Ex Parte Kirkconnell-Ewing et alDownload PDFPatent Trial and Appeal BoardJul 30, 201309796165 (P.T.A.B. Jul. 30, 2013) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________________ Ex parte NANCY KIRKCONNELL-EWING, KYLE NEAL, and LYNN SAUDER ____________________ Appeal 2010-012011 Application 09/796,165 Technology Center 3600 ____________________ Before: JAMES P. CALVE, JILL D. HILL, and BEVERLY M. BUNTING, Administrative Patent Judges. BUNTING, Administrative Patent Judge. DECISION ON APPEAL Appeal 2010-012011 Application 09/796,165 2 STATEMENT OF CASE Appellants appeal under 35 U.S.C. § 134 from a rejection of claims 11-36. We have jurisdiction under 35 U.S.C. § 6(b). We DISMISS and enter a NEW GROUND OF REJECTION of claims 26-30 pursuant to our authority under 37 C.F.R. § 41.50(b). CLAIMED SUBJECT MATTER The claims are directed to a system and method for aiding customers in defining problems and finding solutions. Claim 26, reproduced below, is illustrative of the claimed subject matter: 26. A web server including computer readable media, comprising: logic configured to prompt a customer via a web site to provide information about its business and a business problem the customer is experiencing; logic configured to receive customer responses to the prompts entered via the web site; logic configured to automatically cross-reference the customer responses with problem definitions and available business solutions offered via the web site to determine a set of problem definitions and potential solutions to the problems; and logic configured to present the set of problem definitions and potential business solutions to the customer for review. REFERENCES Kelman US 2004/0093255 A1 May 13, 2004 Inference Corporation, CBR Express® Knowledge Creation (Feb. 2, 1999), found at http://web.archive.org/web/19990202201458/ www.inference.com/products/knowc_3.5.html (hereinafter “Inference Reference U”). Appeal 2010-012011 Application 09/796,165 3 Inference Corporation, Products: k-Commerce. SUPPORT (Oct. 8, 1999), found at http://web.archive.org/web/19991008044805/ www.inference.com/products/web.html (hereinafter “Inference Reference V”). Inference Corporation, Inference Acquires Web-based e-Commerce Sales Company and Announces Preliminary First Quarter Results (Oct. 13, 1999), found at http://web.archive.org/web/19991013155249/ www.inference.com/news/press_releases/ (hereinafter “Inference Reference W”). Arons et al., Implementation and Results of a Prototype Expert System on Strategic Analysis, Erasmus University Rotterdam-Faculty of Economics, 1- 21 (1998) (hereinafter “Arons”). VAR.CODE, Internet/Extranet/Intranet servers, software, network connectivity, outsourcing, education and consulting services), found at http://web.archive.org/web/19980123220916/http://www.resell.net (hereinafter “Var.Code”). Business Editors, VAR.CODE debuts first Internet value-added distributor for resellers, Business Wire (Nov. 5, 1996) (hereinafter “Business Wire”). Resellers Network, Partner Program (Jan. 23, 1998), found at http://web.archive.org/web/19980123221402/www.resell.net/varprgrm.htm (hereinafter “Partner Program”). Resellers Network, Server Software (Jan. 23, 1998), found at:http://web.archive.org/web/19980123221135/www.resell.net/clntserv.htm (hereinafter “Server Software”). REJECTIONS The Examiner made the following rejections: I. Claims 11-25 and 31-36 are rejected under 35 U.S.C. § 101. Ans. 10-11.1 1 All references to “Ans.” are to the Examiner’s Answer mailed June 7, 2010 in response to the Administrative Remand mailed May 27, 2010. Appeal 2010-012011 Application 09/796,165 4 II. Claims 11-16 are rejected under 35 U.S.C. § 112, second paragraph, as being indefinite. Ans. 3-5, 7-10. III. Claims 11-15, 17, 21-24 and 26-29 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Inference Reference U, Inference Reference V, and Inference Reference W. Ans. 12- 18. IV. Claims 18-20 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Inference U, Inference Reference V, Inference Reference W, and Arons. Ans. 18-23. V. Claims 16, 25 and 30 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Inference Reference U, Inference Reference V, Inference Reference W, and Kelman. Ans. 23-24. VI. Claims 31-34 and 36 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Inference Reference U, Inference Reference V, Inference Reference W, and Var.Code, as illustrated by Business Wire, Partner Program, and Server Software. Ans. 24-29. VII. Claim 35 is rejected under 35 U.S.C. § 103(a) as being unpatentable over Inference Reference U, Inference Reference V, Inference Reference W, Var.Code, and Kelman. Ans. 29-31. ANALYSIS I. Claims 11-25 and 31-36: Non-Statutory Subject Matter Following the first administrative remand of the Appeal on May 29, 2009, the Examiner entered a new ground of rejection in the Second Examiner’s Answer against claims 11-25 and 31-36 under 35 U.S.C. § 101 Appeal 2010-012011 Application 09/796,165 5 as being directed to nonstatutory subject matter. Second Ans. 3.2 The Second Examiner’s Answer properly gave notice to the Appellants of the new ground of rejection and the Technology Center Director approved the new ground. Second Ans. 35-37. The Second Examiner’s Answer advised that Appellants were required to respond to the new ground within two months in either of two ways: 1) reopen prosecution by filing a reply under 37 C.F.R. § 1.111 (see 37 C.F.R. § 41.39(b)(1)); or 2) maintain the appeal by filing a reply brief as set forth in 37 C.F.R. § 41.41 (see 37 CFR 41.39(b)(2)), “to avoid sua sponte dismissal of the appeal as to the claims subject to the new ground of rejection.” Second Ans. 35-36; see 37 C.F.R. § 41.39(b). According to the record before us, neither option was exercised. Therefore, the appeal as to claims 11-25 and 31-36, which are subject to the Examiner’s New Ground of Rejection under 35 U.S.C. § 101 as being directed to nonstatutory subject matter, stands dismissed. NEW GROUND OF REJECTION UNDER 37 C.F.R. § 41.50(b) We enter a new ground of rejection for independent claim 26 and dependent claims 27-30 as unpatentable under 35 U.S.C. § 101 for being drawn to nonstatutory abstract subject matter, so as to provide Appellants with a full and fair opportunity to respond to the thrust of the rejection. See In re Kronig, 539 F.2d 1300, 1302 (CCPA 1976) (“the ultimate criterion of whether a rejection is considered ‘new’ in a decision by the board is whether appellants have had [a] fair opportunity to react to the thrust of the rejection.”). 2 All references to “Second Ans.” are to the Second Examiner’s Answer, mailed June 12, 2009, in response to the Administrative Remand mailed May 29, 2009. Appeal 2010-012011 Application 09/796,165 6 Under the Patent Act of 1952, subject matter patentability is a threshold requirement. “Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.” 35 U.S.C § 101. The Federal Circuit Court concluded that: A transitory, propagating signal like Nuijten’s is not a “process, machine, manufacture, or composition of matter.” Those four categories define the explicit scope and reach of subject matter patentable under 35 U.S.C. § 101; thus, such a signal cannot be patentable subject matter. In re Nuijten, 500 F.3d 1346, 1357 (Fed. Cir. 2007). Subsequent to the court’s decision in Nuijten, the USPTO has issued additional guidance.3 Specifically, the USPTO guidance states: The United States Patent and Trademark Office (USPTO) is obliged to give claims their broadest reasonable interpretation consistent with the specification during proceedings before the USPTO. See In re Zletz, 893 F.2d 319 (Fed. Cir. 1989) (during patent examination the pending claims must be interpreted as broadly as their terms reasonably allow). The broadest reasonable interpretation of a claim drawn to a computer readable medium (also called machine readable medium and other such variations) typically covers forms of non-transitory tangible media and transitory propagating signals per se in view of the ordinary and customary meaning of computer readable media, particularly when the specification is silent. See MPEP 2111.01. When the broadest reasonable interpretation of a claim covers a signal per se, the claim must be rejected under 35 U.S.C. § 101 as covering non-statutory subject matter. See In re 3 See David J. Kappos, Subject Matter Eligibility of Computer Readable Media, 1351 Off. Gaz. Pat. Office 212 (Feb. 23, 2010)(“OG Notice”)(citation omitted), available at http:// www.uspto.gov/web/offices/com/sol/og/2010/week08/TOC.htm#ref20 Appeal 2010-012011 Application 09/796,165 7 Nuijten, 500 F.3d 1346, 1356-57 (Fed. Cir. 2007) (transitory embodiments are not directed to statutory subject matter) and Interim Examination Instructions for Evaluating Subject Matter Eligibility Under 35 U.S.C. § 101, Aug. 24, 2009; p. 2. Independent Claim 26 recites “[a] web server including computer readable media.” Appellants’ Specification discloses that “computer- readable medium” “can be any means 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. 10, ll. 3-5. Additional examples of computer readable medium include: for example but not limited to, an electronic, magnetic, optical, electromagnetic, infrared, or semiconductor system, apparatus, device, or propagation medium. More specific examples (a non exhaustive list) of the computer-readable medium would include the following: an electrical connection (electronic) having one or more wires, a portable computer diskette (magnetic), a random access memory (RAM) (magnetic), a read-only memory (ROM) (magnetic), an erasable programmable read-only memory (EPROM or Flash memory) (magnetic), an optical fiber (optical), and a portable compact disc read-only memory (CDROM) (optical). Note that the 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. Spec. 10, ll. 6-18. Giving claim 26 the broadest reasonable construction, consistent with Appellants’ Specification, we find that claim 26 encompasses transitory propagating signals and does not specifically preclude the claimed logic from being embodied in transitory media. Appeal 2010-012011 Application 09/796,165 8 Since claim 26, as we have construed it above, encompasses a propagating, transitory signal, we find claim 26 is directed to non-statutory subject matter. Dependent claims 27-30 also are directed toward non- statutory subject matter for the same reasons. II. Claims 11-16 under 35 U.S.C. § 112, second paragraph Since claims 11-16 stand dismissed for Appellants’ failure to respond to the Examiner’s New Ground of Rejection of those claims under 35 U.S.C. § 101, we do not address the rejection of claims 11-16 under 35 U.S.C. § 112.4 III. Claims 11-15, 17, 21-24 and 26-29 under 35 U.S.C. § 103(a) Claims 11-15, 17, and 21-24 Since claims 11-15, 17, and 21-24 stand dismissed, for Appellants’ failure to respond to the Examiner’s New Ground of Rejection of those claims under 35 U.S.C. § 101, we do not address the rejection of claims 11- 15, 17, and 21-24 under 35 U.S.C. § 103(a). Claims 26-29 As claims 26-29 are subject to a New Grounds of Rejection as being directed to nonpatentable subject matter under § 101, we do not reach the question of whether claims 26-29 are obvious under § 103. See In re Comiskey, 554 F.3d 967, 973 (Fed. Cir. 2009) (“We do not reach the ground relied on by the Board below-that the claims were unpatentable as obvious 4 Following the Administrative Remand on May 27, 2010, the Examiner entered a new ground of rejection in the Examiner’s Answer mailed June 7, 2010 against claims 11-16 under 35 U.S.C. § 112, second paragraph, as being indefinite. Ans. 3. Appeal 2010-012011 Application 09/796,165 9 over Ginter in view of Walker, Perry, and ‘Arbitration Fee Schedule’- because we conclude that many of the claims are ‘barred at the threshold by § 101.’”); Ex Parte Gutta, 93 USPQ2d 1025, 1036 (BPAI 2009) (precedential) (same). IV. Claims 18-20 under 35 U.S.C. § 103(a) Since claims 18-20 stand dismissed for Appellants’ failure to respond to the Examiner’s New Ground of Rejection of those claims under 35 U.S.C. § 101, we do not address the rejection of claims 18-20 under 35 U.S.C. § 103(a). V. Claims 16, 25 and 30 under 35 U.S.C. § 103(a) Claims 16 and 25 Since claims 16 and 25 stand dismissed for Appellants’ failure to respond to the Examiner’s New Ground of Rejection of those claims, we do not address the rejection of claims 16 and 25 under 35 U.S.C. § 103(a). Claim 30 As claim 30 is subject to a New Ground of Rejection as being directed to nonpatentable subject matter under § 101, we do not reach the question of whether claim 30 is obvious under § 103. VI. Claims 31-34 and 36 under 35 U.S.C. 103(a) Since claims 31-34 and 36 stand dismissed for Appellants’ failure to respond to the Examiner’s New Ground of Rejection of those claims under 35 U.S.C. § 101, we do not address the rejection of claims 31-34 and 36 under 35 U.S.C. § 103(a). Appeal 2010-012011 Application 09/796,165 10 VII. Claim 35 under 35 U.S.C. 103(a) Since claim 35 stands dismissed for Appellants’ failure to respond to the Examiner’s New Ground of Rejection of those claims under 35 U.S.C. § 101, we do not address the rejection of claim 35 under 35 U.S.C. §103(a). DECISION A NEW GROUND OF REJECTION has been entered for claims 26- 30 under 35 U.S.C. § 101. The appeal as to claims 11-25 and 31-36 is dismissed. Upon return of the application to the Examiner, the Examiner should cancel claims 11-25 and 31-36. This decision contains a NEW GROUND OF REJECTION pursuant to 37 C.F.R. § 41.50(b). 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 Appellants, WITHIN TWO MONTHS FROM THE DATE OF THE DECISION, must exercise one of the following two options with respect to the new grounds 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. . . . 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) (2011). Appeal 2010-012011 Application 09/796,165 11 DISMISSED; 37 C.F.R. § 41.50(b) mls Copy with citationCopy as parenthetical citation