Ex Parte Schimpf et al

Patent Trial and Appeal Board

Dec 3, 2013

11431381 (P.T.A.B. Dec. 3, 2013)

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.
11/431,381 05/10/2006 Brian C. Schimpf RSW920060076US1/IBM013P2A 7160
116452 7590 12/04/2013
Haynes & Boone, LLP
2323 Victory Ave., Suite 700
Dallas, TX 75219
EXAMINER
RAVETTI, DANTE
ART UNIT PAPER NUMBER
3685
MAIL DATE DELIVERY MODE
12/04/2013 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 PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte BRIAN C. SCHIMPF, EDITH H. STERN,
ROBERT C. WEIR, and BARRY E. WILLNER
____________________

Appeal 2011-011447
Application 11/431,381
Technology Center 3600
____________________

Before BIBHU R. MOHANTY, NINA L. MEDLOCK, and
PHILIP J. HOFFMANN, Administrative Patent Judges.

MEDLOCK, Administrative Patent Judge.

DECISION ON APPEAL
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STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 1, 4, 6-13, 16, 18-25, 28, and 30-45. We have
jurisdiction under 35 U.S.C. § 6(b).

STATEMENT OF THE DECISION
We AFFIRM.1

BACKGROUND
Appellants’ invention relates to computer methods, systems and
computer program products for identifying events of interest and for
generating and transmitting event messages corresponding to the identified
events of interest (Spec., para. [0001]).
Claim 1, reproduced below, is representative of the subject matter on
appeal:
1. A method for a transaction entity to create an event
message which is associated with an event, comprising:
obtaining a token that corresponds to an account of an
aggregating entity;
identifying at least one type of event of interest to a user
that is intended to be reported to said aggregating entity;
identifying an occurrence of an event that is an identified
type of event;
creating an event message in response to detecting said
event, wherein said event message comprises said token and
said event message either contains no text associated with a
description of said occurrence of said detected event or said

1 Our decision will refer to Appellants’ Appeal Brief (“App. Br.,” filed
January 10, 2011) and Reply Brief (“Reply Br.,” filed May 31, 2011), and
the Examiner’s Answer (“Ans.,” mailed March 28, 2011).
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event message contains text associated with a description of
said detected event that does not violate a predetermined
security and that does not provide the identity of said user or a
transaction entity associated with said occurrence of said
detected event; and
transmitting said event message to said aggregating
entity, said event message adapted to correspond to at least one
indicator of said occurrence of said event that is provided by
said aggregating entity for review by said user.

THE REJECTIONS
The following rejections are before us for review:
Claims 1, 4, 6-12, 37, and 39 are rejected under 35 U.S.C. § 101 as
directed to non-statutory subject matter.
Claims 1, 4, 6-13, 16, 18-25, 28, and 30-45 are rejected under
35 U.S.C. § 112, second paragraph, as indefinite.
Claims 1, 4, 6-9, 11-13, 16, 18-21, 23-25, 28, 30-33, and 35-45 are
rejected under 35 U.S.C. § 103(a) as unpatentable over Postrel
(US 2005/0149394 A1, pub. Jul. 7, 2005).
Claims 10, 22, and 34 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Postrel in view of Everett (US 5,982,293, iss. Nov. 9,
1999).

ANALYSIS
Non-Statutory Subject Matter
Appellants contend that the Examiner erred in rejecting independent
claim 1 under 35 U.S.C. § 101 because the claim satisfies the transformation
prong of the Bilski machine-or-transformation test and, therefore, recites
patent-eligible subject matter under § 101 (App. Br. 13-14 and Reply
Br. 5-6). More particularly, Appellants argue that the transformation prong
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is satisfied because, as recited in claim 1, physical tangible events are
transformed into event messages that did not exist prior to the event
occurring (id.).
The Examiner maintains that the rejection is proper because claim 1 is
not tied to a particular machine and method steps do not transform the
underlying subject matter to a different state or thing (Ans. 6-7).
We agree with the Examiner that independent claim 1 fails to satisfy
the machine-or-transformation test. But our analysis cannot end there.
In holding that the machine-or-transformation test “is not the sole test for
deciding whether an invention is a patent-eligible ‘process,’” the
Supreme Court made clear that a claim’s failure to satisfy the machine-or-
transformation test is not dispositive of the § 101 inquiry. Bilski v. Kappos,
130 S.Ct. 3218, 3227 (2010).
Under § 101, there are four categories of subject matter that are
eligible for patent protection: (1) processes; (2) machines; (3) manufactures;
and (4) compositions of matter. 35 U.S.C. § 101. The scope of patentable
subject matter encompassed by § 101 is “extremely broad” and intended to
“‘include anything under the sun that is made by man,”’ but it is not
unlimited. In re Comiskey, 554 F.3d 967, 977 (Fed. Cir. 2009) (quoting
Diamond v. Chakrabarty, 447 U.S. 303, 309 (1980)). The Court has thus
held that laws of nature, abstract ideas, and natural phenomena are excluded
from patent protection. Diamond v. Diehr, 450 U.S. 175, 188 (1981).
Here, claim 1 does no more than describe the concept of creating a
message in response to the occurrence of an event. The claim neither refers
to a specific machine by reciting structural limitations to any apparatus nor
recites any specific operations that would cause a machine to be the
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mechanism responsible for “obtaining a token,” identifying an type of event
of interest to a user,” “identifying the occurrence of an event of that type,”
“creating an event message in response to detecting the event,” and/or
“transmitting the event message to an aggregating entity,” as recited in
claim 1. Absent specific structural limitations on how these steps are
performed, claim 1 recites no more than the abstract concept of creating an
event message.
We conclude that claim 1 is directed to non-statutory subject matter.
Therefore, we will sustain the Examiner’s rejection under 35 U.S.C. § 101 of
claim 1 and claims 4, 6-12, 37, and 39, which depend from claim 1.
Indefiniteness
Independent claims 1, 13, and 25
We are persuaded that the Examiner erred in rejecting claim 1 under
35 U.S.C. § 112, second paragraph, on the ground that the recitation of a
“predetermined security” renders the claim indefinite (App. Br. 14-15 and
Reply Br. 6-7).
The Examiner maintains that the Specification does not make clear
what “predetermined security” entails, and that “the applicant needs to
explain what elements, factors and/or attributes are used in determining
Applicant’s ‘predetermined’ security level” (Ans. 7-8). We cannot agree.
Claim 1 recites that the event message contains text associated with a
description of the detected event that “does not violate a predetermined
security.” We agree with Appellants that one of ordinary skill in the art
would understand from this language what is claimed when claim 1 is read
in light of the Specification, including in particular paragraphs [00110]
through [00120], i.e., that the contents of an event message are determined
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in advance, before an event occurs, such that transmission of the event
message does not reveal more information than a party to the transaction
desires (App. Br. 14 and Reply Br. 6).
Therefore, we will not sustain the Examiner’s rejection of claim 1
under 35 U.S.C. § 112, second paragraph. See Orthokinetics, Inc. v. Safety
Travel Chairs, Inc., 806 F.2d 1565, 1576 (Fed. Cir. 1986) (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.”). For the same reasons, we also will not sustain
the Examiner’s rejection under 35 U.S.C. § 112, second paragraph, of claims
13 and 25, which include substantially similar language.
Dependent claim 6
Claim 6 depend from claim 4, which in turn depends from claim 1.
Claim 4 recites that “creating an event message . . . further comprises
specifying at least one description of said event . . .,” and claim 6 recites that
“said specifying at least one description of said event comprises specifying a
description of a transaction without directly providing transaction attributes
that describe said occurrence of said event.”
We are persuaded that the Examiner erred in rejecting claim 6 under
35 U.S.C. § 112, second paragraph (App. Br. 15 and Reply Br. 7).
The Examiner maintains that the rejection is proper because “it is not
clear what is meant by ‘without directly providing.’ Transaction attributes
are either provided, or not provided. Applicant’s limitation of ‘without
directly providing’ is ambiguous and unclear. Therefore, the scope of the
claim is not clear” (Ans. 8).
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We agree with Appellants that one of ordinary skill in the art would
understand what is claimed when claim 6 is read in light of the
Specification, particularly including paragraphs [00115] and [00116], which
describe that the event message can reveal, to the intended user, information
about the transaction even if the message has no explicit, or direct,
expression of transaction attributes, e.g., the description may encode
transaction attributes such that they are indirectly provided (see App. Br. 15
and Reply Br. 7).
Therefore, we will not sustain the Examiner’s rejection of claim 6
under 35 U.S.C. § 112, second paragraph. See Orthokinetics, 806 F.2d at
1576.
Obviousness
Claims 1, 4, 8, 9, 11-13, 16, 20, 21, 23-25, 28, 32, 33, and 35-45
Appellants argue claims 1, 4, 8, 9, 11-13, 16, 20, 21, 23-25, 28, 32,
33, and 35-45 as a group (App. Br. 15-18). We select claim 1 as
representative. The remaining claims stand or fall with claim 1. 37 C.F.R.
§ 41.37(c)(1)(vii).
We are not persuaded by Appellants’ argument that the Examiner
erred in rejecting claim 1 under 35 U.S.C. § 103(a) because Postrel fails to
disclose or suggest “identifying at least one type of event of interest to a user
that is intended to be reported to said aggregating entity,” as recited in the
claim (App. Br. 17-18 and Reply Br. 10-11). Instead, we agree with, and
adopt the Examiner’s response to Appellants’ argument, as set forth at
page 28 of the Answer. In this regard, we note that Postrel describes in
paragraph [0094] that a user may elect to use reward points to make a
purchase, i.e., an “event of interest,” and that this decision is reported to the
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entity, i.e., the “aggregating entity,” that controls the reward point
information so that the user’s awards account can be adjusted.
We also are not persuaded by Appellants’ argument that Postrel fails
to disclose or suggest “creating an event message in response to detecting
said event, wherein said event message . . . either contains no text associated
with a description of said occurrence of said detected event or . . . contains
text . . . that does not violate a predetermined security and that does not
provide the identity of said user or a transaction entity associated with said
occurrence of said detected event,” as recited in claim 1 (App. Br. 16-17 and
Reply Br. 8-11), for the reasons set forth at pages 26-27 of the Answer.
In particular, we agree with the Examiner that the specific content of the
event message, i.e., that it either provides no description of the transaction or
provides a description that does not identify the user or the transaction
entity, does not affect how the claimed method is performed. As such, it
constitutes non-functional descriptive material that may not be relied on to
distinguish over the prior art for purposes of patentability. See In re Ngai,
367 F.3d 1336, 1339 (Fed. Cir. 2004); cf. In re Gulack, 703 F.2d 1381, 1385
(Fed. Cir. 1983) (when descriptive material is not functionally related to the
substrate, the descriptive material will not distinguish the invention from the
prior art in terms of patentability).
In view of the foregoing, we will sustain the Examiner’s rejection of
claim 1 under 35 U.S.C. § 103(a). We also will sustain the Examiner’s
rejection of claims 4, 8, 9, 11-13, 16, 20, 21, 23-25, 28, 32, 33, and 35-45,
which stand or fall with claim 1.
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Claims 6, 18, and 30
Appellants argue claims 6, 18, and 30 as a group (App. Br. 18-19).
We select claim 6 as representative. The remaining claims stand or fall with
claim 6. 37 C.F.R. § 41.37(c)(1)(vii).
Claim 6 depends from claim 4, which, in turn, depends from claim 1.
Claim 4 recites that creating an event message “further comprises specifying
at least one description of said event . . .,” and claim 6 recites that
“specifying at least one description of said event comprises specifying a
description of a transaction without directly providing transaction attributes
that describe said occurrence of said event.”
We are not persuaded that the Examiner erred in rejecting claim 6
under 35 U.S.C. § 103(a) (App. Br. 18-19 and Reply Br. 12-13). We agree
with the Examiner that claim 6 merely describes the content of an event
message, which is non-functional descriptive material that does not affect
the manner in which the claimed method is performed and that may not be
relied on for patentability (Ans. 29-31).
Therefore, we will sustain the Examiner’s rejection of claim 6 under
35 U.S.C. § 103(a), and also sustain the rejection of claims 18 and 30, which
stand or fall with claim 6.
Claims 7, 19, and 31
Appellants argue claims 7, 19, and 31 as a group (App. Br. 19-20).
We select claim 7 as representative. The remaining claims stand or fall with
claim 7. 37 C.F.R. § 41.37(c)(1)(vii).
Claim 7 depends from claim 4 and recites that “specifying at least one
description of said event comprises encoding said occurrence of said event
in a contextually meaningless text.”
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We are not persuaded that the Examiner erred in rejecting claim 7
under 35 U.S.C. § 103(a) (App. Br. 19-20 and Reply Br. 14-15). We agree
with the Examiner that claim 7 merely describes the content of an event
message, which is non-functional descriptive material that does not affect
the manner in which the claimed method is performed and that may not be
relied on for patentability (Ans. 31-33).
Therefore, we will sustain the Examiner’s rejection of claim 7 under
35 U.S.C. § 103(a); we also will sustain the Examiner’s rejection of
claims 19 and 31, which stand or fall with claim 7.
Claims 10, 22, and 34
Claims 10, 22, and 34 depends from independent claims 1, 13, and 25,
respectively. Appellants do not provide any argument for the separate
patentability of these claims except to assert that Everett fails to cure the
alleged deficiencies of Postrel, and that the dependent claims are, therefore,
allowable based on their dependence on independent claims 1, 13, or 25.
(App. Br. 20 and Reply Br. 15-16).
We are not persuaded, for the reasons outlined above, that the
Examiner erred in rejecting claims 1, 13, and 25. Therefore, we will sustain
the Examiner’s rejection of claims 10, 22, and 34 under 35 U.S.C. § 103(a).

DECISION
The Examiner’s rejection of claims 1, 4, 6-12, 37, and 39 under
35 U.S.C. § 101 is affirmed.
The Examiner’s rejection of claims 1, 4, 6-13, 16, 18-25, 28, and
30-45 under 35 U.S.C. § 112, second paragraph, is reversed.
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The Examiner’s rejection of claims 1, 4, 6-13, 16, 18-25, 28, and
30-45 under 35 U.S.C. § 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)(1).

AFFIRMED
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