Ex Parte Fredrickson et al

Board of Patent Appeals and Interferences

Jun 20, 2012

11238550 (B.P.A.I. Jun. 20, 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.
11/238,550 09/29/2005 J. Todd Fredrickson LOT920050064US1 (014) 8946
46321 7590 06/21/2012
CAREY, RODRIGUEZ, GREENBERG & O''KEEFE, LLP
STEVEN M. GREENBERG
950 PENINSULA CORPORATE CIRCLE
SUITE 2022
BOCA RATON, FL 33487
EXAMINER
STACE, BRENT S
ART UNIT PAPER NUMBER
2161
MAIL DATE DELIVERY MODE
06/21/2012 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 J. TODD FREDRICKSON, and PETER HAUMER
____________

Appeal 2009-011985
Application 11/238,5501
Technology Center 2100
____________

Before ST. JOHN COURTENAY III, CAROLYN D. THOMAS, and
DEBRA K. STEPHENS, Administrative Patent Judges.

THOMAS, Administrative Patent Judge.

DECISION ON APPEAL

1 The real party in interest is International Business Machines.
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Application 11/238,550

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STATEMENT OF THE CASE
Appellants seek our review under 35 U.S.C. § 134 of the Examiner’s
final decision rejecting claims 1-18, which are all the claims pending in the
application. We have jurisdiction over the appeal under 35 U.S.C. § 6(b).
We AFFIRM.
The present invention relates to the systematic management of
libraries of related method content and processes. See Spec., 1:¶[0001].
Claim 1 is illustrative:
1. A method management tool configured to produce a
process using descriptors comprising:
a plurality of source reusable method elements; and,
an arrangement of descriptors mirroring default structural
relationships of the source reusable method elements, each of
said descriptors configured to permit changes to said
arrangement between said descriptors without changing said
default structured relationships of said source reusable method
elements.

Appellants appeal the following rejections:

1. Claims 1-18 are rejected under 35 U.S.C. § 101 as being directed
to non-statutory subject matter; and
2. Claims 1-18 are rejected under 35 U.S.C. § 102(e) as being
anticipated by Kazakov (US Patent Pub. No. 2007/0180424 A1, Aug. 2,
2007, PCT filed Mar. 2, 2005). 2

2 In order to expedite matters, the dependency of claim 5 shall be construed
as being dependent upon claim 4.
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Based on Appellants’ arguments in the Appeal Brief, we will decide
the appeal on the basis of claims as noted below. See 37 C.F.R.
41.37(c)(1)(vii).
ANALYSIS
Rejection under 35 U.S.C. §101 - Claims 1-18
Issue 1: Did the Examiner err in concluding that the claims cover
non-statutory subject matter?

Appellants contend that “as to claims 1 through 6, a tool is recited
. . . .” (Reply Br. 5.) Appellants further contend that the claimed invention
“provides for a transformative effect . . .” (Id.)
The Examiner concludes that “Claim 1 recites a method process that
is not tied to another statutory class . . . nor does it transform underlying
subject matter . . . to a different state or thing.” (Ans. 3.) The Examiner
further concludes that “Claim 13 . . . is not limited to tangible
embodiments.” (Ans. 4.) We agree with the Examiner.

Regarding claims 1-6, Appellants’ Specification states that
“[e]mbodiments of the invention can take the form of . . . an entirely
software embodiment.” (Id. at ¶[0028].) As such, we find that Appellants’
invention as set forth in claims 1-6 may be construed to recite no more than
software. As such, 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 1354, 1361 (Fed. Cir. 1994). Stated
differently, a claim to a data structure per se is non-statutory. Id. at 1360-
61. Data structures not claimed as embodied in computer readable media are
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Application 11/238,550

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descriptive material per se and are not statutory because that are not capable
of causing functional change in the computer (id. at 1361).
Here, we find that Appellants are merely claiming software code not
embodied in a computer readable media. Therefore, claims 1-6 are non-
statutory.

Regarding claims 13-18, Appellants’ Specification discloses that
“[t]he medium can be . . . a propagation medium.” (Spec., 11:¶[0029].)
In other words, Appellants describe an embodiment that can include a signal.
However, signals are unpatentable under § 101. In re Nuijten, 500 F.3d
1346, 1355 (Fed. Cir. 2007). According to U.S. Patent & Trademark Office
(USPTO) guidelines:
A claim that covers both statutory and non-statutory
embodiments . . . embraces subject matter that is not eligible for
patent protection and therefore is directed to non-statutory
subject matter. . . . For example, a claim to a computer readable
medium that can be a compact disc or a carrier wave covers a
non-statutory embodiment and therefore should be rejected
under § 101 as being directed to non-statutory subject matter.

U.S. Patent & Trademark Office, Interim Examination Instructions for
Evaluating Subject Matter Eligibility Under 35 U.S.C. § 101, Aug. 2009, at
2, available at http://www.uspto.gov/web/offices/pac/dapp/opla/2009-08-
25_interim_101_instructions.pdf (emphasis in original) (“Interim
Instructions”).
Here, because the claims also cover non-statutory embodiments, i.e.,
signals, the claims are directed to non-statutory subject matter.

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As for claims 7-12, a computer-implemented method is recited.
However, simply using some computer-implemented method in some
undefined manner alone cannot confer patentability. More recently, claims
were held to be non-statutory where the claims recite only that the method is
“computer aided” without specifying any level of involvement or detail. In
considering patent eligibility under § 101, one must focus on the claims.
This is because a claim may “preempt” only that which the claims
encompass, not what is disclosed but left unclaimed. Dealertrack v. Huber,
674 F.3d 1315, 1334 (Fed. Cir. 2012). “Simply adding [computerized
sending and receiving steps] to a claim covering an abstract concept, without
more, is insufficient to render the claim patent eligible.” Id. at 1340.
As to the “computer-implemented method,” we further note that even
if some physical steps are required to obtain information from the database
(e.g., entering a query via a keyboard, clicking a mouse), such data-
gathering steps cannot alone confer patentability. CyberSource Corp. v.
Retail Decisions, Inc., 654 F.3d 1366, 1372 (Fed. Cir. 2011).
The “computer-implemented” modifier is comparable in scope to
“computer-aided” and so its inclusion in the preamble does not change the
outcome. Here, we find that the computer-implemented system is software
(a software system), and is therefore non-statutory subject matter.
Based on the record before us, we find no error in the Examiner’s
rejection under § 101.

Rejection under 35 U.S.C. §102(e) - Claims 1-18
Issue 2: Did the Examiner err in finding that Kazakov inherently
discloses default structured relationships, as claimed?
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Appellants contend that the “Examiner has made no attempt to prove
with evidence, external or intrinsic, that the teaching of ‘default structured
relationships’ is inherent to Kazakov.” (App. Br. 11.)
The Examiner found that the “‘[a]rrangement between descriptors’ are
taught in Kazakov, paragraph [0079] with the generation of ‘deployment
descriptors’ and/or the generation of ‘process-flow and workflow
descriptors.’” (Ans. 8.) The Examiner further found that “‘[d]efault
structured relationships’ are the relationships defined in modeling the
process in UML (the UML itself).” (Ans. 9.)
Here, we find that the Examiner has provided sufficient evidence,
beyond an inherency concept, both in the Final rejection (see pages 2-3) and
in the Answer (see pages 4-5 and pages 8-10) to support the proposition that
Kazakov discloses “default structured relationships.” Appellants have failed
to explain “why” such findings are in error in the principal Brief. We look
to Appellants’ Brief to show error in the proffered prima facie case. Only
those arguments actually made by Appellants have been considered in this
decision. Arguments which Appellants could have made but chose not to
make in the Brief have not been considered and are deemed to be waived.
See 37 C.F.R. § 41.37(c)(1)(vii).
On this record, we find Appellants have failed to present substantive
arguments and supporting evidence persuasive of Examiner error regarding
the aforementioned disputed limitation. See In re Lovin, 652 F.3d 1349,
1357 (Fed. Cir. 2011) (“we hold that the Board reasonably interpreted Rule
41.37 to require more substantive arguments in an appeal brief than a mere
recitation of the claim elements and a naked assertion that the corresponding
elements were not found in the prior art.”).
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We decline to examine the claims sua sponte, looking for distinctions
over the prior art. Cf. In re Baxter Travenol Labs., 952 F.2d 388, 391 (Fed.
Cir. 1991) (“It is not the function of this court to examine the claims in
greater detail than argued by an appellant, looking for [patentable]
distinctions over the prior art.”). See also Ex parte Belinne, No. 2009-
004693, 2009 WL 2477843 at *3-4 (BPAI Aug. 10, 2009) (informative).
Appellants’ arguments notwithstanding, we sustain the Examiner’s
anticipation rejection of independent claims 1, 7, and 13, for essentially the
same reasons argued by the Examiner, which we incorporate herein by
reference. (Ans. 8-10).
Based on the record before us, we find that the Examiner did not err in
rejecting claims 1-18. Accordingly, we affirm the rejections of claims 1-18.

DECISION
We affirm the Examiner’s § 101 and § 102(e) rejections.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv) .

AFFIRMED

Vsh