Ex Parte Sundaram et al

Board of Patent Appeals and Interferences

Jun 8, 2012

10929358 (B.P.A.I. Jun. 8, 2012)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
10/929,358 08/27/2004 Shankar Sundaram VN-0407 4587
36088 7590 06/08/2012
KANG LIM
2491 San Ramon Valley Blvd., #1-229
San Ramon, CA 94583
EXAMINER
SHAH, AMEE A
ART UNIT PAPER NUMBER
3625
MAIL DATE DELIVERY MODE
06/08/2012 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte SHANKAR SUNDARAM, MICHAEL J. KLEIN, and
NARAYANAN VIJAYKUMAR
____________

Appeal 2011-000175
Application 10/929,358
Technology Center 3600
____________

Before: HUBERT C. LORIN, ANTON W. FETTING, 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 1-16. We have
jurisdiction to review the case under 35 U.S.C. §§ 134 and 6 (2002).
The claimed invention is directed to methods and systems for
managing hierarchically organized objects in a pricing adjustment system
(Spec., para. [0005]). Claim 1, reproduced below, is further illustrative of
the claimed subject matter (numbered bracketing has been added).
1. A method of overriding inherited pricing structure
properties in a hierarchically organized integrated price
adjustment system comprising:
providing, from memory, at least two hierarchically
organized product line pricing structures in a common
inheritance path wherein a first of the at least two hierarchically
organized product line pricing structures is a root level product
line pricing structure having at least one root level property and
wherein a second of the at least two hierarchically organized
product line pricing structures is a non-root level product line
pricing structure having at least one non-root level property,
and wherein any other hierarchically organized product line
pricing structures below the root level product line pricing
structure are configured to enable inheritance from the at least
one root level property from the root level product line pricing
structure;
modifying, by user input via an interface presented on a
graphical display, the at least one root level property of the root
level product line pricing structure; and
[1] updating only product line pricing structures between
the modified root level pricing structure and the next highest of
the at least one non-root level pricing structure, wherein the
updating preserves the pricing structures below the at least one
non-root level pricing structure.

Claims 1-16 stand rejected under 35 U.S.C. § 112, 2nd paragraph, for
indefiniteness; claims 1-4 and 12-16 stand rejected under 35 U.S.C. § 101
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for failing to recite statutory subject matter; and claims 1-16 stand rejected
under 35 U.S.C. § 103(a) as unpatentable over Carter ( U.S. 5,878,400) in
view of Martin ( U.S. 6,704,743 B1).
We AFFIRM.

ISSUES
Did the Examiner err in asserting that claims 1-16 are indefinite? The
issue turns on the clarity of aspect [1] recited in independent claims 1, 5, 11,
and 12.
Did the Examiner err in asserting that claims 1-4 and 12-16 recite
non-patentable subject matter?
Did the Examiner err in asserting that a combination of Carter and
Martin renders obvious independent claim 11?

FINDINGS OF FACT
We adopt the Examiner’s findings of fact, as set forth on pages 6-7
and 9-11 of the Examiner’s Answer.

ANALYSIS
Indefiniteness Rejection
We are not persuaded the Examiner erred in asserting that claims 1-16
are indefinite (App. Br. 11-13). Independent claims 1, 5, 11, and 12 each
recite “updating only product line pricing structures between the modified
root level pricing structure and the next highest of the at least one non-root

1 We choose independent claim 1 as representative of independent claims 1,
5, 11, and 12. See 37 C.F.R. § 41.37(c)(1)(vii).
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level pricing structure, wherein the updating preserves the pricing structures
below the at least one non-root level pricing structure.” As an initial matter,
we note that the specific phrase “next highest” does not appear in the
specification.
Appellants assert that “Appellants believe that this limitation is [ ]
clear; i.e. only objects between the next highest from the non-root object and
the root object are updated. Returning to figure 4, part 404 is the root object.
Any other lower level is the non-root object” (App. Br. 12). The assertion
“only objects between the next highest from the non-root object and the root
object are updated,” implies that there is only one root object, only one non-
root object, and undefined objects in between. However, then Appellants
then assert that “[a]ny other lower level is the non-root object.” This implies
that both the non-root object and undefined objects from the previous
assertion are one and the same. The two constructions are incompatible.
Moreover, when these assumptions are applied to the claims, the
indefiniteness becomes more apparent. Claim aspect [1] recites “updating
only product line pricing structures between the modified root level pricing
structure and the next highest of the at least one non-root level pricing
structure” (emphasis added). If we go with the assumption that there is only
one root object, only one non-root object, and undefined objects in between,
then it is unclear what would be the “next highest” non-root level when there
is only one non-root level. However, if “[a]ny other lower level is the non-
root object,” the next highest non-root level is presumably the level
immediately below the root level, but there are no levels in between those
two levels.
In view of these ambiguities, we adopt the Examiner’s provisional
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construction of claim aspect [1], solely for the purposes of the obviousness
analysis, as follows: “updating any property of only the non-root level
structure below the root level structure without updating any other structures
below that non-root level structure” (Exam’r’s Ans. 4, 7-8).

Statutory Subject Matter
We are not persuaded the Examiner erred in asserting that claims 1-4
and 12-16 recite non-patentable subject matter (App. Br. 13-15). Appellants
assert that computers and computer memory are a sufficient recitation of
structure (App. Br. 14). However, the mere recitation of a computer is a
field-of-use limitation that is insufficient to render an otherwise patent-
ineligible process patent-eligible. See Diamond v. Diehr, 450 U.S. 175, 191
(1981). Cf. SiRF Tech., Inc. v. Int’l Trade Comm’n, 601 F.3d 1319, 1333
(Fed. Cir. 2010). In Bilski v. Kappos, 130 S. Ct. 3218 (2010), the Supreme
Court approvingly cited Flook for “the proposition that the prohibition
against patenting abstract ideas ‘cannot be circumvented by attempting to
limit the use of the formula to a particular technological environment.’” See
Id. at 3230. Accordingly, we agree with the Examiner that attempting to
limit steps that could be performed by a human mind, with the assistance of
pencil and paper, to a computer environment is insufficient to render it
statutory. See In re Abrams, 188 F.2d 165, 168 (CCPA 1951) (“[c]itation of
authority in support of the principle that claims to mental concepts which
constitute the very substance of an alleged invention are not patentable is
unnecessary. It is self-evident that thought is not patentable”).
Appellants also assert that physically altering a catalog and electrical
changes in physical memory are sufficient transformations (App. Br. 14-15).
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However, these changes are merely manipulations of data, which are not
sufficient to meet a transformation under 35 U.S.C. § 101. Gottschalk v.
Benson, 409 U.S. 63, 72 (1972) prevents 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.”

Obviousness Rejection
We are not persuaded the Examiner erred in asserting that a
combination of Carter and Martin renders obvious independent claim 1
(App. Br. 15-19). Appellants assert that Martin and the claimed invention
are non-analogous art (App. Br. 17). However, we agree with Appellants
that both Martin and the claimed invention are directed to inheritability of
properties in a parent-child object relationship, placing them in the same
field of endeavor. See In re Deminski, 796 F.2d 436, 442 (Fed.Cir.1986)
(“[t]wo separate tests define the scope of analogous prior art: (1) whether the
art is from the same field of endeavor, regardless of the problem addressed
and, (2) if the reference is not within the field of the inventor's endeavor,
whether the reference still is reasonably pertinent to the particular problem
with which the inventor is involved). Appellants have defined their alleged
field much too narrowly.
Appellants further assert that “Martin fails to disclose any
applicability to price management systems. Carter, likewise, is unrelated to
producing of a programming language” (App. Br. 18). However, such an
assertion impermissibly argues the references individually, as Carter is cited
for price management systems, and Martin is cited for producing a
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programming language (Exam’r’s Ans. 6, 10). See In re Merck & Co. Inc.,
800 F.2d 1091, 1097 (Fed. Cir. 1986) (the argument that a single reference
alone does not disclose the recited claimed steps is not persuasive because
nonobviousness cannot be established by attacking the references
individually when the rejection is predicated upon a combination of prior art
disclosures); In re Keller, 642 F.2d 413, 426 (CCPA 1981) (“one cannot
show non-obviousness by attacking references individually where, as here,
the rejections are based on combinations of references”).
Appellants then assert that Carter and Martin teach away from each
other, because while “Carter enables a kind of price adjustment inheritance,
in that price adjustments applied to parent categories cumulatively filter
down into all child categories,” Martin restricts parent-child inheritances
(App. Br. 18-19). However, a teaching away requires discouragement, and
Appellants have not provided any indication that either reference
discourages the approach of the other. See In re Gurley, 27 F.3d 551, 553
(Fed. Cir. 1994) (“[a] reference may be said to teach away when a person of
ordinary skill, upon [examining] the reference, would be discouraged from
following the path set out in the reference, or would be led in a direction
divergent from the path that was taken by the applicant”). Indeed, we agree
with the Examiner that the two approaches appear to be complementary,
where the inheritances filter down to all child categories in Carter, except
when such properties are deemed restricted, as set forth in Martin (col. 4, ll.
2-23).
Appellants assert there is no rationale to combine Carter and Martin
(App. Br. 18-19). However, page 6 of the Examiner’s Answer cites column
3, lines 63-67 of Martin, which specifically discloses that “a need exists in
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the art for a manner of restricting the inheritance of fields and other
parameters of an object-oriented entity, in particular in applications that rely
on underlying databases and the persistent storage of object-oriented
entities.”
Appellants finally assert that the combination of Carter and Martin
does not render obvious claim aspect [1] (App. Br. 20). However, Martin’s
restriction of parent-child inheritances meets “updating any property of only
the non-root level structure below the root level structure without updating
any other structures below that non-root level structure,” as set forth above
for the provisional construction of claim aspect [1].

DECISION
The decision of the Examiner to reject claims 1-16 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

MP