Ex Parte Alsup et al

Patent Trial and Appeal Board

Jul 17, 2013

11354479 (P.T.A.B. Jul. 17, 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.
11/354,479 02/14/2006 Marshal Alsup C79.U06-TRIGEO 9584
30086 7590 07/17/2013
Huntsman Law Group, PLLC
10400 W. Overland Road, #174
Boise, ID 83709
EXAMINER
PAN, YONGJIA
ART UNIT PAPER NUMBER
2171
MAIL DATE DELIVERY MODE
07/17/2013 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 MARSHAL ALSUP, GREG BEYL,
and MICHAEL MALOOF
____________

Appeal 2011-001720
Application 11/354,479
Technology Center 2100
____________

Before CARL W. WHITEHEAD, JR., ERIC S. FRAHM, and
ANDREW J. DILLON, Administrative Patent Judges.

DILLON, Administrative Patent Judge.

DECISION ON APPEAL

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Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
rejections of claims 1-20. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm-in-part and enter new grounds of rejection.
STATEMENT OF THE CASE
The present invention is a graphical user interface (GUI) for building
a correlation rule expression. Spec., abstract. An embodiment of the
invention is illustrated by Appellants’ Figure 5, reproduced below. Id. at ¶
15.

The GUI of Appellants’ Figure 5 illustrates an embodiment of
the invention.
As shown, object category menus are opened within an “object chooser
panel” 30. Spec., ¶ 46. Displayed objects are then dragged and dropped
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from the object chooser panel 30 into an “expression panel” 10 and, more
particularly, into an included “correlation frame” 11 and “action frame” 24.
Id.
The Examiner relies on the following references as evidence of
unpatentability:
Smith US 5,485,618 Jan. 16, 1996
Zink US 6,738,964 B1 May 18, 2004
QtUndoManager Class Reference, Qt. Solutions (July 2005).
REJECTIONS
The Examiner rejected claims 7-14 under 35 U.S.C. § 101 as directed
to nonstatutory subject matter. Ans., p. 4.1
The Examiner rejected claims 1-3, 6-11, 14-17, and 20 under
35 U.S.C. § 102 as anticipated by Smith. Id. at pp. 4-12.
The Examiner rejected claims 4, 5, 12, 18, and 19 under 35 U.S.C.
§ 103 as obvious over Smith and Zink. Id. at pp. 12-16.
The Examiner rejected claim 13 under § 103 as obvious over Smith
and QtUndoManager. Id. at p. 16.
ANALYSIS
§ 101 Rejection of Claims 7-14
Claims 7-14 stand rejected as directed to nonstatutory subject matter.
Appellants address claims 7-14 collectively. App. Br., p. 9. Claims 8-14

1 Throughout this opinion, we refer to the Appeal Brief filed April 16, 2009
(“App. Br.”) and the Examiner’s Answer mailed July 20, 2010 (“Ans.”).
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accordingly stand or fall with independent claim 7, from which they depend.
37 C.F.R. § 41.37(c)(1)(iv).
Claim 7 is directed to a “correlation rule builder” comprising “an
object chooser panel,” “expression object menu bar,” and “expression panel”
each displayed by a GUI, which is configured for dragging/dropping objects
from the object chooser panel to the expression panel.2 The Examiner
rejects claim 7 as directed to nonstatutory subject matter because:
The “correlation builder” in claim 7 is a collection of
descriptions (alert events, relational terms) and objects (panels),
collectively called components. The specification discloses
“components” … [“]as used herein, may refer to any
combination of software, firmware, or hardware used to
perform the specified function or functions” ([0029-0030])[.
As] such, claim 7 is directed to software per se which is non-
functional descriptive material and non-statutory. Claims 8-14
are rejected based on similar rationale.
Ans., p. 4. Appellants argue:
[T]he limitations of claim 7 do not claim an abstract collection
of descriptions but rather claim 7 expressly includes structure
and function such as the location of various control panels, and
required function that must occur as the result of a drag-and-

2 We note that claim 15 is directed to a “machine readable medium.” The
amended Specification’s description of such a medium does not disclaim
transitory signals, but rather states: “The present invention may also be
embodied in a machine readable medium, including, but not limited to,
persistent media associated with computer systems[.]” Spec., ¶ 27
(emphasis added). We leave the Examiner to reevaluate claim 15 and its
dependent claims in light of Manual of Patent Examining Procedure §
2106(I), which was revised after mailing of the Examiner’s Answer and
states “[a] claim that covers both statutory and non-statutory embodiments
… is directed to non-statutory subject matter.”
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drop function. Contrary to the Examiner’s assertion, claim 7
does not mention components or non-functional software.
App. Br., p. 7.
Appellants’ argument is not persuasive. The Examiner determined
that the claimed correlation rule builder can encompass mere software per se
(see supra, p. 4 (Examiner’s block quote)); that is, as opposed to a process
executed by code, a machine programmed by code, or a non-transitory
medium storing code. Appellants have not responded with evidence, or an
even argument, that the claimed builder is rather restricted to a statutory
class of invention, i.e., to a “process, machine, manufacture, or composition
of matter” (35 U.S.C. § 101). Appellants only argue that the claim scope
does not preempt an abstract idea. See supra, p. 4 (Appellants’ block quote).
However, if (and only if) a claimed invention is restricted to a statutory
class, then (and only then) the question arises as to whether the claimed
invention is either limited to a practical application (patent eligible) or
preempts an abstract idea (patent ineligible exception). Cf., Bilski v.
Kappas, 130 S.Ct. 3218, 3225-27 (2010) (explaining that the machine-or-
transformation test evidences whether a claimed process preempts an
abstract idea). This sequence of evaluation is further confirmed by a recent
en banc Federal Circuit decision, CLS Bank Intern. v. Alice Corp. Pty. Ltd.,
2011-1301 (Fed. Cir., May 10, 2013), stating:
The first question is whether the claimed invention fits within
one of the four statutory classes set out in § 101. Assuming that
condition is met, the analysis turns to the judicial exceptions to
subject-matter eligibility. A preliminary question in applying
the exceptions to such claims is whether the claim raises § 101
abstractness concerns at all. Does the claim pose any risk of
preempting an abstract idea?
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Id. at 2013 WL 1920941, *9, 106 U.S.P.Q.2d 1696, 1703.
In sum, Appellants have not shown that the claimed correlation rule
builder is restricted to a statutory class of invention. Accordingly, the § 101
rejection of claims 7-14 is sustained.
§ 102 Rejection of Claims 1-3, 6-11, 14-17, and 20
Claims 1-3, 6-11, 14-17, and 20 stand rejected as anticipated by
Smith. Appellants address these claims collectively. App. Br., p. 16. We
select claim 1 as representative. Remaining claims 2, 3, 6-11, 14-17, and 20
accordingly stand or fall with claim 1. See 37 C.F.R. § 41.37(c)(1)(iv).
Claim 1 recites:
1. A method for constructing a correlation rule on a
computer, the method comprising:
viewing a graphical user interface comprising an expression
panel, an object chooser panel, and an expression object menu
bar,
wherein the expression panel comprises an action box and a
correlation box including a left field and an operator icon;
selecting one or more alert events by dragging and dropping the
selected alert event(s) from the object chooser panel to the left
field of the correlation box;
selecting an operator by clicking on the operator icon of the
correlation box;
selecting one or more actions to be performed by the correlation
rule by dragging and dropping the selected action(s) from the
object chooser panel to the action box of the expression panel.
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In short, the method comprises dragging/dropping an alert event and
action from an object chooser panel into an expression panel; and clicking
on an icon to select an operator of the expression panel.
Appellants argue that the rejection is improperly premised upon the
claimed “inclusion of generic GUI behavior without analyzing the overall
functionality realized and claimed in a correlation rule building setting.”
App. Br., p. 16. As a best example, Appellants state:
Smith teaches a GUI based programming tool ... to build
numeric expressions for inclusion in a computer program. In
contrast, the Applicants teach – and claim – a GUI based tool
for building complex computer security correlation rules for use
in computer and network security. Smith does not teach a
“correlation box”, an “action” [to be taken when a rule
violated], or an “alert event” to be monitored as a component of
a possible security breach.
Id. at p. 13. In other words, Appellants contend the rejection fails to account
for what is viewed (a correlation box) and selected (an alert event and
action) via the claimed method’s viewing and selecting steps. Id. at pp. 9-
13.
Appellants’ argument is not persuasive. The recited correlation
(“correlation box”), alert event, and action do not restrict how the claimed
viewing and selecting steps are performed. Rather, the recited correlation,
alert event, and action restrict only the informational content of what is
viewed and selected. Such restrictions of mere informational content are not
entitled to patentable weight under 35 U.S.C. § 102; that is, cannot
patentably distinguish an invention over prior art. See In re Lowry, 32 F.3d
1579, 1583 (Fed. Cir. 1994) (holding that mere informational content of
non-functional descriptive material is not entitled to patentable weight under
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35 U.S.C. §§ 102 and 103); see also Ex parte Mathias, 84 U.S.P.Q.2d 1276,
1279 (BPAI 2005) (informative) (listing “common situations involving
nonfunctional descriptive material” as including “a process that differs from
the prior art only with respect to nonfunctional descriptive material that
cannot alter how the process steps are to be performed[.]”) aff’d 191
Fed.Appx. 959 (Fed. Cir. 2006).
Turning to Smith’s Figure 3B, reproduced below with annotations, a
user of Smith’s cited GUI performs the claimed viewing and selecting steps
to construct a generic command expression. Smith, col. 9, ll. 18-34; title.

The GUI of Smith’s Figure 3B illustrates a cited embodiment of
Smith’s invention.
First, an object category 321 is selected from the “category” panel. Id. at
col. 9, ll. 18-21. Then, an object type 322 of the chosen category is selected
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from the “type” panel. Id. at col. 9, ll. 21-25. Then, an object 323 of the
chosen object type is dragged/dropped from the “paste” panel into a field of
an “expression” panel. Id. at col. 9, ll. 26-33. For example, in the illustrated
GUI, a “greater than” operand is dragged/dropped (see dashed arrow) from
the paste panel into an operand field of the expression panel. Id. at col. 9, ll.
33-34.
Given that the mere informational content of Appellants’ claim steps
is not entitled to patentable weight, the Examiner reasonably read claim 1 on
Smith’s teachings as follows.
 The claimed expression panel, object chooser panel, and
expression object menu bar are read respectively on Smith’s
expression panel, paste panel, and category panel.
 The left field, operator icon, and action box of the claimed
expression panel are read respectively on the left field, operator,
and right field of Smith’s expression panel.
 The claimed dragging/dropping of an alert event from the
object chooser panel to the expression panel’s left field is read
on Smith’s implicit dragging/dropping of the “COMPANY 
ZIP” object from Smith’s paste panel to the expression panel’s
left field.
 The claimed clicking on an icon to select an operator of the
expression panel is read on Smith’s dragging/dropping of the
“greater than” operator onto the expression panel’s operand
field (i.e., the implicit clicking on the operand field to therein
drop the operator).
 The claimed dragging/dropping of an action from the object
chooser panel to the expression panel’s action box is read on
Smith’s implicit dragging/dropping of the “Value” object from
Smith’s paste panel to the expression panel’s right field.
Ans., pp. 4-5.
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In sum, except for differences in the mere informational content of
claimed objects and Smith’s cited objects, Appellants have shown no
differences between the claimed method of constructing a correlation rule
expression and Smith’s method of constructing a command expression. In
turn, Appellants have not shown the Examiner erred in finding the claimed
method fails to patentably distinguish over Smith’s disclosure
Accordingly, the § 102 rejection of claims 1-3, 6-11, 14-17, and 20 is
sustained.
§ 103 Rejection of Claims 4, 5, 12, 18, and 19
Claims 4, 5, 12, 18, and 19 stand rejected as obvious over Smith and
Zink.
Claims 4, 12, and 18 are not addressed by Appellants. App. Br., pp.
17-18. Accordingly, the § 103 rejection of claims 4, 12, and 18 over Smith
and Zink is sustained.
Claims 5 and 19 are collectively addressed by Appellants. Id. at p. 18.
We select claim 5 as representative. Claim 19 stands or falls therewith. See
37 C.F.R. § 41.37(c)(1)(iv).
Claim 5 recites: “The method of claim 1, further comprising requiring
that the alert events occur within a specified time span by interacting with a
correlation time box.” The step of requiring a temporal proximity between
events does not constitute a mere restriction of informational content and,
thus, is entitled to patentable weight.
The Examiner addresses the required time proximity as follows:
[T]ime specific execution of events is taught by Zink
(Component scripts can be executed at design-time, at build
time, or at run-time (or any combination). There are a host of
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other design time “events” which may be used to invoke scripts.
These include a property-change event, a new-wire event, a
new-probe event, and many others) (column 25 lines 8-11). …
Since both Smith and Zink both teach a system and method for
graphical development, it would have been obvious to one of
skilled in the art to modify Smith to include Zink time specific
execution of events to achieve the predictable result of
providing time based correlations in a graphical correlation rule
builder.
Ans., p. 15-16. Addressing this finding, Appellants argue:
For Zink to read on the Applicants’ claims relating to achieving
security by detecting alert events that occur in a specific time
span, Zink would first have to teach something about
processing incoming events from the environment and then
grouping incoming elements based on their time of occurrence.
Instead, Zink teaches that the components of Zink can be run at
design-time, build-time, or run-time. There is no discussion of
time spans, no teaching of processing incoming events, no hint
of doing any kind of correlation based on time of occurrence of
an external event. The only similarity between the teaching of
Zink and the Applicants’ claimed invention is the word “time”,
which is used completely different contexts. Zink’s time is the
time a component is to execute. No time span is taught or
suggested by Zink.
App. Br., p. 17.
We agree with Appellants’ argument insofar that the Examiner does
not articulate a reason for modifying Smith’s teachings in view of Zink. See
Aventis Pharma Deutschland GmbH v. Lupin, Ltd., 499 F.3d 1293, 1300
(Fed. Cir. 2007) (“It remains necessary to show some articulated reasoning
with some rational underpinning to support the legal conclusion of
obviousness, [though] such reasoning need not seek out precise teachings
directed to the specific subject matter of the challenged claim.” (quotation
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marks and citation omitted)). In fact, the Examiner does not even explain
how Zink’s executing of scripts “at design-time, at build time, or at run-
time” and invoking of scripts at a “host of other design time ‘events’”
(supra, pp. 10-11 (Examiner block quote)) suggest a required time proximity
of events, whatsoever, much less suggest using Smith’s GUI to construct an
expression requiring such a time proximity.
Accordingly, given the above lack of articulated reasoning, the § 103
rejection of claims 5 and 19 over Smith and Zink is not sustained.
§ 103 Rejection of Claim 13
Claim 13 stands rejected as obvious over Smith and QtUndoManager.
Claim 13 recites: “The correlation rule builder of claim 7, further
comprising an undo/redo component comprising a store of information, a
store of listeners, a maximum stack size, and a stack pointer.”
Appellants do not present a meaningful argument for claim 13,
asserting without explanation:
The Examiner further relied on QtUndoManager Class
Reference, a reference that addresses undo/redo functionality.
The Applicants concede that undo/redo technology is well
known in the art, but that using undo/redo in the unique manner
as taught by these Applicants in conjunction with correlation
rule building is novel, and the Examiner failed to adequately
explain why one would be motivated to combine with Smith,
and even if one did combine the teachings of QtUndoManager
Class Reference with the reference Smith, you still do not get
the Applicants’ claimed invention.
App. Br., p. 18. The argument merely requests a de novo review of whether
the Examiner’s articulated reason to modify Smith’s teachings, in view of
QtUndoManager, is sufficient and whether the modification yields the
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claimed invention. An appeal “does not, unto itself, entitle an appellant to
de novo review of all aspects of a rejection.” Ex Parte Frye, 94 USPQ2d
1072, 1075 (BPAI 2010) (precedential) (citations omitted). Rather, an
appealed rejection is reviewed for particular errors identified by appellants.
Id. For example:
An appellant may attempt to overcome an examiner’s
obviousness rejection on appeal to the Board by submitting
arguments and/or evidence to show that the examiner made an
error in either (1) an underlying finding of fact upon which the
final conclusion of obviousness was based, or (2) the reasoning
used to reach the legal conclusion of obviousness.
Id. Cursory allegations of patentability are inadequate. Cf., In re Jung, 637
F.3d 1356, 1365 (Fed. Cir. 2011) (affirming because appellant “merely
argued that the claims differed from [the prior art], and chose not to proffer a
serious explanation of this difference.”).
For the foregoing reasons, Appellants have failed to meet their burden
of production. Accordingly, the § 103 rejection of claim 13 over Smith and
QtUndoManager is sustained.
NEW GROUNDS OF REJECTION
Pursuant to our authority under 37 C.F.R. § 41.50(b), we reject claims
5 and 19 under 35 U.S.C. § 103 as obvious over Smith and Appellants’
background art.
As reflected by our analysis with respect to claims 1 and 5, Smith
provides a generic template for Appellants’ claimed invention, but does not
alone suggest claim 5’s step of requiring at least two temporally proximate
events within an expression. However, construction of such an expression
by Smith’s GUI would have been obvious to an ordinarily skilled artisan of
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correlation rule builders, particularly because the need for a simpler means
of constructing and verifying such an expression was known (Spec., ¶¶ 3-5)
and Smith’s GUI provides users a simpler means of constructing and
verifying expressions generally (Smith, col. 3, ll. 1-19). In other words, use
of Smith’s GUI to form an expression requiring time proximate events
would not have been unexpected, but rather encompass the “application of a
known technique [i.e., Smith’s GUI for building generic command
expressions] to a piece of prior art ready for the improvement [i.e., to the
correlation rule expression builders of Appellants’ background art].” KSR
Int’l Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007).
Accordingly, the added subject matter of claims 5 and 19 is prima
facie obvious over Smith and Appellants’ background art.

ORDER
The Examiner’s decision rejecting claims 1-4, 6-18, and 20 is
affirmed.
The Examiner’s decision rejecting claims 5 and 19 is reversed.
Pursuant to our authority under 37 C.F.R. § 41.50(b), we enter new
grounds of rejection under 35 U.S.C. § 103 against claims 5 and 19.
Rule 37 C.F.R. § 41.50(b) states that “[a] new ground of rejection
pursuant to this paragraph shall not be considered final for judicial review.”
Furthermore, 37 C.F.R. § 41.50(b) also provides that Appellants, WITHIN
TWO MONTHS FROM THE DATE OF THE DECISION, must exercise
one of the following two options with respect to the new grounds of
rejection to avoid termination of the appeal as to the rejected claims:

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(1) Reopen prosecution. Submit an appropriate amendment
of the claims so rejected or new evidence relating to the claims
so rejected, or both, and have the matter reconsidered by the
examiner, in which event the proceeding will be remanded to
the examiner. . . .
(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same record. . . .
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED-IN-PART; 37 C.F.R. § 41.50(B)

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