Ex Parte Allen et al

Board of Patent Appeals and Interferences

Jul 22, 2010

10675726 (B.P.A.I. Jul. 22, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
________________

Ex parte JOSHUA S. ALLEN, BRYAN M. ELLINGTON,
BRADFORD AUSTIN FISHER, ROBERT L. NIELSEN, and
JACOB YACKENOVICH
________________

Appeal 2009-012564
Application 10/675,726
Technology Center 2400
________________

Before ALLEN R. MACDONALD, Vice Chief Administrative Patent Judge,
ROBERT E. NAPPI, and BRADLEY W. BAUMEISTER, Administrative
Patent Judges.

BAUMEISTER, Administrative Patent Judge.

DECISION ON APPEAL1

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
shown on the PTOL-90A cover letter attached to this decision.

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STATEMENT OF CASE
Appellants appeal under 35 U.S.C. §§ 6(b) and 134 from the
Examiner’s rejection of claims 1-23. We affirm.

BACKGROUND
Appellants’ invention relates to a service level management system
for a computer network that “can track services provided to customers and
compare the delivery of services to the service terms of a corresponding
[contractual service level agreement] SLA” (Spec. 3). Creating an “SLA
involves choosing the thresholds across which a breach of the SLA can be
identified,” and at the time of the invention, “SLA breach values [were]
manually selected” (Spec. 3). Appellants’ invention “addresses the
deficiencies of the art in respect to establishing an SLA breach value and
provides a novel an non-obvious method, system and apparatus for SLA
breach value estimation” (Spec. 4).
Claims 1, 6, and 15 are the independent claims on appeal, respectively
directed towards “[an SLA] breach value estimator,” “a method for
estimating [an SLA] beach value,” and “[a] machine readable storage having
stored thereon a computer program for estimating [an SLA] breach value.”
Independent claim 1 is illustrative, reading as follows:
1. A service level agreement (SLA) breach value estimator
comprising:
a communicative coupling to data produced for at least
one resource; and,
a further communicative coupling to a user interface
through which an SLA breach value estimate is proposed; and,
at least one SLA breach value estimation process selected
from the group consisting of an aggregated process, a specific
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customer process, a customer resource subset process, and a
predictive process.

THE REJECTION UNDER 35 U.S.C. § 101
Claims 1-5 stand rejected under 35 U.S.C. § 101 as being directed
towards unpatentable subject matter (Ans. 3, 8). With respect to this
rejection, Appellants argue claims 1-5 together as a group (Br. 4).
Accordingly, we select independent claim 1 as representative. See 37 C.F.R.
§ 41.37(c)(1)(vii).
The Examiner notes that Appellants’ Specification states, “‘the
present invention can be realized in hardware, software or a combination of
both’” (Ans. 8 citing Spec. 12:3-4). The Examiner therefore finds that claim
1 is written broadly enough to be interpreted as being directed towards
software per se and, accordingly, concludes that claim 1 is not directed to
patentable subject matter (Ans. 8).
Appellants contend that the ordinary and customary definitions of the
term coupling indicate that a communicative coupling is a device and that
“the Examiner has failed to produce any evidence that the communicative
coupling is ‘an abstract idea or software’” (Br. 5-6).
Appellants additionally assert that the Examiner’s position “that a
claim must recite hardware elements to enable its functionality is not a
proper statement of the law” (Br. 4). But rather, “if the claims, under a
broadest reasonable interpretation, could require the use of a statutory
subject matter (e.g., a computer, a device, a product, etc.), then the claims
meet the requirements of 35 U.S.C. § 101” (see Br. 4-5, citing In re
Comiskey (Appeal No. 2006-1286 (Fed. Cir. Sep. 20, 2007))).

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Issues
Appellants’ arguments present the following issues:
1. Did the Examiner err in interpreting the term “communicative
coupling” as reading on software per se?
2. Did the Examiner err in concluding that a claim written broadly
enough to be interpreted as being directed to software per se is subject to
rejection under 35 U.S.C. § 101 for being directed to patent ineligible
subject matter?
Findings of Fact
The record supports the following Findings of Fact (Facts) by a
preponderance of the evidence:
1. Definitions for “coupling” include “Elect. a. the association of two
circuits or systems in such a way that power may be transferred from one to
the other. b. a device or expedient to insure this.” Webster’s Encyclopedic
Unabridged Dictionary of the English Language, p. 334 (1989).
2. Appellants state that “[t]he present invention can be realized in
hardware, software, or a combination of hardware and software” (Spec.
12:3-4).
Principles of Law
During examination of a patent application, pending claims are given
their broadest reasonable construction consistent with the Specification. In
re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004); In re
Prater, 415 F.2d 1393, 1404-05 (CCPA 1969).
It is the Appellants’ burden to precisely define the invention, not the
USPTO’s. In re Morris, 127 F.3d 1048, 1056 (Fed. Cir. 1997). Appellants
always have the opportunity to amend the claims during prosecution, and
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broad interpretation by the Examiner reduces the possibility that the claim,
once issued, will be interpreted more broadly than is justified. In re Prater,
415 F.2d 1393, 1404-05 (CCPA 1969).
A patent claim must be limited so as to exclude covering nonstatutory
subject matter in order to avoid a rejection under 35 U.S.C. § 101. Amgen,
Inc. v. Hoechst Marion Roussel, Inc., 314 F.3d 1313, 1329 (Fed. Cir. 2003).
Analysis
The Examiner did not err in interpreting the term “communicative
coupling” as reading on software per se. Appellants acknowledge that a
coupling may be a device, a means of connecting, or a common part (Br. 5-
6). A coupling may be additionally defined as “an association” or “an
expedient to insure [that power may be transferred between electrical
components]” (Fact 1). Appellants’ Specification provides no express
definition for the term “communicative coupling,” and the Specifications’
usage of the term “communicative coupling” (see, e.g., Spec. 4, 8-9) does
not exclude any of these potential common definitions. Moreover,
Appellants have provided no rationale for why it would be improper to
interpret software per se as any one of a device, a means of connecting, a
common part, or an expedient to insure the transfer of electrical signals
between electrical components. Rather, and as noted by the Examiner (Ans.
8), Appellants’ Specification expressly states that “[t]he present invention
can be realized in hardware, software, or a combination of hardware and
software” (Fact 2). As such, we see no error in interpreting a
“communicative coupling” as reading on software that either (1) gathers data
that is produced for a resource, or alternatively (2) forwards breach value
estimates to an appropriate user interface.
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Turning to claim 1 as a whole, the Specification does not define what
structure must be associated with an SLA breach value estimator (see
generally, Spec.). Moreover, Appellants have not alleged that the term
“estimator” denotes any commonly understood structure, much less have
they provided any evidence in support of such an allegation (see generally,
Br.). Nor have Appellants disputed that the last limitation, which is directed
to “at least one SLA breach value estimation process,” may be reasonably
interpreted as reading on software per se. As such, the Examiner’s
interpretation that claim 1 reads on software per se is a reasonable one.
We now turn to the issue of whether the Examiner erred in concluding
that a claim written broadly enough to be interpreted as being directed to
software per se is subject to rejection under 35 U.S.C. § 101 for being
directed to patent ineligible subject matter? We agree with the Examiner
that a rejection under 35 U.S.C. § 101 is proper for such claims. Regardless
of how Appellants may be interpreting various statements made by the Court
of Appeals in Comiskey (see Br. 4-5), the law is clear that a patent claim that
is broad enough to cover both statutory subject matter and nonstatutory
subject matter is subject to rejection under 35 U.S.C. § 101. Amgen, Inc. v.
Hoechst Marion Roussel, Inc., 314 F.3d at 1329.
For the foregoing reasons, we find that the Examiner did not err in
rejecting representative claim 1 under 35 U.S.C. § 101 as being directed to
patent ineligible subject matter. Accordingly, we will sustain the
Examiner’s rejection of that claim as well as claims 2-5 which depend from
claim 1.

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THE REJECTION UNDER 35 U.S.C. § 102(e)
Claims 1-23 stand rejected under 35 U.S.C. § 102(e) as being
anticipated by Betge-Brezetz (US 2005/0177629 A1) (Ans. 3-11).
With respect to this rejection, Appellants argue claims 1 and 5-23 together as
a first group, dependent claim 2 individually as a second group, and
dependent claims 3 and 4 together as a third group (Br. 6). Accordingly, we
select independent claim 1 as representative of claims 1 and 5-23, and we
select claim 3 as representative of dependent claims 3 and 4. See 37 C.F.R.
§ 41.37(c)(1)(vii).
CLAIM 1
Appellants note that claim 1 recites “a further communicative
coupling to a user interface through which an SLA breach value estimate is
proposed” (Br. 8), and they argue that the concept of a breach value estimate
is absent from Betge-Brezetz (Br. 8-11). Appellants also argue that they are
unclear as to where the cited prior art teaches at least one SLA breach value
estimation process (Br. 10). More specifically, Appellants argue that the
parameter estimates referred to in paragraph [0049] of Betge-Brezetz are in
relation to a service level agreement usage predictive profile, but that these
parameters being estimated are not disclosed as being SLA breach values.
Rather, “these parameters are used to ‘[predict] customer requirements in
terms of resources and/or services’” (Br. 10-11).
Appellants further argue that the Examiners anticipation rejection fails
to comply with 37 C.F.R. § 1.104(c) because the Examiner has failed to
clearly identify how the prior art’s elements correspond to the individual
claim elements (Br. 8). However, any question of whether the Examiner has
complied with the requirements of 37 C.F.R. § 1.104(c) is not a matter
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properly considered by the Board of Appeals and Interference in an appeal
under 35 U.S.C. § 134.
Issues
Appellants’ arguments, then, raise the following issues:
1. Does Betge-Brezetz disclose a communicative coupling to a user
interface through which an SLA breach value estimate is proposed?
2. Does Betge-Brezetz disclose at least one breach value estimation
process?
Additional Findings of Fact
3. [Betge-Brezetz’s] invention allows the network manager to
define better the terms of the service level agreements (SLA)
that it has to enter into with its future customers, taking account
of the existing network, and the terms of the service level
agreements that it must enter into with its future customers after
the network has been modified. . . .
[T]he invention can also be used in the service creation
and service offer phase effected by the operator of the network.
Instead of varying the configuration of the existing network, it
is possible to vary the definitions of the service level
agreements to optimize the definitions of the service level
specifications that can be supported by the existing network.

(¶¶ [0078], [0081]).
4. Betge-Brezetz’s processing system 1 includes a graphical user
interface 5 that includes first and second display modules 10, 15 (e.g., ¶¶
[0045], [0051], and [0063]; Fig. 2).
Analysis
Under at least one reasonable claim interpretation, Betge-Brezetz does
disclose a communicative coupling to a user interface through which an SLA
breach value estimate is proposed.
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Appellants contend that claim 1 is directed to a device, as opposed to
a process, and that a communicative coupling is also a device (Br. 4). Even
accepting Appellants’ position, though, the Specification still fails to
expressly define or limit what devices may constitute a “communicative
coupling.” As such, it is reasonable to interpret this claim term as reading
on any electrical communication means (e.g., cable, wire, bus, or trace), as
well as, for example, any wireless, optical, or audible communication means,
for transmitting information or electrical signals from one component to
another (see Fact 1).
The claim limitation further requires that one end of this
communicative coupling be “to a user interface.” The rest of the claim
limitation, “through which an SLA breach values estimate is proposed,”
recites the use intended for the claimed structure. However, nothing in
claim 1 affirmatively sets forth any structure that accepts the breach value
estimate (or data). Nor does claim 1 affirmatively recite any structure that
links this data to any component that is capable of performing the
subsequently recited “at least one SLA breach value estimation process.” As
such, the limitation “a further communicative coupling to a user interface
through which an SLA breach value estimate is proposed” merely reads, for
example, on a cable for various data input components that are capable of
proposing SLA breach value estimates. That is, the contested limitation
reads on, inter alia, a cable for a computer keyboard or mouse.
In that Betge-Brezetz discloses a communication network (e.g.,
Abstract), one of ordinary skill in the art would understand Betge-Brezetz as
implicitly disclosing the presence of computer keyboards and other user-
interface input devices for the network. One of ordinary skill would further
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understanding that such input devices have associated means, such as
electrical cables, for communicatively coupling these input devices to the
network. See In re Preda, 401 F.2d 825, 826 (CCPA 1968) (noting that “in
considering the disclosure of a reference, it is proper to take into account not
only specific teachings of the reference but also the inferences which one
skilled in the art would reasonably be expected to draw therefrom”).
We now turn to the last limitation of claim 1 and the issue of whether
Betge-Brezetz discloses at least one SLA breach value estimation process.
We find that it does.
Appellants’ Specification refers to a “SLA breach value estimation
process” in reference to a process for estimating or automatically selecting
SLA breach values. However, the Specification does not expressly define or
limit what is meant by the term “SLA breach value estimation process.”
Under the broadest reasonable interpretation, then, an SLA breach value
estimation process could be interpreted to read on a process that employs
SLA breach value parameters as data inputs for estimating other results,
such as future network hardware or service requirements.
Appellants acknowledge that Betge-Brezetz generates a service level
agreement usage predictive profile that estimates parameters for
“‘[predicting] customer requirements in terms of resources and/or services’”
(Br. 10-11, citing Betge-Brezetz ¶ [0050] ). That is, Betge-Brezetz predicts
resource requirements based upon an analysis of service level agreement
breach values. As such, the term “SLA breach value estimation process” of
claim 1 is broad enough to read on the network planning proposal process
of Betge-Brezetz.
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Furthermore, even if “SLA breach value estimation process” is
interpreted more narrowly as only meaning a process for estimating or SLA
breach values, Betge-Brezetz still anticipates claim 1. Betge-Brezetz
additionally states that such a process is an additional aspect of the invention
(see Fact 3).
Claim 2
Claim 2 depends from claim 1 and further recites that “the estimator
[of claim 1] is disposed within an SLA builder.” Appellants allege that the
Examiner is mischaracterizing the teachings of Betge-Brezetz in finding
“that Betge-Brezetz ‘discusses future service level agreements that will [be]
created for future customers’” (Br. 12). The issue, then, is: does Betge-
Brezetz discloses that it’s system of configuring a communication network
further creates or “builds” future service level agreements?
Appellants have not alleged that the term “SLA builder” has any art-
recognized meaning (see generally, Br. 11-12). Nor does Appellants’
Specification express define either what structural components constitute an
SLA builder or what minimum functions an SLA builder must perform.
Instead, the Specification generally sets forth that an SLA builder 110 is
“configured to generate an SLA 130 based upon the performance of one or
more resources 144” (Spec. 4). We understand, then, that an SLA builder
can either be (1) fully automated, so as to automatically gather all requisite
data and create or “build” an SLA without a human operator manually
entering any data, or (2) partially automated, so as to create an SLA after a
human operator manually enters at least some data into the computer.
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Betge-Brezetz discloses that the invention can be used to create future
service level agreements, (Fact 3). As such, the Examiner reasonably found
that Betge-Brezetz’s system constitutes or includes an SLA builder.
Claim 3
Dependent claim 3 states that “[t]he SLA breach value estimator of
claim 1[ ] further compris[es] a graphical user interface configured to render
a chart of resource data over time derived from said produced data along
with an indication of a current SLA breach value setting and a proposed
SLA breach value setting” (emphasis added). Appellants do not dispute that
Betge-Brezetz discloses a graphical user interface (Br. 12-13). Rather,
Appellants argue that the prior art’s references “to future service level
agreements do not inherently establish that these passage refer to a current
SLA breach value setting and a proposed SLA breach value” (id.).
We need not decide, though, whether Betge-Brezetz’s system actually
renders a chart of resource data over time based upon, inter alia, current and
proposed SLA breach value settings. The claim term “graphical user
interface” reads on a computer monitor. The italicized portion of the claim
language that follows “graphical user interface” (see supra) is directed
towards the intended use of the graphical user interface. But claim 3 does
not further recite any components (e.g., hardware or software) that actually
cause the data to be rendered on the graphical user interface. That is, claim
3 only requires that the SLA breach value estimator of claim 1 further
comprises a computer monitor that is capable of rendering the recited chart
of resource data. See, e.g., Hewlett-Packard Co. v. Bausch & Lomb Inc.,
909 F.2d 1464, 1468 (Fed. Cir. 1990) (noting “apparatus claims cover what
a device is, not what a device does”).
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Turning to the cited art, Betge-Brezetz’s processing system 1 includes
a graphical user interface 5 that includes first and second display modules
10, 15 (Fact 4). Appellants do not dispute this fact. Nor do Appellants
question whether Betge-Brezetz’s graphical user interface, if provided with
the appropriate computer instructions and data, would be capable of
rendering a chart or resource data over time that is derived from produced
data along with an indication of current and proposed SLA breach value
settings. Accordingly, we sustain the Examiner’s rejection of representative
claim 3 as well as claim 4 which depends from claim 3.

DECISION
The Examiner’s decision rejecting claims 1-23 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). See 37 C.F.R.
§ 1.136(a)(1)(iv).

AFFIRMED

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