Ex Parte Mayes

Board of Patent Appeals and Interferences

Jan 5, 2012

10295175 (B.P.A.I. Jan. 5, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte ROBERT C. MAYES
____________

Appeal 2010-011456
Application 10/295,175
Technology Center 3600
____________

Before: HUBERT C. LORIN, BIBHU R. MOHANTY, and
MICHAEL W. KIM, Administrative Patent Judges.

KIM, Administrative Patent Judge.

DECISION ON APPEAL
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STATEMENT OF THE CASE
This is an appeal from the final rejection of claims 1-35. We have
jurisdiction to review the case under 35 U.S.C. §§ 134 and 6.
The claimed invention is directed to a customization apparatus and
“method for producing customized information materials specific to each of
a number of separately identified objects as actually assembled” (Spec. 1:4-
6). Claim 1, reproduced below, is illustrative of the claimed subject matter.
1. A customization system comprising a computer
system, an assembly system, and a printer system, wherein:
a) the computer system is configured for tracking
separately identified objects as the separately identified objects
are assembled, the computer system including a database of
object data, the object data corresponding to parts of objects
assembled by the assembly system;
b) the assembly system is connected to the computer
system and is configured for assembling separately identified
objects and for sending, for each separately identified object, as
assembled data to the computer system, the parts of a given
separately identified object being identifiable from the as
assembled data sent to the computer system for that separately
identified object; and
c) the printer system is connected to the computer system
and is configured for producing, for each separately identified
object, customized information specific to that separately
identified object utilizing a subset of the object data from the
database of object data, the subset of object data corresponding
to the parts identified by the as assembled data bent to the
computer system for that separately identified object.
Claims 20-35 stand rejected under 35 U.S.C. § 101 for failing to recite
statutory subject matter.
Claims 1-35 stand rejected under 35 U.S.C. § 112, second paragraph,
for indefiniteness.
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Claims 1, 2, 14-16, 18, and 20 stand rejected under 35 U.S.C. § 102(b)
as unpatentable over Anderson (US 4,514,815, iss. Apr. 30, 1985).
Claim 28 stands rejected under 35 U.S.C. § 102(b) as unpatentable
over Willis (US 5,515,269, iss. May 7, 1996).
Claims 3-5 stand rejected under 35 U.S.C. § 103(a) as unpatentable
over Anderson in view of IBM (IBM, IBM Personal Computing Support,
www.pc.ibm.com, (Aug. 31, 2007)).
Claims 6-8 stand rejected under 35 U.S.C. § 103(a) as unpatentable
over Anderson in view of Willis.
Claim 9 stands rejected under 35 U.S.C. § 103(a) as unpatentable over
Anderson in view of Yamaha (Yamaha, Yamaha Manual Library,
www2.yamaha.co.jp/manual/english (Aug. 29, 2007).
Claims 10-13 and 22 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Anderson in view of Honda (Honda, Honda Owner’s
Manual, www.hondapowerequipment.com (Sep 4, 2007).
Claims 17, 19, 23, 24, 26, and 27 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over Anderson in view of Alienware (Alienware,
Alienware Computer Systems, alienware.com, (Aug. 29, 2007).
Claim 21 stands rejected under 35 U.S.C. § 103(a) as unpatentable
over Anderson in view of Willis and Yamaha.
Claim 25 stands rejected under 35 U.S.C. § 103(a) as unpatentable
over Anderson in view of Alienware and IBM.
Claim 29 stands rejected under 35 U.S.C. § 103(a) as unpatentable
over Willis in view of Yamaha.
Claim 30 stands rejected under 35 U.S.C. § 103(a) as unpatentable
over Willis in view of Honda.
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Claims 31-35 stand rejected under 35 U.S.C. § 103(a) as unpatentable
over Willis in view of IBM.
We AFFIRM-IN-PART.

ISSUES
Did the Examiner err in asserting that claims 20-35 fail to recite
statutory subject matter under 35 U.S.C. § 101?
Did the Examiner err in rejecting claims 1-35 under 35 U.S.C. § 112,
second paragraph, for indefiniteness?
Did the Examiner err in asserting that various combinations of
Anderson, Willis, IBM, Yamaha, Honda, and Alienware render claims 1-35
obvious?

FINDINGS OF FACT
We adopt the Examiner’s findings of fact concerning Anderson,
Willis, IBM, Yamaha, Honda, and Alienware, on pages 9-24 of the Answer.

ANALYSIS
35 U.S.C. § 101 Rejection
We are not persuaded that the Examiner erred in finding that claims
20-27 fail to recite statutory subject matter under 35 U.S.C. § 101 (App. Br.
10-13; Reply Br. 2). We are persuaded that the Examiner erred in finding
that claims 28-35 fail to recite statutory subject matter under 35 U.S.C.
§ 101 (App. Br. 13-14). We first address the rejections of claims 20-27.
The Examiner found that claims 20-27 failed to pass the machine-or-
transformation test (Ans. 4-6). However, the Supreme Court recently
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clarified the law in the area of patent-eligible subject matter for process
claims in Bilski v. Kappos, 130 S. Ct. 3218 (2010). Notwithstanding that the
machine-or-transformation test is unduly narrow as the sole basis for
determining patent eligibility of a process claimed, it can be instructive as a
factor in determining whether a claimed process is a patent-ineligible
abstract idea. See Bilski, 130 S. Ct. at 3221.
Appellant asserts that independent claim 20 meets the transformation
prong of the machine-or-transformation test (App. Br. 10-11). Specifically,
Appellant asserts that “[t]he transformation is that, as the object is
assembled, a subset of the object data that corresponds to the parts identified
by as assembled data for the object is utilized to produce information
material customized to that specific objects” (id. at 11). However,
Gottschalk v. Benson, 409 U.S. 63, 71-72 (1972) prohibits the patenting of a
computer based algorithm that merely transforms data from one form to
another, as such a “patent would wholly pre-empt the mathematical formula
and in practical effect would be a patent on the algorithm itself.” Like
Benson, because claim 20 merely “transforms” object data into information
material customized to specific objects, we sustain this rejection1.
Appellant asserts that dependent claims 22 and 27 recite statutory
subject matter because electronic object data is “transformed” into hard copy
manuals and customized information packaged with the object (App. Br. 12-
13). However, we agree with the Examiner that both of these
“transformations” merely involve printing, which is an insignificant post-

1 Because we sustain the 101 rejection of claims 20-27 on these grounds,
Appellant’s alternative 101 arguments concerning claims 20-21 and 23-26
are rendered moot (App. Br. 9-10).
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solution activity (Ans. 25-26). To hold otherwise would allow Appellant to
circumvent the ban on patenting abstract ideas by merely printing it.
The Examiner asserts that independent claim 28 impermissibly
overlaps two statutory classes, articles of manufacture and processes, in
contravention of 35 U.S.C. § 101 (Ans. 4, 26). However, independent claim
28 is written in the format referenced in In re Beauregard, 53 F.3d 1583
(Fed. Cir. 1995), which is understood to be directed to an article of
manufacture, despite reciting method steps (App. Br. 14).

35 U.S.C. § 112, Second Paragraph Rejection
We are persuaded that the Examiner erred in rejecting claims 1-35
under 35 U.S.C. § 112, second paragraph, for indefiniteness (App. Br. 14-
30; Reply Br. 2-4). The Examiner asserts that “customization” in
independent claim 1 is indefinite, because “[t]here is no initial requirement
from a customer or user to configure an object that is considered . . . specific
to the user, that is to say there is no object that has individual specifications
that are built to order, since no specific order has been received” (Ans. 7, 26-
27). However, independent claim 1 recites that the “customization” is
specific to each individual object within the assembly, and not that each
object is manufactured to user-defined custom specifications.
The Examiner asserts that “parts of objects assembled” in independent
claim 1 is indefinite because it is unclear whether that phrase refers only to
parts of the assembly, or to an assembly already assembled with the parts
(Ans. 7, 27-28). While we agree with the Examiner that the claims are not
perfectly drafted, we find that one of ordinary skill in the art would
understand that “parts of objects assembled” refers to the list of parts, or data
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objects representative of the list of parts, to be assembled.
The Examiner asserts it is unclear whether the phrase “configured for”
in independent claim 1 modifies “assembly system” or “computer system”
(Ans. 7-8, 28-29). We agree with Appellant that the use of the conjunction
“and” denotes that “configured for” modifies assembly system (App. Br. 18-
20). The Examiner then asserts that if Appellant’s construction is correct,
Appellant does not disclose a connection between the assembly system and
the computer (Ans. 29). Figure 1 discloses connection 42 between assembly
system 14 and computer system 12. Even assuming the Examiner was
correct, this would be an issue of written description – not indefiniteness.
The Examiner asserts that “printer system” in independent claim 1 is
indefinite because “the printer system is not limited to merely a printer and
appears to be another computer which is used to produce the information”
(Ans. 8, 29-30). While we agree the Examiner’s construction may be
correct, such a construction goes to breadth and not indefiniteness.
The Examiner asserts that the apparatus in independent claim 14 is
indefinite because an apparatus is “an instrument singular not a set of
instruments as suggested by the applicant,” and
[t]he apparatus as described above is made up of system which
is not proper and further the systems themselves do not recite
any particular structure and are only merely described by what
steps they perform which is confusing as to what is being
claimed since it appears to be two systems without any specific
structure
(Ans. 8, 30-31). First, we know of no law which requires an apparatus to be
a singular instrument. Indeed, it is almost impossible to delineate where a
single instrument and a set begins. Second, independent claim 14 recites the
structures of a computer system and a printer system. Third, it is permissible
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to define structures using functional limitations. While such constructions
may be extremely broad, breadth is not the same as indefiniteness.
The Examiner asserts that the phrase “object database” in independent
claim 18 is indefinite because it is unclear how “an object database is
different from any other database,” and “it is unclear if assembled data is
equivalent to object data and therefore the same thing?” (Ans. 8, 31-32). We
agree that the “object database” could be any database that includes any
combination of object data and assembled data. However, again, the
construction goes to breadth, and not indefiniteness.
The Examiner asserts that the “connection . . . for transmission” in
dependent claim 19 is indefinite because Appellant provides no details
concerning it (Ans. 8-9, 32). As noted above, Figure 1 of the Specification
discloses connection 42. While we agree with the Examiner that a broadest
reasonable construction of connection could be via any of the methods set
forth in the Answer (Ans. 8-9), that addresses breadth, not definiteness.
The Examiner asserts that independent claim 20 is indefinite because
it recites both a system and a method (Ans. 9, 32-33). While we agree that
the recitation of “an assembly system” at the beginning of independent claim
20 is at first somewhat confusing, we find that it is reasonably clear that
independent claim 20 recites a method, and that the “[w]ith respect to”
merely points out that the method is performed within an assembly system.
The Examiner asserts that independent claim 28 is indefinite, because
it recites both an article of manufacture and a method (Ans. 9, 33).
Independent claim 28 is written in Beauregard format, which is understood
to be directed to an article of manufacture, despite reciting method steps.
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35 U.S.C. § 102 and 35 U.S.C. § 103 Rejections
We are not persuaded that the Examiner erred in asserting that various
combinations of Anderson, Willis, IBM, Yamaha, Honda, and Alienware
anticipate or render obvious claims 1-35 (App. Br. 30-50; Reply Br. 4-5).
We agree with and adopt the Examiner’s reasoning and rationale, as set forth
on pages 33-45 of the Answer. The bulk of Appellant’s arguments appear to
revolve around the assertion that the recitation of “as assembled” requires an
actual physical assembly, and precludes a “virtual assembly” within the
computer system. However, the explicit language of the claims does not
preclude such a “virtual assembly,” and we thus agree with the Examiner
that such a “virtual assembly” meets the “as assembled” recitation under a
broadest reasonable construction of the claims.

DECISION
The rejection of claims 20-27 under 35 U.S.C. § 101 is AFFIRMED.
The rejection of claims 28-35 under 35 U.S.C. § 101 is REVERSED.
The rejection of claims 1-35 under 35 U.S.C. § 112, second
paragraph, is REVERSED.
The rejection of claims 1-35 under 35 U.S.C. §§ 102 or 103(a) 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).
AFFIRMED-IN-PART
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