Ex Parte Chkodrov et al

Board of Patent Appeals and Interferences

Jan 26, 2012

10670276 (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.
10/670,276 09/26/2003 Gueorgui Bonov Chkodrov 13768.1085 4935
47973 7590 01/27/2012
WORKMAN NYDEGGER/MICROSOFT
1000 EAGLE GATE TOWER
60 EAST SOUTH TEMPLE
SALT LAKE CITY, UT 84111
EXAMINER
CHANNAVAJJALA, SRIRAMA T
ART UNIT PAPER NUMBER
2157
MAIL DATE DELIVERY MODE
01/27/2012 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 GUEORGUI BONOV CHKODROV,
RICHARD ZACHARY JASON, and ERIC ANTHONY REEL
____________

Appeal 2009-012722
Application 10/670,276
Technology Center 2100
____________

Before LANCE LEONARD BARRY, ST. JOHN COURTENAY III, and
CAROLYN D. THOMAS, Administrative Patent Judges.

COURTENAY, 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 non-
final rejection of claims 1-46, which are all the claims pending in the
application. We have jurisdiction under 35 U.S.C. § 6(b).
We Affirm.

Appeal 2009-012722
Application 10/670,276

2
Invention
Appellants’ invention relates generally to the field of monitoring a
workflow of a business or other organization. More particularly,
Appellants’ invention relates to viewing information about multiple
instances of an activity and for maintaining that information. (Spec. para.
[02]).

Representative Claim
1. A method for maintaining information regarding multiple instances of
an activity, each instance having an active condition in which information
about the instance is to be modified or an inactive condition in which
information about the instance is not to be modified, the method comprising:

creating a record in a first database table for each of the multiple
instances in the active condition, each record containing a field for each of a
plurality of data types, one or more of the fields in each active instance
record having a value indicative of the active condition;

assigning, for records of the multiple instances in the inactive
condition, values to the one or more fields indicative of the inactive
condition;

deleting from the first table records of instances having values in the
one or more fields indicative of the inactive condition thereby reducing a
size of the first database table to prevent degradation of response times when
database users access the records for the instances in the active condition;
and

creating, for records deleted from the first table, a corresponding
record in a second database table.

Appeal 2009-012722
Application 10/670,276

3
Rejections1
1. Claims 1-46 stand rejected under 35 U.S.C. §101 as being directed to
non-statutory subject matter.
2. Claims 1-19, 23-41, and 45 stand rejected under 35 U.S.C. §103(a) as
being unpatentable over Bello (US 6,477,525) and Nakano (US
2003/0217075).
3. Claims 20-22, 42-44, and 46 stand rejected under 35 U.S.C. §103(a)
as being unpatentable over by Bello, Nakano, and Colossi (US
2004/0139061).

35 U.S.C. § 101 Rejection

ISSUE
Did the Examiner err by concluding that claims 1-46 are
directed to non-statutory subject matter under § 101?

ANALYSIS
We begin our analysis by noting that the case law regarding § 101
continues to evolve. “[T]he Supreme Court has made clear that a patent
claim’s failure to satisfy the machine-or-transformation test is not dispositive
of the § 101 inquiry.” Cybersource Corp. v. Retail Decisions, Inc., 654 F.3d
1366, 1371 (Fed. Cir. 2011) (citing Bilski v. Kappos, 130 S.Ct. 3218, 3227
(2010)).

1 The Final Rejection included a rejection of claims 1-46 under §112, second
paragraph, and a provisional obviousness-type double patenting rejection of
claims 1, 23, 45, and 46 over claims 1, 18, 28, 34, and 39 of U.S. Pat.
Application 10/670,561. These rejections were withdrawn by the Examiner
and are therefore not before us. (Ans. 2-3)
Appeal 2009-012722
Application 10/670,276

4
Here, after reviewing the respective arguments made by the
Appellants and the Examiner,2 we apply the intervening guidance of our
reviewing courts: Thus, “regardless of what statutory category (‘process,
machine, manufacture, or composition of matter,’ 35 U.S.C. § 101) a claim’s
language is crafted to literally invoke, we look to the underlying invention
for patent-eligibility purposes.” Cybersource, 654 F.3d at 1374 (emphasis
added). Following the Federal Circuit’s recent approach in Cybersource,
654 F.3d at 1375, we analyze the underlying invention of each of
Appellants’ independent claims as a process.3
However, we are mindful that claim terms are not interpreted in a
vacuum, devoid of the context of the claim as a whole. See Hockerson-
Halberstadt, Inc. v. Converse Inc., 183 F.3d 1369, 1374 (Fed. Cir. 1999)
(“[p]roper claim construction . . . demands interpretation of the entire claim

2 The Examiner and the Appellants both refer to the “useful, concrete,
and tangible result” test associated with State Street Bank & Trust Co. v.
Signature Financial Group, Inc., 149 F.3d 1368, 1373 (Fed. Cir. 1998).
(See Ans. 4-5, App. Br. 15). However, our reviewing court has determined
that the “useful, concrete, and tangible result” test associated with State
Street is inadequate. In re Bilski, 545 F.3d 943, 959-960 (Fed. Cir. 2008)
(en banc); see also Bilski, 130 S.Ct. at 3231 (“[N]othing in today’s opinion
should be read as endorsing interpretations of § 101 that the [CAFC] has
used in the past. See, e.g., State Street, 149 F.3d, at 1373; AT&T Corp., 172
F.3d, at 1357.”). Accordingly, we decline to apply State Street in our
analysis here.

3 Regarding the Examiner’s rejection under § 101, we select representative
claim 1 to decide the appeal for this group. See 37 C.F.R. § 41.37(c)(1)(vii).

Appeal 2009-012722
Application 10/670,276

5
in context, not a single element in isolation.”); ACTV, Inc. v. Walt Disney
Co., 346 F.3d 1082, 1088 (Fed. Cir. 2003) (“While certain terms may be at
the center of the claim construction debate, the context of the surrounding
words of the claim also must be considered....”).
In considering the language of independent claim 1 as a whole, we
conclude that the process of claim 1 “could be performed by a human
writing on a piece of paper”4 (e.g., “creating a record in a first database
table” and “assigning, for records of multiple instances in the inactive
condition, values to the one or more fields indicative of the inactive
condition”). Our reviewing court guides that “a method that can be
performed by human thought alone is merely an abstract idea and is not
patent-eligible under § 101.” Cybersource, 654 F.3d at 1373. Because we
conclude that the scope of claim 1’s method steps covers functions that can
be performed in the human mind, or by a human using a pen and paper (e.g.,
a database table represented using pen and paper), we conclude that
unpatentable mental processes fall within the subject matter of claim 1.5

4 “Phenomena of nature, though just discovered, mental processes, and
abstract intellectual concepts are not patentable, as they are the basic tools of
scientific and technological work.” In re Ferguson, 558 F.3d 1359, 1363
(Fed. Cir. 2009) (quoting Gottschalk v. Benson, 409 U.S. 63, 67 (1972)).

5 See Cybersource, 654 F.3d at 1372 (“It is clear that unpatentable mental
processes are the subject matter of claim 3. All of claim 3’s method steps
can be performed in the human mind, or by a human using a pen and paper.
Claim 3 does not limit its scope to any particular fraud detection algorithm,
and no algorithms are disclosed in the ’154 patent’s specification. Rather,
the broad scope of claim 3 extends to essentially any method of detecting
credit card fraud based on information relating past transactions to a
particular “Internet address,” even methods that can be performed in the
human mind.”); see also In re Nuijten, 500 F.3d 1346, 1354 (Fed. Cir. 2007)
Appeal 2009-012722
Application 10/670,276

6
We observe that independent claim 23 also includes a nominal
recitation of “a computer readable medium.” Because claims 23-44 are
directed to computer-readable instructions stored on a medium, these claims
are characterized by some as “Beauregard claims.”6
When we analyze the underlying invention of independent claim 23,7
we again conclude that the scope of the recited steps covers functions that
can be performed in the human mind, or by a human using a pen and paper
(e.g., see claim 23: “creating a record in a first database table for each of
multiple instances of an activity”). Therefore, we conclude that
unpatentable mental processes fall within the subject matter of independent
claim 23.
Although the “data processing apparatus” recited in independent claim
45 includes nominal recitations of conventional hardware in the body of the
claim (e.g., “at least one data storage device,” “at least one user input
device,” and “a processor”), we again look to the underlying invention for
patent-eligibility purposes.8

(“The four categories [of § 101] together describe the exclusive reach of
patentable subject matter. If a 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.”) .

6 See In re Beauregard, 53 F.3d 1583 (Fed. Cir. 1995).

7 See Cybersource, 654 F.3d at 1375.

8 See id. at 1374.
Appeal 2009-012722
Application 10/670,276

7
In analyzing the underlying invention of independent “apparatus”
claim 45 as a process,9 we again conclude that the scope of the recited
functions (steps) covers functions that can be performed in the human mind,
or by a human using a pen and paper, similar to claim 1. See also
Dealertrack, Inc. v Huber, No. 2009-1566, -1588, 2012 WL 164439, at *17
(Fed. Cir. Jan. 20, 2012)(“Simply adding a ‘computer aided’ limitation to a
claim covering an abstract concept, without more, is insufficient to render
the claim patent eligible.”).
Therefore, in following the recent guidance of our reviewing court, we
conclude that unpatentable mental processes fall within the subject matter of
independent claim 45.
Moreover, given the unbounded scope of the claimed “information
regarding multiple instances of an activity” (see claims 1 and 45 and the
similar language of claim 23), we are of the view that claims 1-46 are invalid
as being directed to an abstract idea preemptive of a fundamental concept or
idea that would foreclose innovation. Cf. Dealertrack, 2012 WL 164439, at
*16 (“In this case, however, we are compelled to conclude that the claims
are invalid as being directed to an abstract idea preemptive of a fundamental
concept or idea that would foreclose innovation in this area.”).
For these reasons, we affirm the Examiner’s rejection of claims 1-46
under §101 as being directed to non-statutory subject matter.

9 See id. at 1375.
Appeal 2009-012722
Application 10/670,276

8
Obviousness Rejections
Claims 1-19, 23-41, and 45
ISSUE
Under §103, did the Examiner err by finding that the cited
combination of Bello and Nakano would have taught or suggested deleting
from the first table records of instances having values in the one or more
fields indicative of the inactive condition thereby reducing the size of the
first database table to prevent degradation of response times when database
users access the records for the instances in the active condition? (See App.
Br. 19; claim 1; see also the commensurate language recited in independent
claims 23 and 45).

ANALYSIS
We reverse the Examiner’s §103 rejection of each independent claim
on appeal for essentially the same reasons argued by Appellants. (App. Br.
19-20). On this record, we agree with Appellants that the cited combination
of references (principally Bello) do not teach or suggest the disputed
limitation of deleting “instances” in the “inactive condition” as claimed. In
particular, we agree with Appellants that “the cited portion of Bello [at col.
15, ll. 18-22] . . . is directed to rewriting a query to remove duplicate
common section rows from a materialized view, as opposed to deleting from
the first table records of instances having values in the one or more fields
indicative of the inactive condition.” (App. Br. 19).
Based on this record, we reverse the Examiner’s §103 rejection of
independent claims 1, 23, and 45 and associated dependent claims 2-19 and
24-41.
Appeal 2009-012722
Application 10/670,276

9
Claims 20-22, 42-44, and 46

Dependent claims 20-22, 42-44, and 46 stand rejected under §103 as
being unpatentable over Bello, Nakano and Colossi. We do not find, nor has
the Examiner established, that the Colossi reference cures the deficiencies of
Bello and Nakano discussed above. Accordingly, we reverse the
obviousness rejection of dependent claims 20-22, 42-44, and 46 for the same
reasons as discussed above regarding independent claims 1, 23, and 45.

DECISION
We affirm the Examiner’s rejection of claims 1-46 under 35 U.S.C.
§101.
We reverse the Examiner’s §103(a) rejections of claims 1-46.
Because we have affirmed at least one ground of rejection with
respect to each claim on appeal, the Examiner’s decision is affirmed.
See 37 C.F.R. § 41.50(a)(1).
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).

ORDER
AFFIRMED

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