Ex Parte Hemmat

Board of Patent Appeals and Interferences

Oct 13, 2009

10429615 (B.P.A.I. Oct. 13, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte MERZAD HEMMAT
____________

Appeal 2009-003911
Application 10/429,615
Technology Center 3600
____________

Decided: October 13, 2009
____________

Before HUBERT C. LORIN, LINDA E. HORNER, and
ANTON W. FETTING, Administrative Patent Judges.

HORNER, Administrative Patent Judge

DECISION ON APPEAL
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STATEMENT OF THE CASE
Merzad Hemmat (Appellant) seeks our review under 35 U.S.C. § 134
of the Examiner’s decision rejecting claims 1-18. We have jurisdiction
under 35 U.S.C. § 6(b) (2002).

SUMMARY OF DECISION
We AFFIRM.

THE INVENTION
Appellant’s claimed invention is a method for defining and selecting
integrated potential software, hardware, and networking approaches for
addressing a business need. Spec. 5, para. 0016. Claim 1, reproduced
below, is representative of the subject matter on appeal.
1. A process for defining and selecting integrated potential
software, hardware, and networking approaches for addressing a
business need comprising:
providing an identification of a business need to at least
one conceptual architect in a concept document, the concept
document provided to the at least one conceptual architect
including
context information regarding where the
business need fits into an enterprise and with
related projects,
target information regarding what the
intended market uses and volumes are for the
business need, and
detailed information on capabilities and
constraints that the business need is introducing;
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the at least one conceptual architect identifying the
potentially impacted business domains using the context
information, target information, and the capabilities and
constraints information provided in the concept document;
holding a meeting which includes a representative of IT, a
representative of network, and a representative of operations
from each potentially impacted business domain wherein the
meeting results in additions to the concept document identifying
at least one proposed approach, the additions to the concept
document including
architectural approaches to each proposed
approach encompassing network and information
technology (IT) perspectives;
critical functional impacts of each proposed
approach; and
required or desired testing for each proposed
approach;
identifying impacted systems for each proposed approach
by examining the additions to the concept document including
the architectural approaches, the critical function impacts, and
the testing for each proposed approach;
providing the entire concept document to representatives
of each impacted system for feedback before final selection of a
proposed approach or initiation of efforts to implement a
proposed approach; and
selecting a final selection from the at least one proposed
approach with a view of the long-range plans and overall
direction of an enterprise rather than to a specific problem.

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THE REJECTIONS
Appellant seeks review of the following rejections:
1. The Examiner’s rejection of claims 1-181 under 35 U.S.C. § 101 as
being directed to patent ineligible subject matter.
2. The Examiner’s rejection of claims 1-18 under 35 U.S.C. § 112,
second paragraph, as being indefinite.
3. The Examiner’s rejection of claims 1-18 under 35 U.S.C. § 103(a) as
being unpatentable over U.S. Patent No. 6,405,364 B1 to Bowman-
Amuah, issued June 11, 2002.

ISSUES
For each ground of rejection, Appellant argues all of the claims as a
single group. We select claim 1 as representative, and claims 2-18 stand or
fall with claim 1. 37 C.F.R. § 41.37(c)(1)(vii) (2008).
The Examiner found that the subject matter of claims 1-18 is not
directed to patent eligible subject matter because the claimed method is not
concrete or repeatable with a reasonable degree of repeatability. Ans. 3-4.
Appellant contends the claimed method is patentable because it produces a
result that is repeatable or predictable and is therefore concrete. App. Br. 19.
The Examiner found that claims 1-18 are indefinite because (1) it is
not clear how many approaches are called for in the claims, and (2) the claim

1 The Examiner corrected a typographical error in the final office action,
from which this appeal is taken, to clarify that the rejection of the claims
under 35 U.S.C. § 101 includes a rejection of claim 18. Ans. 3.
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requirement that the selection of an approach is to be made not with a view
to a specific problem is inconsistent with rest of the claim that calls for the at
least one proposed approach to be directed to addressing the specific
business need identified in the concept document. Ans. 4-5. Appellant
contends that (1) “it is clear that the phrase ‘each proposed approach’
individually refers to the one or more approaches covered by the phrase ‘at
least one approach’” and (2) “there is not a contradiction in selecting a final
approach which addresses a specific problem based on the long-range plans
and overall direction of the enterprise rather than to a specific problem.”
App. Br. 20-21.
The Examiner concluded that the claimed method would have been
obvious in view of the teachings of Bowman-Amuah. Ans. 5-13. Appellant
challenges the Examiner’s articulation of obviousness in view of Bowman-
Amuah. App. Br. 25-35.
The issues presented by this appeal are:
Has Appellant shown the Examiner erred in concluding that claim 1 is
directed to patent ineligible subject matter?
Has Appellant shown the Examiner erred in concluding that claim 1 is
indefinite?
Has Appellant shown the Examiner erred in concluding that the
subject matter of claim 1 would have been obvious in view of Bowman-
Amuah?
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FINDINGS OF FACT
We find that the following enumerated findings are supported by at
least a preponderance of the evidence. Ethicon, Inc. v. Quigg, 849 F.2d
1422, 1427 (Fed. Cir. 1988) (explaining the general evidentiary standard for
proceedings before the Office).
1. Bowman-Amuah teaches:
Data elements [used in software development]
should usually be controlled by the Repository
Management team, because they are the basic
building blocks of the system and have broad
reuse. Poorly defined data elements can cause
inconsistency, redundancy, and generation errors.
Data elements should therefore be located at least
by the time construction starts, and possibly
earlier, depending on the discipline of the team
Bowman-Amuah, col. 20, ll. 11-17.
2. Bowman-Amuah then discloses that “[w]henever a data element is
changed, impact analysis must be performed to understand the
side-effects. Where-used reports are useful to determine these
side-effects.” Bowman-Amuah, col. 20, ll. 43-45.

PRINCIPLES OF LAW
The law in the area of patent-eligible subject matter for process claims
has been clarified by the Federal Circuit in In re Bilski, 545 F.3d 943 (Fed.
Cir. 2008) (en banc), cert. granted, 129 S. Ct. 2735 (U.S. Jun. 1, 2009)
(No. 08-964). The en banc court in Bilski held that “the machine-or-
transformation test, properly applied, is the governing test for determining
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patent eligibility of a process under § 101.” Id. at 956. The court in Bilski
further held that “the ‘useful, concrete and tangible result’ inquiry is
inadequate [to determine whether a claim is patent-eligible under § 101.]”
Id. at 959-60. The court explained the machine-or-transformation test as
follows: “A claimed process is surely patent-eligible under § 101 if: (1) it is
tied to a particular machine or apparatus, or (2) it transforms a particular
article into a different state or thing.” Id. at 954 (citations omitted).
The test for definiteness under 35 U.S.C. § 112, second paragraph, is
whether “those skilled in the art would understand what is claimed when the
claim is read in light of the specification.” Orthokinetics, Inc. v. Safety
Travel Chairs, Inc., 806 F.2d 1565, 1576 (Fed. Cir. 1986) (citations
omitted).
[W]e employ a lower threshold of ambiguity when reviewing a
pending claim for indefiniteness than those used by post-
issuance reviewing courts. In particular, rather than requiring
that the claims are insolubly ambiguous, we hold that if a claim
is amenable to two or more plausible claim constructions, the
USPTO is justified in requiring the applicant to more precisely
define the metes and bounds of the claimed invention by
holding the claim unpatentable under 35 U.S.C. § 112, second
paragraph, as indefinite.
Ex parte Miyazaki, 89 USPQ2d 1207, 1211 (BPAI 2008).
“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
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(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, (3)
the level of skill in the art, and (4) where in evidence, so-called secondary
considerations. 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.”)

ANALYSIS
Rejection of claims 1-18 under 35 U.S.C. § 101
Claim 1 recites a method for organizing human activity to define and
select integrated potential software, hardware, and networking approaches
for addressing a business need. As in Bilski, the method steps are not tied to
a particular machine and do not result in a transformation of an article to a
different state or thing. Rather, the claim is directed to a method for
selecting an approach to address a business need, in which the business need
and other information is outlined in a concept document that is provided to
various stakeholders, meetings are held to discuss proposed approaches,
further information is added to the concept document, and then a final
selection of an approach is made. The claim does not involve the use of any
machine or apparatus. Further, the claim does not involve the
transformation of any physical objects or substances. As the court in Bilski
noted, “[p]urported transformations or manipulations simply of public or
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private legal obligations or relationships, business risks, or other such
abstractions cannot meet the test because they are not physical objects or
substances, and they are not representative of physical objects or
substances.” 545 F.3d at 963. Thus, the method of claim 1 fails the
machine-or-transformation test and is not directed to patent-eligible subject
matter under 35 U.S.C. § 101. Claims 2-18 fall with claim 1.

Rejection of claims 1-18 under 35 U.S.C. § 112, second paragraph
Claim 1 recites the step of holding a meeting to identify “at least one
proposed approach” for addressing a business need. One having ordinary
skill in the art would understand this claim recitation to mean that one or
more proposed approaches will result from the meeting. The claim then
refers to adding information to the concept document for “each proposed
approach,” identifying impacted systems “for each proposed approach,” and
selecting a final selection from “the at least one proposed approach.” To
“select” ordinarily means “[t]o take as a choice from among several; pick
out.” The American Heritage Dictionary of the English Language (4th ed.
2000). In the event that only one approach is proposed at the meeting, it is
unclear how the step of selecting a final selection would be performed,
because with only one proposed approach, it is not possible to select that
proposed approach from among several (or at least two) possible
approaches.
Even if one having ordinary skill in the art were to understand that the
step of selecting a final selection from a single proposed approach involves
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simply selecting that sole proposed approach as the final approach, the claim
is still internally inconsistent because the one proposed approach is selected
to address a specific business need, yet the last step of claim 1 further recites
that the final selection is made “with a view of the long-range plans and
overall direction of an enterprise rather than to a specific problem.” If the
proposed approach was initially proposed to address a specific problem, and
if it is the sole approach from which the final selection can be made, then
this approach is necessarily selected with a view to the specific problem. As
such, it is unclear how the claim can be met when only a single approach is
proposed.
Appellant tries to explain this final step of the claim by way of
example in the Reply Brief. Reply Br. 13-14. In particular, Appellant says
that if the long range plans and overall direction of an enterprise are “to meet
all legal mandates,” then the one approach may be the only approach for
satisfying the business need while at the same time being the only approach
that meets a legal mandate. This example is not in keeping with the claimed
method because the example seems to imply that the persons proposing the
one proposed approach already took into account the long range plans and
overall direction of the enterprise in ruling out other possible approaches that
met the identified business need but that did not “meet all legal mandates.”
The claim, however, recites that the “at least one proposed approach” is
identified at a meeting based on the concept document, which provides an
identification of a specific business need. The claim does not refer to the
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long range plans and overall direction of an enterprise until the last step of
the method.
The other example provided by Appellant is one in which the long
range plans and overall direction of an enterprise are to “upgrade legacy
systems.” Reply Br. 14. Appellant contends that “[i]f the one approach is
the only approach for satisfying a business need of upgrading a billing
system, then the one approach is selected in order to conform to the long
range plans and overall direction of the enterprise of upgrading legacy
systems.” This example is also not in keeping with the claimed method
because the example presumes that the business need and the long range
plans and overall direction are the same, viz, to upgrade systems. The claim,
however, requires that the step of selecting occurs “with a view of the long-
range plans and overall direction of an enterprise rather than to a specific
problem.” This claim recitation implies that the long range plans and overall
direction are different from the specific problem (i.e., business need). We
are not persuaded by Appellant’s examples that the Examiner erred in
concluding that the claim is internally inconsistent such that one having
ordinary skill in the art would not understand what is claimed when the
claim is read in light of the Specification.
As such, we agree with the Examiner that claim 1 is indefinite for
failing to particularly point out and distinctly claim the invention.
Claims 2-18 fall with claim 1.

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Rejection of claims 1-18 under 35 U.S.C. § 103
Independent claim 1 recites “identifying impacted systems for each
proposed approach by examining the additions to the concept document
including the architectural approaches, the critical function impacts, and the
testing for each proposed approach.” Claims 11 and 18 similarly recite
holding a meeting wherein a plan is created that establishes at least one
potential approach to the concept and “the systems that are actually
impacted.” In each claim, this information about the impacted systems is
added to the concept document prior to making a final selection of an
approach.
The Examiner pointed to the disclosure in column 20, lines 43-54 to
support the finding that Bowman-Amuah discloses identifying impacted
systems for each proposed approach. This portion of Bowman-Amuah does
not disclose identification of impacted systems for a proposed approach for
addressing a business need. Rather, the reference is disclosing that once a
change has been made to a data element, the where-used report determines
the impact of the change on all of the components affected by that changed
(Facts 1, 2). We fail to see, absent hindsight, how this disclosure in the prior
art would have led one having ordinary skill in the art to identify systems
impacted by each proposed approach prior to making a final selection of an
approach. As such, we will not sustain the rejection of claims 1-18 under
35 U.S.C. § 103.

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CONCLUSIONS
Appellant has failed to show the Examiner erred in concluding that
claim 1 is directed to patent ineligible subject matter.
Appellant has failed to show the Examiner erred in concluding that
claim 1 is indefinite.
Appellant has shown the Examiner erred in concluding that the
subject matter of claim 1 would have been obvious in view of Bowman-
Amuah.

DECISION
The decision of the Examiner to reject claims 1-18 is affirmed.

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) (2007).

AFFIRMED

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