Ex Parte Davis et al

Board of Patent Appeals and Interferences

Apr 23, 2010

11086943 (B.P.A.I. Apr. 23, 2010)

1UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte TOMMY LEE DAVIS JR. and
DAVID EARL DOSER JR.
____________

Appeal 2009-007709
Application 11/086,943
Technology Center 3600
____________

Decided: April 23, 2010
____________

Before MURRIEL E. CRAWFORD, HUBERT C. LORIN, and
BIBHU R. MOHANTY, Administrative Patent Judges.

LORIN, Administrative Patent Judge.

DECISION ON APPEAL
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STATEMENT OF THE CASE
Tommy Lee Davis Jr, et al. (Appellants) seek our review under 35
U.S.C. § 134 (2002) of the final rejection of claims 6-23. We have
jurisdiction under 35 U.S.C. § 6(b) (2002).

SUMMARY OF DECISION
We REVERSE and add a new ground of rejection under 35 U.S.C.
§101.1

THE INVENTION
The invention relates to a system for the management of equipment.
Specification 1:10-11.
Claim 6, reproduced below, is illustrative of the subject matter on
appeal.
6. A method for database query formulation and access
comprising the steps of:
reading identification data from an identification
tag that uniquely identifies the identification tag;
querying a database to determine whether the
identification data is stored in the database;
storing classification data that identifies an item
associated with the identification tag with the
identification data if the identification data is not stored
in the database;

1 Our decision will make reference to the Appellants’ Appeal Brief (“App.
Br.,” filed may 13, 2008) and Reply Brief (“Reply Br.,” filed Oct. 7, 2008),
and the Examiner’s Answer (“Answer,” mailed Aug. 7, 2008).
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receiving a state identifier indicating a state of the
item associated with the identification tag if the
identification data is stored in the database;
determining whether a state of the state identifier is
an allowed state based on whether the item has been
checked out to a predetermined individual prior to the use
of the authenticated item by the predetermined individual
in a public performance, wherein the use of the item by
the predetermined individual in the public performance
transforms the item into a unique authenticated item;
modifying the state of the state identifier if the
state of the state identifier is not an allowed state; and
storing the state of the state identifier with the
identification data if the state of the state identifier is the
allowed state.

THE REJECTION
The Examiner relies upon the following as evidence of
unpatentability:
McKinley US 6,735,324 B1 May 11, 2004
Li US 2002/0111819 A1 Aug. 15, 2002
The following rejection is before us for review:
1. Claims 6-23 are rejected under 35 U.S.C. §103(a) as being
unpatentable over Li and McKinley.

ISSUES
Does the cited prior art disclose a database query formulation and
access comprising,
determining whether a state of the state identifier is an
allowed state based on whether [an] item has been
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checked out to a predetermined individual prior to the use
of the authenticated item by the predetermined individual
in a public performance, wherein the use of the item by
the predetermined individual in the public performance
transforms the item into a unique authenticated item;
[and] modifying the state of the state identifier if the state
of the state identifier is not an allowed state
(claim 6)

FINDINGS OF FACT
We rely on the Examiner’s factual findings stated in the Answer (See
Ans. 3-5).

PRINCIPLES OF LAW
Obviousness
Section 103 forbids issuance of a patent when ‘the differences
between the subject matter sought to be patented and the prior art are
such that the subject matter as a whole would have been obvious at
the time the invention was made to a person having ordinary skill in
the art to which said subject matter pertains.’
KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007). The question of
obviousness is resolved on the basis of underlying factual determinations
including (1) the scope and content of the prior art, (2) any differences
between the claimed subject matter and the prior art, and (3) the level of skill
in the art. Graham v. John Deere Co., 383 U.S. 1, 17-18 (1966). See also
KSR, 550 U.S. at 407 (“While the sequence of these questions might be
reordered in any particular case, the [Graham] factors continue to define the
inquiry that controls.”) The Court in Graham further noted that evidence of
secondary considerations “might be utilized to give light to the
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circumstances surrounding the origin of the subject matter sought to be
patented.” Graham, 383 U.S. at 17-18.

ANALYSIS
Process claims 6-13
The Examiner has pointed to paragraphs 8, 25, 29, 37, 39, and 61 of
Li and concluded that these passages disclose the claim limitations,
determining whether a state of the state identifier is an allowed state
based on whether [an] item has been checked out to a predetermined
individual prior to the use of the authenticated item by the
predetermined individual in a public performance, wherein the use of
the item by the predetermined individual in the public performance
transforms the item into a unique authenticated item;
[and] modifying the state of the state identifier if the state of the state
identifier is not an allowed state.
Claim 1. Answer 4 and 8. All the method claims include a state of the state
identifier in either an allowed or not in an allowed state.
We have carefully reviewed the Li passages that the Examiner cited
but have been unable to find any disclosure of a state of the state identifier in
either an allowed or not allowed state. The Table in Answer 7-8 is helpful in
explaining precisely what passages in Li the Examiner believes correspond
to the claim limitations. However, the Table does not make any further
association between anything disclosed in those passages and the claim
elements. For example, the Table does not explain what, in those Li
passages, the Examiner has identified as being a “state identifier” or a “state
of the state identifier” as those claim terms are reasonably broadly
construed, let alone how Li determines the state of the state identifier is or is
not in allowed state. Like the Appellants (e.g., App. Br. 13-15), we have
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been unable to discern in what way Li discloses these claim limitations.
Notwithstanding that the Examiner has concluded that Li in fact does
disclose these claim limitations. It was necessary to premise the Examiner’s
explanation (via the Table) with an analysis construing the claim terms such
that the claims are given the broadest reasonable construction in light of the
Specification as it would be interpreted by one of ordinary skill in the art at
the time of the invention. From such a foundation, the Examiner would have
been in a position to make the conclusion that Li discloses the claim
limitations as indicated in the Table. As it now stands, we are unable to find
the claim limitations at issue in the Li passages cited by the Examiner.
Accordingly, we reverse the rejection because a prima facie case of
obviousness has not been established.
System claims 14-23
The rejection of claims 14-23 suffers for the same reasons as the
rejection of claims 6-13. Here an “asset creation system” determines
whether a state of the state identifier is an allowed state. See independent
system claim 14. The Examiner does not appear to have separately
addressed the limitations in claim 14 but we presume the Examiner relies on
the analysis of claim 6. In that regard, given the record before us, we are
unable to find in paragraphs 8, 25, 29, 37, 39, and 61 of Li disclosure of an
“asset creation system” which functions to determine whether a state of the
state identifier is an allowed state. Accordingly, we reverse the rejection
because a prima facie case of obviousness has not been established.
We have noted the Appellants discussion about the means-plus-
function limitations in claims 14 and 19-23. App. Br. 10-13. We agree that
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these claims include means-plus-function language and this language must
first be construed, in accordance with 35 U.S.C. § 112, paragraph 6, if
invoked, before a determination can be made as to whether the prior art
would render the claimed subject matter obvious. See In re Donaldson, 16
F.3d 1189, 1193 (Fed. Cir. 1994) (en banc).
The plain and unambiguous meaning of paragraph six is that
one construing means-plus-function language in a claim must look to
the specification and interpret that language in light of the
corresponding structure, material, or acts described therein, and
equivalents thereof, to the extent that the specification provides such
disclosure. Paragraph six does not state or even suggest that the PTO
is exempt from this mandate, and there is no legislative history
indicating that Congress intended that the PTO should be.

That was not done. The Examiner did not apply the two-step claim
construction process to these claims. See Golight Inc. v. Wal-Mart Stores
Inc., 355 F.3d 1327, 1333-34 (Fed. Cir. 2004). Given that the means-plus-
function language was not addressed, the scope and meaning of the
limitations, as well as the claims as a whole were not determined.
Accordingly, the prior art disclosure was not compared to the claimed
subject matter given the claims’ broadest reasonable construction. As a
result, the Examiner did not meet the initial burden of establishing a prima
facie case of obviousness for the subject matter of these claims over Li and
McKinley. Cf. Gechter v. Davidson, 116 F.3d 1454, 1457-1460 (Fed. Cir.
1997).

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NEW GROUND
Pursuant to 37 C.F.R. § 41.50(b), we enter a new ground of rejection
of claims 6-13 under 35 U.S.C. § 101 as being directed to non-statutory
subject matter.
§ 101 - Patentable Subject Matter - Process
[T]he proper inquiry under § 101 is not whether the process claim
recites sufficient “physical steps,” but rather whether the claim meets
the machine-or-transformation test. [fn]25 As a result, even a claim
that recites “physical steps” but neither recites a particular machine or
apparatus, nor transforms any article into a different state or thing, is
not drawn to patent-eligible subject matter. Conversely, a claim that
purportedly lacks any “physical steps” but is still tied to a machine or
achieves an eligible transformation passes muster under § 101.
In re Bilski, 545 F.3d 943, 961 (Fed. Cir. 2008) (en banc).
Taking claim 6 as representative, we find that the claimed process is
not directed to statutory subject matter under §101 given the Bilski machine-
or-transformation test (see supra) for determining patent-eligibility of
processes under 35 U.S.C. §101. In our view, the process as claimed does
not transform an article into a different state or thing; and the language of
claim 6 does not limit any process step so as to tie it to any specific machine
or apparatus.
We are cognizant that the claims recite the term “database .” For
example, Claim 6 requires storing classification data in a database.
However, a “database” per se is not necessarily a “computer database” and
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according to the Webster’s New World Dictionary of Computer Terms2, a
“database” is defined as
A collection of related information about a subject organized in a
useful manner that provides a base or foundation for procedures, such
as retrieving information, drawing conclusions, making decisions.
Any collection of information that serves these purposes qualifies as a
database, even if the information isn’t stored on a computer. In fact,
important predecessors of today’s sophisticated business database
systems were files kept on index cards and stored in file cabinets.
Information usually is divided into data records, each with one or
more data fields.
(Emphasis added). Thus, the recitation of using a “database” per se in the
processes claimed does not necessarily tie the claimed process to any
particular machine. The ordinary and customary meaning of “data” is
information is supported by the Webster's New World Dictionary 352 (3rd
Ed. 1988.)(Entry for “data.”): “things known or assumed; facts or figures to
be processed; evidence, records, and statistics from which conclusions can
be inferred; information.”

CONCLUSIONS
We reverse the rejection of claims 6-23 under 35 U.S.C. §103(a) as
unpatentable over Li and McKinley.
We enter a new ground of rejection on claims 6-13 under 35 U.S.C.
§ 101.

2 Webster’s New World Dictionary of Computer Terms 142 (8th Ed.
2000.)(Entry for “database.”)
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DECISION
The decision of the Examiner to reject claims 6-23 is reversed.
We enter a new ground of rejection on claims 6-13 under 35 U.S.C.
§ 101.
This decision contains a new ground of rejection pursuant to
37 C.F.R. § 41.50(b) (effective September 13, 2004, 69 Fed. Reg. 49960
(August 12, 2004), 1286 Off. Gaz. Pat. Office 21 (September 7, 2004)). 37
C.F.R. § 41.50(b) provides “[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 ground of rejection
to avoid termination of the appeal 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
§ 41.52 by the Board upon the same record . . . .

REVERSED; 37 C.F.R. § 41.50(b)

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MR. CHRISTOPHER JOHN ROURK
JACKSON WALKER LLP
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