodes” on the tree. The tree may be viewed as
an inverted tree, with a root object as the highest level node in
the tree.

(Column 12, lines 25-35) (emphasis added).

PRINCIPLES OF LAW
“During examination, ‘claims … are to be given their broadest
reasonable interpretation consistent with the specification, and … claim
language should be read in light of the specification as it would be
interpreted by one of ordinary skill in the art.’” In re Am. Acad. of Sci. Tech.
Cir., 367 F.3d 1359, 1364 (Fed. Cir. 2004) (citation omitted); In re Morris,
127 F.3d 1048, 1053-54 (Fed. Cir. 1997).
Signals are not patentable subject matter under § 101. In re Nuijten,
500 F.3d 1346, 1357 (Fed. Cir. 2007).
The Examiner need not give patentable weight to descriptive material
absent a new and unobvious functional relationship between the descriptive
material and the substrate. See In re Lowry, 32 F.3d 1579, 1583-84 (Fed.
Cir. 1994); In re Ngai, 367 F.3d 1336, 1338 (Fed. Cir. 2004); Ex parte
Curry, 84 USPQ2d 1272 (BPAI 2005), aff’d, Appeal No. 06-1003 (Fed. Cir.
June 12, 2006) (Rule 36). Paper containing logic or a program is printed
matter and is considered non-statutory under § 101. See In re Miller, 418
F.2d 1392, 1396 (CCPA 1969); see also Ex parte Shealy, 2007 WL
5211669, No. 2006-1601, at *21-22 (BPAI April 23, 2007) (informative);

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and Manual of Patent Examining Procedure (MPEP) § 706.03(a)(I)(A), 8th
ed., Rev. 6, Sept. 2007.

ANALYSIS
We have reviewed the Examiner’s rejections in light of Appellants’
contentions in the Appeal Brief (App. Br. 4-12) and Reply Brief (Reply Br.
2-10) that the Examiner has erred. We agree with Appellants’ contentions
that claims 1-4 are drawn to statutory subject matter.
However, we disagree with Appellants’ conclusions regarding the
non-statutory subject matter rejection of claims 12-15 and the anticipation
rejection of claims 1-4 and 12-15. In this regard, we adopt as our own
(1) the findings and reasons set forth by the Examiner in the action from
which this appeal is taken, and (2) the reasons set forth by the Examiner in
the Examiner’s Answer in response to Appellants’ Appeal Brief (Ans. 8-12).
We concur with the conclusions reached by the Examiner with regard to the
rejections of (1) claims 12-15 under § 101 (Ans. 5-6 and 8-10); and (2)
claims 1-4 and 12-15 under § 102(e) over the teachings of Bierenbaum (Ans.
6-8 and 10-12).
Non-Statutory Subject Matter Rejection of Claims 12-15
Independent claim 12 recites “[a] computer program product . . .
comprising a computer useable medium having computer usable program
code tangibly embodied therein.” Appellants state in the Specification that
the “computer useable medium” may include a hard disk, RAM, ROM, or
transmission media, or any medium that can propagate or transport the

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program (FF 1). However, the Specification also states that “the computer-
usable or computer-readable medium could even be paper or another
suitable medium upon which the program is printed” (see italicized potion of
FF 1).
When read in light of the Specification, independent claim 12 includes
both statutory subject matter (e.g., computer-usable program code or
instructions stored on a non-transitory medium such as a computer memory)
and non-statutory subject matter (e.g., computer-usable program code or
instructions conveyed by a transitory signal or medium, or code that is
tangibly embodied on paper). Appellants do not provide examples or
otherwise define the differences between tangible and intangible
embodiments of computer useable media, nor do Appellants provide
examples or otherwise specifically define the differences between transitory
and non-transitory computer useable media (see generally Spec. ¶¶ [0013]-
[0016]). According to USPTO guidelines, such claims (i.e., claims 12-15)
must be amended to recite solely statutory subject matter. See David J.
Kappos, Subject Matter Eligibility of Computer Readable Media, 1351 Off.
Gaz. Pat. Office 212 (Feb. 23, 2010); see also U.S. Patent & Trademark
Office, Interim Examination Instructions for Evaluating Subject Matter
Eligibility Under 35 U.S.C. § 101, available at
http://www.uspto.gov/patents/law/comments/2009-08-
25_interim_101_instructions.pdf, Aug. 2009, at 2.
Thus, reading independent claim 12 in light of the Specification, the
recited “computer useable [program] medium” encompasses a propagation,
transport, or transmission media or signal that contains the recited code

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tangibly embodied therein, whether transitory or non-transitory.2
Accordingly, we do not agree with Appellants’ arguments (App. Br. 6;
Reply Br. 3-5) that the Examiner erred in determining that claims 12-15
encompass a carrier-wave signal. See Nuijten, 500 F.3d at 1357 (holding
that signals are not patentable subject matter under § 101).
We also agree with the Examiner’s ultimate conclusion that claims
12-15 are directed to non-statutory subject matter, based at least on the
recitation of nonfunctional descriptive material (e.g., computer usable
program code) being tangibly embodied on a computer useable medium
such as paper. Appellants state that the computer-useable medium recited in
claim 12 “could even be paper or another suitable medium upon which the
program [computer usable program code] is printed” (FF 1). Paper
containing logic or a program is printed matter and is considered non-
statutory under § 101. See Miller, 418 F.2d at 1396; see also Shealy, 2007
WL 5211669, No. 2006-1601, at *21-22; and MPEP § 706.03(a)(I)(A).
The subject matter presented in claims 12-15 also relates to features
that may differ from the prior art solely on the basis of “non-functional
descriptive material,” which is generally not given patentable weight when
determining patentability of an invention over the prior art. In re Gulack,
703 F.2d 1381, 1385 (Fed. Cir. 1983). The USPTO may not disregard claim
limitations comprised of printed matter. See id. at 1384; see also Diamond
v. Diehr, 450 U.S. 175, 191 (1981). However, the Examiner need not give

2 The Specification is silent as to whether or not any of the exemplary
computer-usable media are transitory or non-transitory. See generally Spec.
¶¶ [0013]-[0016].

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patentable weight to descriptive material absent a new and unobvious
functional relationship between the descriptive material and the substrate.
See Lowry, 32 F.3d at 1583-84; Ngai, 367 F.3d at 1338.
When the prior art describes all the claimed structural and functional
relationships between the descriptive material and the substrate, but the prior
art describes a different descriptive material than the claim, then the
descriptive material is non-functional and will not be given any patentable
weight. That is, we conclude that such a scenario presents no new and
unobvious functional relationship between the descriptive material and the
substrate. In the instant case on appeal, we find that the invention of claims
12-15 contains non-functional descriptive material which does not provide a
patentable distinction to the computer usable program of the claimed
computer program product.
The computer program product comprising a computer useable
medium (e.g., paper) having computer usable program code tangibly
embodied therein recited in claims 12-15 is descriptive material which is not
given patentable weight absent a new and unobvious functional relationship
between the descriptive material (i.e., computer usable program code) and
the substrate (i.e., the paper). See Ngai, 367 F.3d at 1338; Lowry, 32 F.3d at
1583-84; Curry, 84 USPQ2d at 1274. Appellants’ Specification fails to
describe any new or unobvious functional relationship between the recited
computer usable program code and the paper medium in which it is tangibly
embodied. Accordingly, we agree with the Examiner (Ans. 9 (citing Spec. ¶
[0014])) that claims 12-15 merely recite an arrangement of data (i.e.,
program code) stored on a tangible medium such as paper.

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In this light, Appellants’ argument (see Reply Br. 5) that the Examiner
erred in determining that claim 12 recites nonfunctional descriptive material,
because claim 12 recites data structures and computer programs that impart
functionality when employed as a computer component is unpersuasive.
Claims 12-15 do not recite a functional limitation (i.e., there is no recitation
of locating and executing data management rules), only nonfunctional
descriptive material in the form of printed matter on a piece of paper that is
configured to identify, locate, and execute. Claim 12-25 are directed to non-
statutory subject matter or a computer usable program code tangibly
embodied as printed matter on a computer useable medium such as paper.
Based on the foregoing, we find that claim 12 is directed to
non-statutory subject matter under 35 U.S.C. § 101. Dependent claims
13-15 similarly include the program code tangibly embodied in a computer-
useable medium that can be a hard disk, ROM, RAM, paper, signal,
propagation media, transport media, or transmission media and are therefore,
also directed to non-statutory subject matter.
Anticipation Rejection of Claims 1-4 and 12-15
Regarding the anticipation rejection of independent claims 1 and 12,
Appellants’ contentions (App. Br. 7-12; Reply Br. 6-10) that Bierenbaum
fails to teach the recited computer-implemented business model data
management method and computer useable medium having computer usable
program code tangibly embodied therein are not persuasive for the reasons
that follow.

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A proper patentability analysis under § 102 begins with (i) a
construction of the relevant claim terms, including (ii) determining the
patentable weight to be given those relevant claim terms, and then (iii)
making a comparison with the prior art.3 After properly determining the
scope of the claims in light of the specification, including determining the
patentable weight to be given to individual claim terms, a comparison is
made between the claims and the prior art.
Because “claims … are to be given their broadest reasonable
interpretation consistent with the specification, and … claim language
should be read in light of the specification as it would be interpreted by one
of ordinary skill in the art” (Am. Acad. of Sci. Tech. Cir., 367 F.3d at 1364;
Morris, 127 F.3d at 1053-54), one of ordinary skill in the art would interpret
the phrase “data management rules” in light of the Specification. Appellants
do not provide any definition or description for “data management rules” in
the originally filed Specification and claims, other than to provide examples
of “data rules” that govern business objects (see Spec. ¶¶ [0028]-[0032]).
Inasmuch as Appellants have defined what constitutes data management
rules in the Specification at paragraphs [0028]-[0032], and given the
broadest reasonable interpretation of “data management rules” consistent
with the specification (see Am. Acad. of Sci. Tech. Cir., 367 F.3d at 1364;
Morris, 127 F.3d at 1053-54), we conclude that Bierenbaum teaches a

3 “Both anticipation under § 102 and obviousness under § 103 are two-step
inquiries. The first step in both analyses is a proper construction of the
claims . . . . The second step in the analyses requires a comparison of the
properly construed claim to the prior art.” Medichem, S.A. v. Rolabo, S.L.,
353 F.3d 928, 933 (Fed. Cir. 2003) (internal citations omitted).

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business model data management method that locates and executes data
management rules (i.e., inheritance rules) that govern objects. See FF 3 and
4. Furthermore, Bierenbaum’s inheritance rules (see FF 3, at col. 12, ll. 45-
53) are equivalent to Appellants’ rules that instruct data engine 140 to create
or not create a child instance when creating a parent instance (see Spec. ¶¶
[0028] and [0030]).
We disagree with Appellants’ contention (App. Br. 10) that the
Examiner interprets the term “data management rules” too broadly. To the
contrary, the term “data management rules” as set forth in claims 1-4 and
12-15 broadly encompasses the inheritance rules described by Bierenbaum.
The business model design process of Bierenbaum (FF 2-4), is encompassed
by the broad recitation of a computer-implemented business model data
management method in Appellants’ claims 1-4. And, the computer usable
medium recited in claims 12-15 broadly encompasses the central processing
unit of system 10 containing computer program code that has nonfunctional
descriptive matter, as disclosed by Bierenbaum (Fig. 1c; col. 16, ll. 17-33).
Appellants’ argument (Reply Br. 6-7) that rules of inheritance in
object oriented programming are not equivalent to data management rules is
unpersuasive for at least three reasons. First, Appellants disclose that
objects are transferred into data (Spec. ¶¶ [0019], [0022], and [0024]).
Second, Appellants’ admit (App. Br. 9-10) that the Specification states that
business object descriptor documents include “data defining a data rule
which can be used to translate business objects into data entries in the
database 120.” (Spec. ¶ [0021]). And third, Bierenbaum’s column 12, lines
49-53 provides examples of objects like “Name” and “City” which pertain to

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data representing properties of the objects, e.g., “New York” representing a
property of the “City” object (FF 3). Thus, rules governing data, such as the
recited data management rules, encompass programming that controls
objects using rules of inheritance as in Bierenbaum. Fourth, Appellants
merely assert, without any evidence, that an ordinarily skilled artisan would
not have recognized the data management rules and the inheritance rules as
equivalent.
Appellants’ arguments (Reply Br. 7-10) that the Examiner is
ambiguous and fails to particularly point out where in Bierenbaum the
various elements of the claims can be found are also unpersuasive.
Bierenbaum discloses a business model data design process (i.e.,
management method) (FF 2-4) that includes:
(1) identifying a business model object or “organizational unit” (FF 2);
(2) locating or referencing inheritance rules that govern the business
model objects (FF 3); and
(3) arranging the business model objects in a relationship governing
by the inheritance rules to represent the objects in a database 40 (FF 4).
Bierenbaum’s business modeler system 130, which includes system
10 (Fig. 1c), is equivalent to Appellants’ disclosed data management
platform 130 including engines 140 and 150 (see Spec. ¶ [0022]; Fig. 1).
And, Bierenbaum’s rules of inheritance are similar to Appellants’ disclosure
of operating on business objects by instructing a data engine to create or not
create a child instance when creating a parent instance. (Compare
Bierenbaum, col. 12, ll. 45-49 with Spec. ¶ [0028]). Appellants have not
shown otherwise.

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In view of the foregoing, we will sustain the anticipation rejection of
claims 1-4 and 12-15 based upon the teachings of Bierenbaum.
Non-Statutory Subject Matter Rejection of Claims 1-4
Claim 1 recites a “computer-implemented business model data
management method” (claim 1) which Appellants describe as requiring the
use of a data engine 140, data management platform 130, and a user
interface engine 150 to transform business objects in the business
application 110 into data entries in the database 120 using the rules (Spec.
¶ [0022]). The rules also “can be used to translate business objects into data
entries in the database 120.” (Spec. ¶ [0021]). “The data management
platform 130 can transform these business objects and their structure into
binary data in the database 120 . . . .” (Spec. ¶ [0024]).
Although simply adding a “computer-implemented” limitation to a
claim covering an abstract concept is insufficient to render a claim patent
eligible, claim 12 includes more. Claim 12 uses a computer to implement
specific algorithms (e.g., data management rules) that are required to be
located and executed in order to represent an identified business object in a
database. See SiRF Tech., Inc. v. Int’l Trade Comm’n, 601 F.3d 1319, 1333
(Fed. Cir. 2010) (“In order for the addition of a 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.”).

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The method recited in claim 1, read as a whole, is more than just an
abstract idea, it is a method requiring the use of a special purpose computer
that can perform the location and execution of data management rules. The
business model data management method of claims 1-4 is implemented by a
computer (claim 1, preamble), manages business model data (claim 1,
preamble), and locates and executes rules to represent identified business
objects in a database for a business application (claim 1, last two clauses).
Claim 1 is therefore tied to a particular class and further operates to
transform an article (e.g., data in the database and objects within an object
structure). See Bilski v. Kappos, 130 S.Ct. 3218, 3227 (2010) (“[T]he
machine-or-transformation test is a useful and important clue, an
investigative tool, for determining whether some claimed inventions are
processes under § 101.”). We agree with Appellants’ contentions (Reply Br.
2-3) that the third step (last clause) of claim 1 constitutes a transformation of
an article to a different state or thing because the recited business object in a
database for a business application (see claim 1) is data that represents
physical and tangible objects that have been transformed.
Accordingly, we do not sustain the Examiner’s new ground of
rejection of claims 1-4 under 35 U.S.C. § 101.

CONCLUSIONS OF LAW
(1) Claims 12 to 15 are drawn to non-statutory subject matter.
(2) Bierenbaum discloses a computer-implemented business model
data management method, as recited in independent claim 1. Bierenbaum
also teaches a computer program product and computer useable medium

Appeal 2009-012206
Application 11/230,446

20
with computer usable program code tangibly embodied therein configured to
perform the method of claim 1, as recited in independent claim 12.
(3) Claims 1-4 recite a computer-implemented method that locates
and executes data management rules to represent an identified business
object in a database, and are drawn to non-statutory subject matter.

DECISION
(1) The decision of the Examiner rejecting claims 12-15 under 35
U.S.C. § 101 as being directed to non-statutory subject matter is affirmed.
(2) The decision of the Examiner rejecting claims 1-4 and 12-15 under
35 U.S.C. § 102(e) is affirmed.
(3) The decision of the Examiner newly rejecting claims 1-4 under 35
U.S.C. § 101 as being directed to non-statutory subject matter is reversed.
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).

AFFIRMED

msc