Ex Parte Riley et al

Board of Patent Appeals and Interferences

Jan 31, 2012

11098132 (B.P.A.I. Jan. 31, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte JAMES RILEY and PATRICK TOOMEY
____________________

Appeal 2010-001016
Application 11/098,132
Technology Center 3700
____________________

Before: MURRIEL E. CRAWFORD, JOSEPH A. FISCHETTI, and
BIBHU R. MOHANTY, Administrative Patent Judges.

FISCHETTI, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2010-001016
Application 11/098,132

2
STATEMENT OF CASE
Appellants seek our review under 35 U.S.C. § 134 from the
Examiner’s final rejection of claims 1-6 and 19-30. Claims 7-18 have been
cancelled. We affirm.

THE CLAIMED INVENTION
Appellants claim methods and a system for creating, publishing, and
receiving revenue from computer-based interactive learning programs (Spec.
1: para. [0002]). Independent claims 1, 19, and 22 are illustrative of the
claimed subject matter:
1. A method for creating a computer-based instruction course,
the method comprising: providing a remotely-located author
access to an interactive instructional course authoring program;
allowing the remotely-located author to create the instructional
course with the authoring program; and providing the
instructional course for use by remote users.

19. A method for permitting a remote user to take a computer-
based instructional course, the method comprising: allowing an
author of the computer-based instructional course to post the
instructional course on a publicly accessible web site such that
the author of the instructional course operates substantially
independently of an operator of the web site; allowing the
remote user to browse a plurality of categories of instructional
courses available on the web site; allowing the remote user to
[choose] a particular category and browse the particular
category and select a particular instructional course from a
plurality of instructional courses within the particular category;
and allowing the remote user to view the selected instructional
course.

22. A system for creating an educational course on a computer
that enables an author of the educational course to receive
revenue from the course, the system comprising: an interactive
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instructional course authoring program, wherein a remotely-
located author accesses the program and creates an instructional
course; a web page comprising a plurality of categories of
instructional courses for use by remote users; and a control
center to supply the author with revenue based on the number
of users that view the instructional course.

REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Stirpe US 2002/0087496 A1 Jul. 4, 2002

REJECTIONS
The following rejections are before us for review.
The Examiner rejected claims 1-6 and 19-30 under 35 U.S.C. § 101 as
claiming ineligible subject matter.
The Examiner rejected claims 1-6 and 19-30 are rejected under 35
U.S.C. § 102(e) as being anticipated by Stirpe.

ISSUES
Did the Examiner err in rejecting claims 1-6 and 19-30 under 35
U.S.C. § 101 as reciting patent ineligible subject matter?
Did the Examiner err in rejecting claims 1-6 and 19-30 under 35
U.S.C. § 102(e) over Stirpe, because the Examiner did not explicitly state
whether the support for Stirpe can be found in the earlier-filed provisional
application whose filing date establishes the priority date of Stirpe?

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Appeal 2010-001016
Application 11/098,132

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6. Provisional application 60/203,180 was filed on May 8, 2000.
7. Stirpe was filed on April 4, 2001, and published as Pat. Pub.
2002/0087496 A1 on July 4, 2002.
8. Stirpe claims priority from provisional application 60/194,737 (para.
[0001]).
9. Provisional application 60/194,737 was filed on April 5, 2000 and was
pending on April 4, 2001.
10. The Examiner found paragraph [0081] of Stirpe discloses the
requirement of claim 1 of providing an instructional course authoring
program, at paragraph [0081] (Ans. 4).
11. Stirpe paragraph [0081] discloses:
FIG. 4 shows the process by which content
is manually contributed by experts. Experts are
first authenticated with the service in interaction
600,601. Experts are then brought through a series
of forms in which the expert can provide the
characteristics of the knowledge component being
contributed (interaction 602). The knowledge
exchange data store (103) interacts with the
security service (101) to determine if the user is
authorized to provide the content contribution in
interactions 603 and 604. If authorization is
complete, the user’s profile in the directory (102)
is updated to reflect that the knowledge component
has been authored by the authenticated user
(interaction 605). The user is finally provided with
a successful notification message via interaction
606.

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12. The provisional application 60/194,737 of Stirpe discloses the content
of paragraph [0081] above, as follows:
Figure 4 shows the process by which content
is manually contributed by experts. Experts are
first authenticated with the service in interaction
600, 601. Experts are then brought through a series
of forms in which the expert van provide the
characteristics of the knowledge component being
contributed (interaction 602). The knowledge
exchange data store (103) interacts with the
security service (101) to determine if the user is
authorized to provide the content contribution in
interactions 603 and 604. If authorization is
complete, the user’s profile in the directory (102)
is updated to reflect that the knowledge component
has been authored by the authenticated user
(interaction 605). The user is finally provided with
a successful notification message via interaction
606.
(p. 21, ll. 4-11).
13. The Examiner found Stirpe discloses claim 1’s allowing the remotely-
located author to create the instructional course with the authoring
program at paragraph [0107] (Ans. 4).
14. Stirpe paragraph [0107] discloses:
Trainers and experts are able to incorporate
polling and/or testing into the knowledge delivery.
The system may operate as follows. The [trainer
may] use the knowledge exchange system to view
a table of contents that lists each page in sequential
order, that is part of the knowledge component.
The trainer may insert a poll or question at any
point in the knowledge component such that the
poll is presented to the recipients when the trainer
or expert desires. Questions for the poll can be
developed prior to the knowledge delivery or
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during a live knowledge delivery session. In either
case, the expert or trainer may interact with a form
to request to create a question. A web form is
presented to the trainer/expert requesting the
question text, number of possible choices, the
choices themselves, and optionally the correct
answer, if the question is of type multiple choice
and has a correct response. A web page is
constructed, stored with the session files, and a
reference of the web page is interested into the
table of content at the location desired by the
trainer/expert. Alternatively, the questions may be
developed as part of the knowledge component
authoring process. For example, the knowledge
exchange service provider may provide Microsoft
PowerPoint slide templates that can be used by
content authors or experts to insert questions
during the content authoring process. The slide
templates contain small script code that
coordinates with the knowledge exchange system
to support the logging of test questions, as well as
other features. In summary, the questions may be
developed and incorporated into the knowledge
component on-line or on-the-fly using the
knowledge exchange system, or may be developed
off-line apriori using standard authoring tools
along with question templates provided by the
knowledge exchange service provider.

15. The provisional application 60/194,737 of Stirpe discloses the content
of paragraph [0107] above, as follows:
Trainers and experts are able to incorporate
polling and/or testing into the knowledge delivery.
The system may operate as follows. The [trainer
may] use the knowledge exchange system to view
a table of contents that lists each page in sequential
order, that is part of the knowledge component.
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The trainer may insert a poll or question at any
point in the knowledge component such that the
poll is presented to the recipients when the trainer
or expert desires. Questions for the poll can be
developed prior to the knowledge delivery or
during a live knowledge delivery session. In either
case, the expert or trainer may interact with a form
to request to create a question. A web form is
presented to the trainer/expert requesting the
question text, number of possible choices, the
choices themselves, and optionally the correct
answer, if the question is of type multiple choice
and has a correct response. A web page is
constructed, stored with the session files, and a
reference of the web page is interested into the
table of content at the location desired by the
trainer/expert. Alternatively, the questions may be
developed as part of the knowledge component
authoring process. For example, the knowledge
exchange service provider may provide Microsoft
PowerPoint slide templates that can be used by
content authors or experts to insert questions
during the content authoring process. The slide
templates contain small script code that
coordinates with the knowledge exchange system
to support the logging of test questions, as well as
other features. In summary, the questions may be
developed and incorporated into the knowledge
component on-line or on-the-fly using the
knowledge exchange system, or may be developed
off-line apriori using standard authoring tools
along with question templates provided by the
knowledge exchange service provider.
(p. 30, l. 7 to p. 31, l. 3).
16. The Examiner found Stirpe discloses claim 1’s providing the
instructional course for use by remote users at paragraph [0031]
(Ans. 4).
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17. Stirpe paragraph [0031] discloses:
The knowledge commerce system allows for
remote parties, including users and computers that
are not necessarily co-located with the knowledge
exchange system, to interact with the knowledge
exchange system to provide knowledge for sale
(experts and institutions), and receive knowledge
for fee (recipients) over the Internet (105) or other
communication mediums. Furthermore, the
knowledge exchange system provides capabilities
for the institutions to automatically provide
knowledge components and other characteristics to
the knowledge exchange system without human
intervention, from herein forward referred to the
business-to-business commerce model (b2b). This
provides for an efficient mechanism by which
institutions may make for sale their knowledge,
and for the knowledge exchange system to
accurately reflect the knowledge that is available
from institutions, along with the respective
knowledge component related characteristics.
Institutions may have experts as members and thus
desire to provide the knowledge held by the
institution’s experts for sale or simply extend the
availability of the knowledge. By automating the
interactions between the institution and the
knowledge exchange system the knowledge
exchange system provides the most accurate
knowledge information to users. Furthermore, this
allows the institution to offer their knowledge for
sale to recipients anywhere, thus extending the
reach of the institution. Users may be members of
institutions and may also obtain knowledge from
the knowledge exchange system.

18. The provisional application 60/194,737 of Stirpe discloses the content
of paragraph [0031] above, as follows:
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The knowledge commerce system allows for
remote parties, including users and computers that
are not necessarily co-located with the knowledge
exchange system, to interact with the knowledge
exchange system to provide knowledge for sale
(experts and institutions), and receive knowledge
for fee (recipients) over the Internet (105) or other
communication mediums. Furthermore, the
knowledge exchange system provides capabilities
for the institutions to automatically provide
knowledge components and other characteristics to
the knowledge exchange system without human
intervention, from herein forward referred to the
business-to-business commerce model (b2b). This
provides for an efficient mechanism by which
institutions may make for sale their knowledge,
and for the knowledge exchange system to
accurately reflect the knowledge that is available
from institutions, along with the respective
knowledge component related characteristics.
Institutions may have experts as members and thus
desire to provide the knowledge held by the
institution’s experts for sale or simply extend the
availability of the knowledge. By automating the
interactions between the institution and the
knowledge exchange system the knowledge
exchange system provides the most accurate
knowledge information to users. Furthermore, this
allows the institution to offer their knowledge for
sale to recipients anywhere, thus extending the
reach of the institution. Users may be members of
institutions and may also obtain knowledge from
the knowledge exchange system.

(p. 8, l. 13 to p. 9, l. 6).
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19. The above disclosed content of Stirpe’s provisional application
60/194,737 matches word-for-word with paragraphs [0031], [0081], and
[0107] of Stirpe.
20. The Specification describes an interactive instructional course
authoring program as software, in that “[i]n order to motivate authors to
create courses, it is generally desirable to make this process and the
method of compensation as simple and efficient as possible. Fig. 7
shows the Learn.com home page that includes a ‘Write a Course’ utility
that helps authors ...” (Spec. 10:para. [0048]).
21. The Specification describes one function of the interactive instructional
course authoring program where an author “may invoke an ‘Add
Course Wizard’ program that may prompt the author to name and
describe the course, pick a category for the course, and decide who will
have access to the final course document.” (Spec. 11:para. [0049]).
22. The Specification describes the interactive instructional course
authoring program as a downloadable module of software, in that
“Course Wizard program 38 may automatically install a small editing
control program on the author's computer so that downloading the entire
utility program is not required.” (Spec. 11:para. [0050]).
23. The Specification describes the control center as a tracking device “[t]o
keep track of course earnings, the author may access a private ‘Author's
Control Center’ 56 through the main Control Center on the proprietor's
Web site that lists each course, the number of page views, and how
much money the course has earned ...” (Spec. 11:para. [0051]).

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ANALYSIS
Rejection under 35 U.S.C. § 101
Claims 1-6 and 30
The Examiner rejected claims 1-6 and 30 under 35 U.S.C. § 101 as
claiming patent ineligible subject matter, under the “machine or
transformation test,” since independent claim 1 does not “explicitly recite
any machine or apparatus involved in the process.” (Ans. 3).
Preliminarily we note, the Supreme Court has held that the “machine-
or-transformation test may well provide a sufficient basis for evaluating
processes similar to those in the Industrial Age—for example, inventions
grounded in a physical or other tangible form… [but,] it may not make sense
to require courts to confine themselves to asking the questions posed by the
machine-or-transformation test.” Bilski v. Kappos, 130 S.Ct. 3218, 3227-
3228 (2010). While maintaining that the test is an “important clue” or “an
investigative tool,” the Court further reasoned that claims that explained the
basic concept of an activity (hedging) would allow the Appellant to pre-empt
the use of this approach in all fields, and would effectively grant a monopoly
over an abstract idea. Id. at 3231. Thus, abstract ideas are not patent
eligible. Id. at 3225.
We turn to the issue at hand with this understanding of the present
status of the law before us today.
We construe claim 1 to require an interactive course which we find
involves using a computer system to perform the method. We more
specifically find the interactive instructional course program is a software
system, which requires a computer so that the providing, allowing, and
providing steps can be interactively performed. This finding is based on the
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many statements in the Specification which indicate the only meaning of
program is a computer program. (FF 20-23). We therefore find claim 1
involves a machine in the form of a computer and/or computer related
device(s).
Claims 19-21
The Examiner also rejected claims 19-21 under 35 U.S.C. § 101 as
reciting patent ineligible subject matter, stating “claim 19 only recites
general use components and does not create any tie or involvement of an
apparatus or machine.” (Ans. 3).
We disagree with the Examiner because independent claim 19
requires posting a computer-based instructional course on an accessible web
site and allowing a remote user to select and view the course. As such,
claim 19 requires the use of a computer to provide the required functionality.
We therefore find that claim 19 involves a machine in the form of a
computer.
Claims 22-29
Independent claim 22 recites a system containing three structural
components: an interactive instructional course authoring program, a web
page, and a control center.
The Examiner rejected claim 22 as reciting “no more than abstract
data structures, software, and/or databases per se.” (Ans. 4).
We disagree with the Examiner because we find that the control
center is part of a system claim and is described in the Specification as being
“on the proprietor's Web site” (FF 23). We therefore find the control center
requires a computer, or a computer related device, which we find means the
claimed system involves a machine.
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35 U.S.C. § 101 Conclusion
As found above, each of the independent claims involves a computer
or computer related device. We recognize however that:
[s]imply adding a “computer aided” limitation to a
claim covering an abstract concept, without more,
is insufficient to render the claim patent eligible.
See [SiRF Tech, Inc. v. ITC, 601 F.3d 1319, 1333
(Fed. Cir. 2010)] (“In order for the addition of a
machine to impose a meaningful limit on the scope
of a claim, it must play a significant part in
permitting the claimed method to be performed,
rather than function solely as an obvious
mechanism for permitting a solution to be
achieved more quickly, i.e., through the utilization
of a computer for performing calculations.”).
Dealertrack, Inc. v. Huber, --- F.3d ----, 2012 WL 164439 at 17
(Fed. Cir. 2012).
Here however, we find that the recitation of a computer or related
device(s), within the context of the independent claims at issue, amounts to
more than form over substance. Rather, the inclusion of a computer in the
context of these independent claims effects a remote interactive capability
between author and user. We thus find that the computer plays a significant,
if not fundamental, role in permitting the claimed interactive instructional
course to be studied by user/students who are remotely located from the
author of the course. Using a computer not only allows for this remote
interactive instructional course to work, but further overcomes obstacles
otherwise present when an author attempts to present a course remotely.
(FF 20-23). As such, we do not find that the independent claims on appeal
preempt an abstraction.
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Accordingly, we will not sustain the rejection of claims 1-6 and 19-30
under 35 U.S.C. § 101 as covering patent ineligible subject matter.
Rejection under 35 U.S.C. § 102(e)
Appellants’ sole argument as to the rejection under this section is that
“the Examiner does not state whether the support cited in the Stirpe
application to reject the present application may also be found in the
provisional application. See MPEP § 2136.03 III. As a result, a prima facie
case of anticipation has not been established.” (Appeal Br. 5).
The Examiner responded that “the provisional application of Stirpe
fully enables at least the features for which it is relied upon and thus is
available to establish the critical date of Stirpe et al as of April 5, 2000.
Thus Stirpe et al is a proper reference under 35 USC § 102(e) ...” (Ans. 8).
As part of the response the Examiner provided the chart shown in in FF1
showing correspondence in the disclosures of the published and provisional
applications of Stirpe, for each element relied upon in the rejection.
We agree with the Examiner. We first find the application under
appeal was filed on April 4, 2005, and claims priority from application
09/637,388, filed August 11, 2000 (FF 2-4). At the time of filing ‘388 was
pending, and properly claimed priority to provisional application
60/203,180, filed May 8, 2000, which was also co-pending at that time (FF
4-6).
Next, we find Stirpe, published July 4, 2002, was filed on April 4,
2001 and the application properly claimed priority from provisional
application 60/194,737 (FF 7, 8), which was co-pending at that time (FF 9).
We find application ‘737 was filed with an effective date of April 5, 2000
(FF 9). Therefore, based on dates, Stirpe is available as prior art under 35
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U.S.C. § 102(e) as of April 5, 2000, which is before the priority filing date
of the application on appeal by over four months, from April 5 to August 11
of the year 2000.
We also confirm that the provisional application specification of
Stirpe matches, word-for-word, the disclosure of the published application,
and therefore provides support for at least the cited paragraphs used in the
rejection (FF 1). Using claim 1 as an example, we find the Examiner
rejected the claim over paragraphs [0081], [0107], and [0031] of Stirpe (FF
10, 13, 16). We find these paragraphs (FF 11, 14, 17) match word-for-word
(FF 19) with the corresponding disclosures in the provisional application of
Stirpe (FF 12, 15, 18), thus providing full support for the disclosure of Stirpe
in the earlier-filed provisional application.
We thus find Appellants’ argument unpersuasive, because we find
support in the Stirpe provisional application as prior art as of its effective
filing date of April 5, 2000 (FF 2-9). We therefore find no error in the
Examiner’s use of Stirpe as a reference that anticipates claims 1-6 and 19-30
(FF 1, 10-19).

CONCLUSIONS OF LAW
The Examiner erred err in rejecting claims 1-6, and 19-30 under 35
U.S.C. § 101.
The Examiner did not err in rejecting claims 1-6 and 19-30 under 35
U.S.C. § 102(e) over Stirpe.

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DECISION
For the above reasons, the Examiner’s rejection of claims 1-6 and 19-
30 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)(1)(iv).

AFFIRMED

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