Ex Parte Verhaegh et al

Board of Patent Appeals and Interferences

Jun 11, 2009

10069742 (B.P.A.I. Jun. 11, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE 1
___________ 2
3
BEFORE THE BOARD OF PATENT APPEALS 4
AND INTERFERENCES 5
___________ 6
7
Ex parte WILHELMUS FRANCISCUS JOHANNES VERHAEGH, 8
and 9
WILLIAM EDWARD PETER VAN DER STERREN 10
___________ 11
12
Appeal 2009-000128 13
Application 10/069,742 14
Technology Center 3600 15
___________ 16
17
Decided: June 11, 2009 18
___________ 19
20
Before MURRIEL E. CRAWFORD, LINDA E. HORNER, and 21
ANTON W. FETTING, Administrative Patent Judges. 22
23
FETTING, Administrative Patent Judge. 24
25
26
DECISION ON APPEAL 27
28
STATEMENT OF THE CASE 29
Wilhelmus Franciscus Johannes Verhaegh and William Edward Peter 30
Van Der Sterren (Appellants) seek review under 35 U.S.C. § 134 of a final 31
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rejection of claims 1-14, the only claims pending in the application on 1
appeal. 2
We have jurisdiction over the appeal pursuant to 35 U.S.C. § 6(b) 3
(2002). 4
We AFFIRM-IN-PART and ENTER NEW GROUNDS OF 5
REJECTION PURSUANT TO 37 C.F.R. § 41.50(b) (2008). 6
The Appellants invented a way of determining a schedule for 7
executing a plurality of tasks requiring a plurality of resources (Specification 8
1:1-2). The claims are essentially directed to creating a schedule for tasks 9
using project management techniques. 10
An understanding of the invention can be derived from a reading of 11
exemplary claims 1 and 6, which are reproduced below [bracketed matter 12
and some paragraphing added]. 13
1. A method of determining a schedule for executing a plurality 14
of tasks requiring a plurality of resources, comprising 15
(a) constructing a set of constraints 16
from given requirements of each task and 17
from given limitations on each resource; 18
(b) determining for each task 19
a relative starting time, 20
a relative ending time and 21
an assignment of resources, 22
based on the constraints from said set; 23
(c) determining for each task 24
an absolute starting time, 25
an absolute ending time and 26
a collection of times and associated task 27
processing speeds, 28
based on 29
the determined relative starting time, 30
relative ending time and 31
assignment of resources for said task, 32
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minimizing any violation of the constraints from said set; 1
and 2
(d) determining the schedule, 3
comprising for each task 4
the determined absolute starting time, 5
absolute ending time, 6
collection of times and associated task processing 7
speeds 8
and assignment of resources to said task. 9
10
6. A scheduler for determining a schedule for executing a 11
plurality of tasks requiring a plurality of resources, comprising 12
[1] constructing means 13
for constructing a set of constraints 14
from given requirements of each task and 15
from given limitations on each resource; 16
[2] ordering means 17
for determining for each task 18
a relative starting time, 19
a relative ending time and 20
an assignment of resources, 21
based on the constraints from said set; 22
[3] timing means 23
for determining for each task 24
an absolute starting time, 25
an absolute ending time and 26
a collection of times and associated task 27
processing speeds, 28
based on the determined relative starting time, relative 29
ending time and assignment of resources for said task, 30
minimizing any violation of the constraints from said set; 31
and 32
[4] scheduling means 33
for determining the schedule, 34
comprising for each task the determined absolute 35
starting time, absolute ending time, collection of 36
times and associated task processing speeds and 37
assignment of resources to said task. 38
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This appeal arises from the Examiner’s Final Rejection, mailed 1
January 18, 2007. The Appellants filed an Appeal Brief in support of the 2
appeal on June 18, 2007. An Examiner’s Answer to the Appeal Brief was 3
mailed on August 3, 2007. 4
5
PRIOR ART 6
The Examiner relies upon the following prior art: 7
Luca Abeni and Giorgio Buttazzo, Integrating Multimedia 8
Applications in Hard Real-Time Systems, Proceedings of IEEE Real-9
Time Systems Symposium, 1-10 (Madrid, Spain, Dec. 2-4, 1998) 10
(hereinafter “Abeni”). 11
12
REJECTIONS 13
Claims 6-14 stand rejected under 35 U.S.C. § 101 as directed to non-14
statutory subject matter.1 15
Claims 1-3, 6-8, and 10-13 stand rejected under 35 U.S.C. § 102(b) as 16
anticipated by Abeni. 17
Claims 4, 5, 9, and 14 stand rejected under 35 U.S.C. § 103(a) as 18
unpatentable over Abeni. 19
20
ISSUES 21
• The issue of whether the Appellants have shown that the Examiner 22
erred in rejecting claims 6-14 under 35 U.S.C. § 101 as directed to 23
non-statutory subject matter turns primarily on whether the claims are 24

1 Although the Answer initially recites the rejection as encompassing claims
1-14 (Answer 3), later in the Answer the Examiner found the Appellants’
arguments as to claims 1-5 persuasive and withdrew the rejection as to
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directed to process claims simply couched as apparatus claims. 1
• The issue of whether the Appellants have shown that the Examiner 2
erred in rejecting claims 1-3, 6-8, and 10-13 under 35 U.S.C. § 102(b) 3
as anticipated by Abeni turns primarily on whether Abeni describes 4
the minimization and absolute times of claims 1 and 6. 5
• The issue of whether the Appellants have shown that the Examiner 6
erred in rejecting claims 4, 5, 9, and 14 under 35 U.S.C. § 103(a) as 7
unpatentable over Abeni is not separately argued, but instead turns on 8
the resolution of the anticipation rejection issue. 9
10
FACTS PERTINENT TO THE ISSUES 11
The following enumerated Findings of Fact (FF) are believed to be 12
supported by a preponderance of the evidence. 13
Facts Related to Appellants’ Disclosure 14
01. The Specification discloses a scheduler as being part of a digital 15
video transmission system (Specification 6:13-15). 16
02. The Appellants cite Figure 2, reference 202 and Specification 17
page 7 line 32 to page 9 line 13 as support for the constructing 18
means in claim 6 (Br. 4:Bottom ¶). This portion describes 19
defining the requirements of a task a from a set A of tasks at least 20
comprise a release time, denoted by r(a), and a deadline or due 21
time, denoted by d(a), and the processing speed of the task a. The 22
value of the tasks can be used to make a trade-off between 23
different executions to be scheduled. The first scheduling 24

claims 1-5 (Answer 13:Bottom ¶).
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objective is to maximize a weighted sum of the scheduled 1
executions, and the above mentioned values are their weight 2
factors. The values can also be used to indicate different priority 3
classes, by choosing the values of high priority classes much 4
larger than for low priority classes. 5
03. No algorithm for implementing the constructing means is 6
described in Appellants’ Specification. 7
04. The Appellants cite Figure 2, reference 202, and Specification 8
page 7, lines 28-31 and page 12, line 26 to page 13, line 25 as 9
support for the ordering means in claim 6 (Br. 4:Bottom ¶). This 10
portion describes an ordering module that determines for each task 11
a relative starting time, a relative ending time and an assignment 12
of resources, based on the constraints constructed by the 13
constructing module. The relative ordering should ideally satisfy 14
the constraints, since it will be used as input for the timing 15
module, which computes the value to be used in the schedule. 16
05. No algorithm for implementing the ordering means is described 17
in Appellants’ Specification. 18
06. The Appellants cite Specification page 7, lines 28-31 and page 19
13, line 7 to page 14, line 15 as support for the timing means in 20
claim 6 (Br. 4:Bottom ¶). This portion describes a timing module 21
that should minimize any violation of the constraints as received 22
from the constructing module, ideally producing output which 23
satisfies all the constraints. The timing module has the task of 24
determining for each task an absolute starting time, an absolute 25
ending time and a collection of times and associated task 26
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processing speeds. As an input, the timing module receives for 1
each task the determined relative starting time, relative ending 2
time and assignment of resources from the ordering module. 3
07. Although the Specification describes using linear programming 4
to solve the scheduling problem (Specification 13:29-30), no 5
specific algorithm, for linear programming or otherwise, for 6
implementing the timing means is described. 7
08. The Appellants cite Specification page 7, lines 28-31, page 13, 8
line 6 to page 14, line 2, and page 16, line 24 to page 17, line 10 9
as support for the scheduling means in claim 6 (Br. 4:Bottom ¶ - 10
5:Top ¶). This portion describes a scheduler that can optionally 11
determine whether any violation of the constraints has occurred. 12
If it turns out that this is the case, it then determines at least one of 13
a new relative starting time for a task, a new relative ending time 14
for a task, and a new assignment of a resource to a task, for 15
instance by activating the ordering module to have it produce a 16
new relative ordering or assignment. 17
09. No algorithm for implementing the scheduling means is 18
described in Appellants’ Specification. 19
Abeni 20
10. Abeni is directed to providing efficient run-time support to 21
multimedia applications in a real-time system, where two types of 22
tasks can coexist simultaneously: multimedia soft real-time tasks 23
and hard real-time tasks. Hard tasks are guaranteed based on 24
worst case execution times and minimum inter-arrival times, 25
whereas multimedia and soft tasks are served based on mean 26
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parameters. Abeni describes a server-based mechanism for 1
scheduling soft and multimedia tasks without jeopardizing the a 2
priori guarantee of hard real-time activities (Abeni 1:Abstract). 3
11. Any task τi consists of a sequence of jobs Ji,j, where ri,j denotes 4
the arrival time (or request time) of the jth job of task τi. (Abeni 5
2:left col., first ¶ under 2.Terminology and assumptions). 6
12. A soft real-time task is characterized by the parameters (C i; T i), 7
where C i represents the mean execution time of each job, and T i 8
represents the desired activation period between successive jobs. 9
For each soft job Ji,j, a soft deadline is set at time di,j = ri,j + T i. 10
(Abeni 2:right col., first full ¶). 11
13. The objective of the system is to minimize the mean tardiness 12
of soft tasks, without jeopardizing the schedulability of the hard 13
tasks. The tardiness Ei,j of a job Ji,j is defined as Ei,j = max{0, fi,j - 14
di,j} where fi,j is the finishing time of job Ji,j. (Abeni 2:right col., 15
third ¶). 16
14. Albeni’s problem can be solved by a bandwidth reservation 17
strategy, which assigns each soft task a maximum bandwidth, 18
calculated using the mean execution time and the desired 19
activation period, in order to increase CPU utilization. (Abeni 20
2:right col., last full ¶). 21
15. Albeni describes using a constant bandwidth server (CBS) 22
characterized by a budget cs and by an ordered pair (Qs; Ts), where 23
Qs is the maximum budget and Ts is the period of the server. The 24
ratio Us = Qs/Ts is denoted as the server bandwidth. At each 25
instant, a fixed deadline ds;k is associated with the server. At the 26
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beginning ds;0 = 0. (Abeni 3:left col., ¶ 3.1 Definition of CBS, 1
first bullet). 2
16. Albeni assigns an absolute time-varying deadline dj. Each job 3
Jj consists of a number of chunks Hj;k, each characterized by a 4
release time aj;k and a fixed deadline dj;k. (Abeni 3:right col., 5
Second full ¶ following bullets). 6
Facts Related To The Level Of Skill In The Art 7
17. Neither the Examiner nor the Appellants has addressed the level 8
of ordinary skill in the pertinent arts of systems analysis and 9
programming, project management, linear programming, and 10
project management systems design. We will therefore consider 11
the cited prior art as representative of the level of ordinary skill in 12
the art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 13
2001) (“[T]he absence of specific findings on the level of skill in 14
the art does not give rise to reversible error ‘where the prior art 15
itself reflects an appropriate level and a need for testimony is not 16
shown’”) (quoting Litton Indus. Prods., Inc. v. Solid State Sys. 17
Corp., 755 F.2d 158, 163 (Fed. Cir. 1985)). 18
Facts Related To Secondary Considerations 19
18. There is no evidence on record of secondary considerations of 20
non-obviousness for our consideration. 21
22
PRINCIPLES OF LAW 23
Claim Construction 24
During examination of a patent application, pending claims are 25
given their broadest reasonable construction consistent with the 26
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specification. In re Prater, 415 F.2d 1393, 1404-05 (CCPA 1969); In 1
re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). 2
Limitations appearing in the specification but not recited in the claim 3
are not read into the claim. E-Pass Techs., Inc. v. 3Com Corp., 343 F.3d 4
1364, 1369 (Fed. Cir. 2003) (claims must be interpreted “in view of the 5
specification” without importing limitations from the specification into the 6
claims unnecessarily). 7
Although a patent applicant is entitled to be his or her own 8
lexicographer of patent claim terms, in ex parte prosecution it must be 9
within limits. In re Corr, 347 F.2d 578, 580 (CCPA 1965). The applicant 10
must do so by placing such definitions in the specification with sufficient 11
clarity to provide a person of ordinary skill in the art with clear and precise 12
notice of the meaning that is to be construed. See also In re Paulsen, 30 13
F.3d 1475, 1480 (Fed. Cir. 1994) (although an inventor is free to define the 14
specific terms used to describe the invention, this must be done with 15
reasonable clarity, deliberateness, and precision; where an inventor chooses 16
to give terms uncommon meanings, the inventor must set out any 17
uncommon definition in some manner within the patent disclosure so as to 18
give one of ordinary skill in the art notice of the change). 19
Claim Construction of Means Plus Function 20
When a claim uses the term “means” to describe a limitation, a 21
presumption inheres that the inventor used the term to invoke § 112, ¶ 6. 22
Altiris, Inc. v. Symantec Corp., 318 F.3d 1363, 1375 (Fed. Cir. 2003). “This 23
presumption can be rebutted when the claim, in addition to the functional 24
language, recites structure sufficient to perform the claimed function in its 25
entirety.” Id. Once a court concludes that a claim limitation is a means-plus-26
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function limitation, two steps of claim construction remain: 1) the court must 1
first identify the function of the limitation; and 2) the court must then look to 2
the specification and identify the corresponding structure for that function. 3
Med. Instrumentation & Diagnostics Corp. v. Elekta AB, 344 F.3d 1205, 4
1210 (Fed. Cir. 2003). 5
Statutory Subject Matter 6
[Whether a] patent is invalid for failure to claim 7
statutory subject matter under § 101, is a matter of 8
both claim construction and statutory construction. 9
State St. Bank & Trust Co. v. Signature Fin. Group, 149 F.3d 1368, 1370 10
(Fed. Cir. 1998). 11
Whoever invents or discovers any new and useful 12
process, machine, manufacture, or composition of 13
matter, or any new and useful improvement 14
thereof, may obtain a patent therefor, subject to the 15
conditions and requirements of this title. 16
17
35 U.S.C. § 101. 18
Anticipation 19
"A claim is anticipated only if each and every element as set forth in 20
the claim is found, either expressly or inherently described, in a single prior 21
art reference." Verdegaal Bros. v. Union Oil Co. of California, 814 F.2d 22
628, 631 (Fed. Cir. 1987). "When a claim covers several structures or 23
compositions, either generically or as alternatives, the claim is deemed 24
anticipated if any of the structures or compositions within the scope of the 25
claim is known in the prior art." Brown v. 3M, 265 F.3d 1349, 1351 (Fed. 26
Cir. 2001). "The identical invention must be shown in as complete detail as 27
is contained in the ... claim." Richardson v. Suzuki Motor Co., 868 F.2d 28
1226, 1236 (Fed. Cir. 1989). The elements must be arranged as required by 29
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the claim, but this is not an ipsissimis verbis test, i.e., identity of terminology 1
is not required. In re Bond, 910 F.2d 831, 832 (Fed. Cir. 1990). 2
Obviousness 3
A claimed invention is unpatentable if the differences between it and 4
the prior art are “such that the subject matter as a whole would have been 5
obvious at the time the invention was made to a person having ordinary skill 6
in the art.” 35 U.S.C. § 103(a) (2000); KSR Int’l Co. v. Teleflex Inc., 550 7
U.S. 398, 406 (2007); Graham v. John Deere Co., 383 U.S. 1, 13-14 (1966). 8
In Graham, the Court held that that the obviousness analysis is 9
bottomed on several basic factual inquiries: “[(1)] the scope and content of 10
the prior art are to be determined; [(2)] differences between the prior art and 11
the claims at issue are to be ascertained; and [(3)] the level of ordinary skill 12
in the pertinent art resolved.” 383 U.S. at 17. See also KSR, 550 U.S. at 13
406. “The combination of familiar elements according to known methods is 14
likely to be obvious when it does no more than yield predictable results.” Id. 15
at 416. 16
“When a work is available in one field of endeavor, design incentives 17
and other market forces can prompt variations of it, either in the same field 18
or a different one. If a person of ordinary skill can implement a predictable 19
variation, § 103 likely bars its patentability.” Id. at 417. 20
“For the same reason, if a technique has been used to improve one 21
device, and a person of ordinary skill in the art would recognize that it would 22
improve similar devices in the same way, using the technique is obvious 23
unless its actual application is beyond his or her skill.” Id. 24
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“Under the correct analysis, any need or problem known in the field 1
of endeavor at the time of invention and addressed by the patent can provide 2
a reason for combining the elements in the manner claimed.” Id. at 420. 3
4
ANALYSIS 5
Claims 6-14 rejected under 35 U.S.C. § 101 as directed to non-statutory 6
subject matter. 7
The Appellants argue these claims as a group. 8
Accordingly, we select claim 6 as representative of the group. 9
37 C.F.R. § 41.37(c)(1)(vii) (2007). 10
The Examiner found that the scheduler is not among the four 11
enumerated categories of patentable subject matter and is no more than a 12
software module not embedded on a computer readable medium or 13
executable by a computer. Accordingly, the Examiner interpreted the claims 14
as process claims (Answer 5:Top ¶). 15
The Appellants contend that as described in Appellants’ Specification, 16
for example, page 6, lines 13-28, a scheduler can be linked to the various 17
systems in the Appellants’ Figure 1, where the scheduler determines a 18
schedule for executing the tasks and the system is arranged to execute the 19
tasks in accordance with the schedule obtained from the scheduler (Br. 9:¶ 20
2.Claims 6-14). 21
We agree with the Appellants. Claim 6, to which the remaining 22
claims in this rejection refer, recites four elements in means plus function 23
format. Thus, each of these means are presumed to require construction 24
under 35 U.S.C. § 112, sixth paragraph. None of the four elements recite 25
structural limitations to the means in the claims. Thus we conclude these 26
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elements are to be construed as means plus function, implying the claim is 1
directed to a machine. Looking at the claim as a whole, the claim is directed 2
to a scheduler. The Specification discloses a scheduler as being part of a 3
digital video transmission system (FF 01). Thus the claim is directed to a 4
particular machine, viz. a digital video transmission system. 5
Accordingly the Examiner erred in interpreting the claim as directed 6
to a method. As such an interpretation was the basis for the Examiner’s 7
analysis for the rejection under 35 U.S.C. § 101, the Appellants have 8
sustained their burden of showing that the Examiner erred in rejecting claims 9
6-14 rejected under 35 U.S.C. § 101 as directed to non-statutory subject 10
matter. 11
Claims 1-3, 6-8, and 10-13 rejected under 35 U.S.C. § 102(b) as anticipated 12
by Abeni. 13
The Examiner found that Abeni anticipated claim 1. The Appellants 14
contend that Abeni fails to describe minimizing violations of the constraints 15
and to describe determining absolute starting and end times and collections 16
of times and associated task processing speeds based on relative times and 17
resource assignments (Br. 11-12). The Appellants’ argument regarding 18
minimizing violations contends that Abeni separates hard and soft tasks and 19
schedules hard tasks based on absolute deadlines and worst case execution 20
times. The Appellants do not make the connection between this contention 21
and the argument regarding minimizing violations, but we take the 22
Appellants to mean that since scheduling is based on worst case, there are no 23
violations to minimize. 24
We disagree with the Appellants. Claim 1 step (a) of constructing 25
constraints is described by Abeni as constructing deadlines each set at time 26
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di,j = ri,j + T i (FF 12). The objective of the system is to minimize the mean 1
tardiness of soft tasks, where tardiness is a violation of the deadlines (FF 2
13). 3
Step (b) of determining relative starting and ending times and resources 4
based on constraints is described by Abeni as assigning each soft task a 5
maximum bandwidth (FF 14) (resources) and arrival or request times (FF 6
11) and mean execution time (FF 12) (relative starting and ending times). 7
Step (c) of determining absolute starting time, absolute ending time and 8
a collection of times and associated task processing speeds, minimizing any 9
violation of the constraints is described by Abeni as release times and fixed 10
deadlines (FF 16) (absolute starting and ending times), deadlines associated 11
with a server (collection of times) and server bandwidth (task processing 12
speeds) (FF 15), and minimizing the mean tardiness of soft tasks 13
(minimizing violation of constraints) (FF 13). 14
Step (d) of determining the schedule is described by Abeni as scheduling 15
soft and multimedia tasks (FF 10) based on the above steps. 16
Thus, contrary to the Appellants’ contention that Abeni does not 17
minimize violation of constraints, we find that Abeni’s deadlines are 18
constraints and that Abeni explicitly recites the minimization of violation of 19
mean tardiness of tasks relative to those deadlines (FF 13). Also, we find 20
that Abeni explicitly describes determining absolute start and end times (FF 21
16). 22
We find that the Appellants correctly observe that the Examiner did not 23
make a finding as to where the minimization limitation in element (c) was 24
found (Br. 11:Claim 1, second ¶). The Examiner simply did not recite the 25
limitation in the analysis. Accordingly, because the Appellants were not 26
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afforded an opportunity to respond to this finding earlier, we will 1
denominate this as a new ground of rejection within the meaning of 37 2
C.F.R. § 41.50(b). 3
Claims 2 and 3 further require defining a sequence of timing windows to 4
which the steps of claim 1 are applied (claim 2) and determining new times 5
when a violation occurs (claim 3). The Examiner found that Abeni 6
described time slots and applied the findings as to claim 1 (Answer 9). We 7
agree as to claim 2. The time periods described by Abeni circumscribe time 8
windows within which Abeni’s process operates. These windows are 9
exemplified in Abeni’s Figures 1 and 2. 10
As to claim 3, the Appellants contend Abeni does not show the 11
determination of a violation of the constraints (Br. 15). We agree with the 12
Appellants. The Examiner found this limitation described by Abeni Figure 3 13
(Answer 9). As the Appellants contend, this is a program flow describing 14
server behavior and does not describe such a determination. Apparently the 15
Examiner takes the process step of determining when the server is idle to be 16
such a determination. We find that the status of the server being idle is not 17
indicative of a violation of a constraint as defined in claim 1. Claim 8 has a 18
similar limitation and the Examiner is therefore similarly in error with claim 19
8. 20
As to the remaining claims, the Appellants apply the arguments for 21
the patentability of claim 1 to all those claims and therefore we find the 22
Appellants have not sustained their burden of showing that the Examiner 23
erred in rejecting claims 1, 2, 6, 7, and 10-13 under 35 U.S.C. § 102(b) as 24
anticipated by Abeni. We denominate this as a new ground of rejection 25
within the meaning of 37 C.F.R. § 41.50(b). We find the Appellants have 26
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sustained their burden of showing that the Examiner erred in rejecting claims 1
3 and 8 under 35 U.S.C. § 102(b) as anticipated by Abeni. 2
Claims 4, 5, 9, and 14 rejected under 35 U.S.C. § 103(a) as unpatentable 3
over Abeni. 4
The Appellants rely on their arguments in support of claim 1 for these 5
claims and accordingly have not sustained their burden of showing that the 6
Examiner erred in rejecting claims 4, 5, 9, and 14 under 35 U.S.C. § 103(a) 7
as unpatentable over Abeni. As with claim 1 and the dependent claims 8
whose rejection is sustained in the preceding rejection, we denominate this 9
as a new ground of rejection within the meaning of 37 C.F.R. § 41.50(b). 10
11
CONCLUSIONS OF LAW 12
The Appellants have sustained their burden of showing that the 13
Examiner erred in rejecting claims 6-14 rejected under 35 U.S.C. § 101 as 14
directed to non-statutory subject matter. 15
The Appellants have not sustained their burden of showing that the 16
Examiner erred in rejecting claims 1, 2, 6, 7, and 10-13 under 35 U.S.C. 17
§ 102(b) as anticipated by Abeni. 18
The Appellants have sustained their burden of showing that the 19
Examiner erred in rejecting claims 3 and 8 under 35 U.S.C. § 102(b) as 20
anticipated by Abeni. 21
The Appellants have not sustained their burden of showing that the 22
Examiner erred in rejecting claims 4, 5, 9, and 14 under 35 U.S.C. § 103(a) 23
as unpatentable over Abeni. 24
25
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NEW GROUNDS OF REJECTION 1
The following new grounds of rejection are entered pursuant to 2
37 C.F.R. § 41.50(b). 3
Claims 1-5 are rejected under 35 U.S.C. § 101 as directed to non-4
statutory processes. 5
Claims 6-14 are rejected under 35 U.S.C. § 112, second paragraph as 6
being indefinite. 7
8
FURTHER PRINCIPLES OF LAW 9
Indefinite Means Plus Function Claims 10
“If there is no structure in the specification corresponding to the 11
means-plus-function limitation in the claims, the claim will be found invalid 12
as indefinite.” Biomedino, LLC v. Waters Technologies Corp., 490 F.3d 13
946, 950 (Fed. Cir. 2007); see also In re Donaldson, 16 F.3d 1189, 1195 14
(Fed. Cir. 1994) (en banc). 15
In Aristocrat Techs. Austl. Pty Ltd. v Inter. Game Tech., 521 F.3d 16
1328, 1333 (Fed. Cir. 2008), the court set forth that for a claim to a 17
programmed computer, a particular algorithm may be the corresponding 18
structure under § 112, sixth paragraph: 19
For a patentee to claim a means for performing a 20
particular function and then to disclose only a 21
general purpose computer as the structure designed 22
to perform that function amounts to pure 23
functional claiming. Because general purpose 24
computers can be programmed to perform very 25
different tasks in very different ways, simply 26
disclosing a computer as the structure designated 27
to perform a particular function does not limit the 28
scope of the claim to “the corresponding structure, 29
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material, or acts” that perform the function, as 1
required by section 112 paragraph 6. 2
That was the point made by this court in 3
WMS Gaming, Inc. v. International Game 4
Technology, 184 F.3d 1339 (Fed.Cir.1999). In that 5
case, the court criticized the district court, which 6
had determined that the structure disclosed in the 7
specification to perform the claimed function was 8
“an algorithm executed by a computer.” The 9
district court erred, this court held, “by failing to 10
limit the claim to the algorithm disclosed in the 11
specification.” Id. at 1348. The rationale for that 12
decision is equally applicable here: a general 13
purpose computer programmed to carry out a 14
particular algorithm creates a “new machine” 15
because a general purpose computer “in effect 16
becomes a special purpose computer once it is 17
programmed to perform particular functions 18
pursuant to instructions from program software.” 19
Id., quoting In re Alappat, 33 F.3d 1526, 1545 20
(Fed. Cir. 1994). The instructions of the software 21
program in effect “create a special purpose 22
machine for carrying out the particular algorithm.” 23
WMS Gaming, 184 F.3d at 1348. Thus, in a 24
means-plus-function claim “in which the disclosed 25
structure is a computer, or microprocessor, 26
programmed to carry out an algorithm, the 27
disclosed structure is not the general purpose 28
computer, but rather the special purpose computer 29
programmed to perform the disclosed algorithm.” 30
Id. at 1349. 31
In a later case, this court made the same 32
point, stating that a “computer-implemented 33
means-plus-function term is limited to the 34
corresponding structure disclosed in the 35
specification and equivalents thereof, and the 36
corresponding structure is the algorithm.” Harris 37
Corp. v. Ericsson Inc., 417 F.3d 1241, 1253 (Fed. 38
Cir. 2005). The court in that case characterized the 39
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20
rule of WMS Gaming as follows: “[T]he 1
corresponding structure for a § 112 ¶ 6 claim for a 2
computer-implemented function is the algorithm 3
disclosed in the specification.” 417 F.3d at 1249. 4
In Aristocrat, the only portion of the Specification that described the 5
structure corresponding to the three functions performed by the claimed 6
“game control means” was a statement that it is within the capability of a 7
worker in the art “‘to introduce the methodology on any standard 8
microprocessor base [sic] gaming machine by means of appropriate 9
programming.’” 521 F.3d at 1334. The court found that the reference to 10
“appropriate programming” imposed no limitation whatever, as any general 11
purpose computer must be programmed. Id. The court further found that 12
the language of claim 1 referring to “‘the game control means being 13
arranged to pay a prize when a predetermined combination of symbols is 14
displayed in a predetermined arrangement of symbol positions selected by a 15
player’” simply describes the function to be performed and not the algorithm 16
by which it is performed. Id. The court further found that the language in 17
claim 1 that recites “defining a set of predetermined arrangements for a 18
current game comprising each possible combination of the symbol position 19
selected by the player which have one and only one symbol position in each 20
column of the display means” is merely a mathematical expression that 21
describes the outcome of performing the function and not a means for 22
achieving that outcome. Id. The court also found that the figures and tables 23
in Aristocrat’s patent, which provided examples of how player selections 24
translate to possible winning combinations, and the corresponding portion of 25
the written description, which contained mathematical descriptions of how 26
many winning combinations would be produced, are simply examples of the 27
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results of the operation of an unspecified algorithm. Id. at 1335. Thus, the 1
court held that Aristocrat failed to disclose the algorithms that transform the 2
general purpose microprocessor to a special purpose computer programmed 3
to perform the disclosed algorithm. Id. 4
In two other recent cases, the Federal Circuit followed Aristocrat in 5
holding means-plus-function claims invalid for indefiniteness for lack of 6
sufficient description of algorithms to transform a general purpose computer 7
to a special purpose of computer under 35 U.S.C. § 112, sixth paragraph. 8
See Finisar Corp. v. DirecTV Group, Inc., 523 F.3d 1323, 1340-41 (Fed. 9
Cir. 2008) and Net Moneyin, Inc. v. Verisign, Inc., 545 F.3d 1359, 1367 10
(Fed. Cir. 2008). 11
Statutory Subject Matter for Process Claims 12
[T]he Court has held that a claim is not a patent-13
eligible “process” if it claims “laws of nature, 14
natural phenomena, [or] abstract ideas.” Diamond 15
v. Diehr, 450 U.S. 175, 185, 101 S.Ct. 1048, 67 16
L.Ed.2d 155 (1981) (citing Flook, 437 U.S. at 589, 17
98 S. Ct. 2522, and Gottschalk v. Benson, 409 U.S. 18
63, 67, 93 S.Ct. 253, 34 L.Ed.2d 273 (1972)). 19
Such fundamental principles [as “laws of nature, 20
natural phenomena, and abstract ideas”] are “part 21
of the storehouse of knowledge of all men . . . free 22
to all men and reserved exclusively to none.” 23
Funk Bros. Seed Co. v. Kalo Inoculant Co., 333 24
U.S. 127, 130, 68 S.Ct. 440, 92 L.Ed. 588 (1948); 25
see also Le Roy v. Tatham, 55 U.S. (14 How.) 156, 26
175, 14 L.Ed. 367 (1852) (“A principle, in the 27
abstract, is a fundamental truth; an original cause; 28
a motive; these cannot be patented, as no one can 29
claim in either of them an exclusive right.”). 30
“Phenomena of nature, though just discovered, 31
mental processes, and abstract intellectual concepts 32
are not patentable, as they are the basic tools of 33
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22
scientific and technological work.” Benson, 409 1
U.S. at 67. . . . 2
In re Bilski, 545 F.3d 943, 952 (Fed. Cir. 2008) (en banc), petition for cert. 3
filed, 77 USLW 3442 (U.S. Jan. 28, 2009) (No. 08-964) (footnote omitted). 4
The Court in Diehr thus drew a distinction 5
between those claims that “seek to pre-empt the 6
use of” a fundamental principle, on the one hand, 7
and claims that seek only to foreclose others from 8
using a particular “application ” of that 9
fundamental principle, on the other. 450 U.S. at 10
187, 101 S.Ct. 1048. Patents, by definition, grant 11
the power to exclude others from practicing that 12
which the patent claims. Diehr can be understood 13
to suggest that whether a claim is drawn only to a 14
fundamental principle is essentially an inquiry into 15
the scope of that exclusion; i.e., whether the effect 16
of allowing the claim would be to allow the 17
patentee to pre-empt substantially all uses of that 18
fundamental principle. If so, the claim is not 19
drawn to patent-eligible subject matter. 20
Id. at 953. 21
The Supreme Court . . . has enunciated a definitive 22
test to determine whether a process claim is 23
tailored narrowly enough to encompass only a 24
particular application of a fundamental principle 25
rather than to pre-empt the principle itself. A 26
claimed process is surely patent-eligible under 27
§ 101 if: (1) it is tied to a particular machine or 28
apparatus, or (2) it transforms a particular article 29
into a different state or thing. See Benson, 409 30
U.S. at 70 ("Transformation and reduction of an 31
article 'to a different state or thing' is the clue to the 32
patentability of a process claim that does not 33
include particular machines."); Diehr, 450 U.S. at 34
192 (holding that use of mathematical formula in 35
process "transforming or reducing an article to a 36
different state or thing" constitutes patent-eligible 37
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subject matter); see also Flook, 437 U.S. at 589 n.9 1
("An argument can be made [that the Supreme] 2
Court has only recognized a process as within the 3
statutory definition when it either was tied to a 4
particular apparatus or operated to change 5
materials to a 'different state or thing'"); Cochrane 6
v. Deener, 94 U.S. 780, 788 (1876) ("A process is 7
. . . an act, or a series of acts, performed upon the 8
subject-matter to be transformed and reduced to a 9
different state or thing."). 10
Id. at 954 (footnote omitted). 11
The machine-or-transformation test is a two-12
branched inquiry; an applicant may show that a 13
process claim satisfies § 101 either by showing 14
that his claim is tied to a particular machine, or by 15
showing that his claim transforms an article. See 16
Benson, 409 U.S. at 70. Certain considerations are 17
applicable to analysis under either branch. First, as 18
illustrated by Benson and discussed below, the use 19
of a specific machine or transformation of an 20
article must impose meaningful limits on the 21
claim's scope to impart patent-eligibility. See 22
Benson, 409 U.S. at 71-72. Second, the 23
involvement of the machine or transformation in 24
the claimed process must not merely be 25
insignificant extra-solution activity. See Flook, 26
437 U.S. at 590. 27
Id. at 961-62. 28
ANALYSIS 29
Claims 1-5 rejected under 35 U.S.C. § 101 as directed to non-statutory 30
processes. 31
We apply the machine-or-transformation test, as described in Bilski, to 32
determine whether the subject matter of process claims 1-5 are patent-33
eligible under 35 U.S.C. § 101. 34
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Process claims 1-5 recite a series of process steps. Each of these steps 1
is not tied in any manner to a machine. In other words, these claims do not 2
limit the process steps to any specific machine or apparatus. Thus, the 3
claims fail the first prong of the machine-or-transformation test because they 4
are not tied to a particular machine or apparatus. The steps of process claims 5
1-5 also fail the second prong of the machine-or-transformation test because 6
the data processed in the claims do not represent physical and tangible 7
objects. Rather, the data represent information about schedules. Schedules 8
are intangible concepts rather than physical entities. Further, there is no 9
physical data as such, but only a description of information that is used for 10
deriving schedules. Claims 1-5 do not require the use of any machine or 11
physical transformation, but may be performed mentally. Thus, the process 12
of claims 1-5 fails the machine-or-transformation test and is not patent-13
eligible under 35 U.S.C. § 101. 14
Claims 6-14 rejected under 35 U.S.C. § 112, second paragraph, as 15
indefinite. 16
It is undisputed that Appellants intended to invoke 35 U.S.C. § 112, 17
sixth paragraph, by the use of “means for” language in independent claim 6. 18
Our rules require that for claims including “means for” language, the Appeal 19
Brief contain: 20
For each independent claim involved in the appeal 21
and for each dependent claim argued separately 22
under the provisions of paragraph (c)(1)(vii) of this 23
section, every means plus function and step plus 24
function as permitted by 35 U.S.C. § 112, sixth 25
paragraph, must be identified and the structure, 26
material, or acts described in the specification as 27
corresponding to each claimed function must be 28
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set forth with reference to the specification by page 1
and line number, and to the drawing, if any, by 2
reference character. 3
37 C.F.R. § 41.37(c)(1)(v). Thus, we consult the Appellants’ Summary of 4
Claimed Subject Matter in the Brief to assess whether sufficient structure is 5
disclosed in the Specification for performing the function in the means-plus-6
function elements of claim 6. 7
Our analysis will focus on the four means recited in claim 6. 8
The first element of claim 6 recites “constructing means for 9
constructing a set of constraints from given requirements of each task and 10
from given limitations on each resource.” The function recited in this 11
element is constructing a set of constraints from requirements and resource 12
limitations. The Appellants point to Figure 2, reference 201 and to 13
Specification page 7, line 32 to page 9, line 13 as support for constructing a 14
set of constraints from given requirements of each task and from given 15
limitations on each resource as claimed (Br. 4). 16
Figure 2 is a block diagram containing unlabeled blocks. Reference 17
201 is simply referred to as a constructing module on Specification page 7, 18
line 29. Specification page 7, line 32 to page 9, line 13 describes defining 19
the requirements of a task a from a set A of tasks that at least comprise a 20
release time, denoted by r(a), and a deadline or due time, denoted by d(a), 21
and the processing speed of the task a. The value of the tasks and the 22
scheduling objectives are described (FF 02). No physical structure or 23
process algorithm for implementing the constructing means is described (FF 24
03). 25
We find that, separately, that page 10 of the Specification describes in 26
mathematical notation the inequalities certain constraints require after 27
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having been constructed. But we further find that the Appellants did not cite 1
page 10 of the Specification as supporting the constructing means and that 2
no structure or algorithm for actually constructing the constraint inequalities 3
on page 10 of the Specification are described. 4
Thus, the Appellants’ Specification describes no particular hardware 5
structure and generally refers to a program that performs the function of 6
constructing a set of constraints from requirements and resource limitations, 7
but it does not describe an algorithm by which the function of constructing 8
the constraints is implemented (FF 03). Accordingly, the Specification fails 9
to disclose the algorithms that transform an undisclosed processor to a 10
special purpose computer programmed to perform the disclosed function of 11
the first element of claim 1. 12
The second element of claim 6 recites “ordering means for 13
determining for each task a relative starting time, a relative ending time and 14
an assignment of resources, based on the constraints from said set.” The 15
function recited in this element is determining a relative starting time and 16
ending time and an assignment of resources, based on the constraints. The 17
Appellants point to Figure 2, reference 202 and to Specification page 7, lines 18
28-31, and page 12, line 26 to page 13, line 25 as support for determining for 19
each task a relative starting time, a relative ending time and an assignment of 20
resources, based on the constraints from said set as claimed (Br. 4). 21
Figure 2 reference 202 is simply referred to as an ordering module on 22
Specification page 7, line 29. Specification page 7, lines 28-31 and page 12, 23
line 26 to page 13, line 25 describes an ordering module that determines for 24
each task a relative starting time, a relative ending time and an assignment of 25
resources, based on the constraints constructed by the constructing module. 26
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The relative ordering should ideally satisfy the constraints, since it will be 1
used as input for the timing module, which computes the value to be used in 2
the schedule (FF 04). No physical structure or process algorithm for 3
implementing the ordering means is described (FF 05). 4
Thus, the Appellants’ Specification describes no particular hardware 5
structure and generally refers to a program that performs the function of 6
determining a relative starting time and ending time and an assignment of 7
resources, based on the constraints, but it does not describe an algorithm by 8
which the function of ordering the tasks is implemented (FF 03). 9
Accordingly, the Specification fails to disclose the algorithms that transform 10
an undisclosed processor to a special purpose computer programmed to 11
perform the disclosed function of the second element of claim 1. 12
The third element of claim 6 recites “timing means for determining 13
for each task an absolute starting time, an absolute ending time and a 14
collection of times and associated task processing speeds.” The function 15
recited in this element is determining an absolute starting time and ending 16
time and a collection of times. The Appellants point to Figure 2, reference 17
203 and to Specification page 7, lines 28-31 and page 13, line 7 to page 14, 18
line 15 as support for determining for each task an absolute starting time, an 19
absolute ending time, and a collection of times and associated task 20
processing speeds as claimed (Br. 4-5). 21
Figure 2 reference 203 simply refers to a timing module on 22
Specification page 7, line 29. Specification page 7, lines 28-31 and page 13, 23
line 7 to page 14, line 15 describes a timing module that should minimize 24
any violation of the constraints as received from the constructing module, 25
ideally producing output which satisfies all the constraints for each task. 26
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The timing module has the task of determining for each task an absolute 1
starting time, an absolute ending time, and a collection of times and 2
associated task processing speeds. As an input, the timing module receives 3
for each task the determined relative starting time, relative ending time and 4
assignment of resources from the ordering module (FF 06). Although the 5
Specification describes using linear programming to solve the scheduling 6
problem, Figure 2 shows that the linear programming module 206 is separate 7
and distinct from the timing module 203. Further, linear programming itself 8
is not an algorithm, but merely a title for a general mathematical concept. 9
No specific linear programming algorithm is described in the Specification. 10
No specific algorithm for implementing the timing means is described (FF 11
07). 12
Thus, the Appellants’ Specification describes no particular hardware 13
structure and generally refers to a program that for each task performs the 14
function of determining an absolute starting time and ending time and a 15
collection of times, but it does not describe an algorithm by which the 16
function of timing the tasks is implemented (FF 07). Accordingly, the 17
Specification fails to disclose the algorithms that transform an undisclosed 18
processor to a special purpose computer programmed to perform the 19
disclosed function of the third element of claim 1. 20
The fourth element of claim 6 recites “scheduling means for 21
determining the schedule, comprising for each task the determined absolute 22
starting time, absolute ending time, collection of times and associated task 23
processing speeds and assignment of resources to said task.” The function 24
recited in this element is determining the schedule. The Appellants point to 25
Figure 2, reference 204 and to Specification page 7, lines 28-31, page 13, 26
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line 6 to page 14, line 2, and page 16, line 24 to page 17, line 10 as support 1
for determining the schedule, comprising for each task the determined 2
absolute starting time, absolute ending time, collection of times, and 3
associated task processing speeds and assignment of resources to said task as 4
claimed (Br. 5). 5
Figure 2 reference 204 is simply referred to a scheduling module on 6
Specification page 7, lines 29-30. Specification page 7, lines 28-31, page 7
13, line 6 to page 14, line 2, and page 16, line 24 to page 17, line 10 8
describes a scheduler that can optionally determine whether any violation of 9
the constraints has occurred. If it turns out that this is the case, it then 10
determines at least one of a new relative starting time for a task, a new 11
relative ending time for a task, and a new assignment of a resource to a task, 12
for instance by activating the ordering module to have it produce a new 13
relative ordering or assignment (FF 08). No specific algorithm for 14
implementing the scheduling means is described (FF 09). 15
Thus, the Appellants’ Specification describes no particular hardware 16
structure and generally refers to a program that performs the function of 17
determining the schedule, but it does not describe an algorithm by which the 18
function of determining the schedule is implemented (FF 03). Accordingly, 19
the Specification fails to disclose the algorithms that transform an 20
undisclosed processor to a special purpose computer programmed to perform 21
the disclosed function of the fourth element of claim 1. 22
The Appellants have failed to disclose any algorithm, and thus has 23
failed to adequately describe sufficient structure, for performing the recited 24
functions of claim 6 so as to render the claim definite. Accordingly, claim 6 25
and claims 7-14 depending therefrom are unpatentable under 35 U.S.C. 26
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§ 112, second paragraph, as indefinite. Aristocrat, 521 F.3d at 1333. 1
DECISION 2
To summarize, our decision is as follows: 3
• The rejection of claims 6-14 under 35 U.S.C. § 101 as directed to non-4
statutory subject matter is not sustained. 5
• The rejection of claims 1, 2, 6, 7, and 10-13 under 35 U.S.C. § 102(b) 6
as anticipated by Abeni is sustained. 7
o This rejection is denominated as a new ground within the 8
meaning of 37 C.F.R. § 41.50(b). 9
• The rejection of claims 3 and 8 under 35 U.S.C. § 102(b) as 10
anticipated by Abeni is not sustained. 11
• The rejection of claims 4, 5, 9, and 14 under 35 U.S.C. § 103(a) as 12
unpatentable over Abeni is sustained. 13
o This rejection is denominated as a new ground within the 14
meaning of 37 C.F.R. § 41.50(b). 15
• We enter two new grounds of rejection pursuant to 37 C.F.R. 16
§ 41.50(b). 17
o Claims 1-5 are rejected under 35 U.S.C. § 101 as being directed 18
to non-statutory processes. 19
o Claims 6-14 are rejected under 35 U.S.C. § 112, second 20
paragraph as being indefinite. 21
As noted supra, this decision contains a new ground of rejection 22
pursuant to 37 C.F.R. § 41.50(b). 37 C.F.R. § 41.50(b) provides that “[a] 23
new ground of rejection pursuant to this paragraph shall not be considered 24
final for judicial review.” 25
37 C.F.R. § 41.50(b) also provides that Appellants, WITHIN TWO 26
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MONTHS FROM DATE OF THE DECISION, must exercise one of the 1
following two options with respect to the new ground of rejection to avoid 2
termination of the appeal as to the rejected claims: 3
4
(1) Reopen prosecution. Submit an appropriate 5
amendment of the claims so rejected or new 6
evidence relating to the claims so rejected, or both, 7
and have the matter reconsidered by the examiner, 8
in which event the proceeding will be remanded to 9
the examiner . . . 10
11
(2) Request Rehearing. Request that the 12
proceeding be reheard under § 41.52 by the Board 13
upon the same record . . . 14
No time period for taking any subsequent action in connection with 15
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv) (2007). 16
17
AFFIRMED-IN-PART; 37 C.F.R. § 41.50(b) 18
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US Philips Corporation 28
P. O. BOX 3001 29
BRIARCLIFF MANOR, NY 10510-8001 30