Ex Parte Amorin et al

Board of Patent Appeals and Interferences

Jun 22, 2010

10953728 (B.P.A.I. Jun. 22, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte ANTONIO C. AMORIN and GARY L. FIGGINS
____________

Appeal 2009-006915
Application 10/953,728
Technology Center 2100
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Decided: June 22, 2010
____________

Before JOHN A. JEFFERY, JEAN R. HOMERE, and JAMES R. HUGHES,
Administrative Patent Judges.

JEFFERY, Administrative Patent Judge.

DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 1-17. We have jurisdiction under 35 U.S.C. § 6(b). We
reverse the Examiner’s rejection of independent claim 17, and enter a new
ground of rejection for independent claim 1.

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STATEMENT OF THE CASE
Appellants invented a method for creating a data quality report for a
given set of source data. The source data is profiled, and then analyses are
performed at the relation level, metadata level, and data content level. See
generally Abstract; Spec. 3. Claim 1 is illustrative:
1. A method of analyzing data quality comprising the steps of:
profiling source data;

performing metadata level analysis and creating quality tags to
identify problems with metadata;

performing data content level analysis and creating quality tags to
identify problems with data;

generating at least one report describing at least a portion of the
identified metadata and data problems.

The Examiner relies on the following as evidence of unpatentability:
Informatica Corp., The Real-Time Enterprise: The Case for Building a Real-
Time Analytics Infrastructure, www.informatica.com, 2002 (“RealTime”).

Informatica Corp., Informatica Data Integration Platform,
www.informatica.com, 2003 (“Informatica”).1

Informatica Corp., Trillium Software, www.informatica.com, 2003.
(“Trillium”).2

1 The Examiner’s indication that this document was published in August
2003 (Ans. 2) is undisputed. Accordingly, we presume that this reference
qualifies as prior art.
2 The Examiner’s indication that this document was published in June 2003
(Ans. 3) is undisputed. Accordingly, we presume that this reference
qualifies as prior art.
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THE REJECTIONS
1. The Examiner rejected claims 1-3, 6-12, and 14-17 under 35 U.S.C.
§ 103(a) as unpatentable over Informatica and RealTime. Ans. 4-12.3
2. The Examiner rejected claims 4, 5, and 13 under 35 U.S.C. § 103(a)
as unpatentable over Informatica, RealTime, and Trillium. Ans. 12-
14.

NEW GROUND OF REJECTION UNDER § 101
Under 37 C.F.R. § 41.50(b), we enter the following new ground of
rejection.
Claim 1 is rejected under 35 U.S.C. § 101 as being directed to non-
statutory subject matter.
Under § 101, there are four categories of subject matter that are
eligible for patent protection: (1) processes; (2) machines; (3) manufactures;
and (4) compositions of matter. 35 U.S.C. § 101. While the scope of
patentable subject matter encompassed by § 101 is “extremely broad” and
intended to “‘include anything under the sun that is made by man,’” it is by
no means unlimited. In re Comiskey, 554 F.3d 967, 977 (Fed. Cir. 2009)
(quoting Diamond v. Chakrabarty, 447 U.S. 303, 308 (1980)). For example,
laws of nature, abstract ideas, and natural phenomena are excluded from
patent protection. Diamond v. Diehr, 450 U.S. 175, 188 (1981).

3 Throughout this opinion, we refer to (1) the Appeal Brief filed July 2,
2008; (2) the Examiner’s Answer mailed September 8, 2008; and (3) the
Reply Brief filed November 10, 2008.
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Based on U.S. Supreme Court precedents, Bilski restated the U.S.
Supreme Court’s “definitive test to determine whether a process claim is
tailored narrowly enough to encompass only a particular application of a
fundamental principle rather than to pre-empt the principle itself.” Bilski,
545 F.3d 943, 954 (Fed. Cir. 2008). This restatement, embodied as the
“machine-or-transformation test,” requires that a claimed process either (1)
be tied to a particular machine or apparatus, or (2) transform a particular
article into a different state or thing. Id. This test ensures that the claimed
process does not pre-empt uses of the principle that do not use the specified
machine or apparatus. The test further precludes a claimed process from
pre-empting “the use of the principle to transform any other article, to
transform the same article but in a manner not covered by the claim, or to do
anything other than transform the specified article.” Id.
With these principles in mind, we turn to independent claim 1 which
recites a method for (1) profiling source data; (2) performing “metadata
level” and “data content level” analyses; (3) creating “quality tags” to
identify metadata and data problems, respectively; and (4) generating at least
one report describing at least a portion of the identified metadata and data
problems. Interpreting claim 1 as a whole, we find the recited steps
are not tied to a particular machine or apparatus, nor do they
transform a particular article into a different state or thing. We address each
prong of the machine-or-transformation test in turn.

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Claim 1 Is Not Tied To a Particular Machine or Apparatus

Claim 1 is not tied to a particular machine or apparatus. Notably, the
recited steps of (1) “profiling” source data; (2) performing “metadata level”
and “data content level” analyses; and (3) creating respective “quality tags”
to identify metadata and data problems can be performed entirely mentally,
and do not depend on a machine—let alone a particular machine—to
perform these analytic steps. Moreover, nothing in the claim precludes the
quality tags from simply being mental notes or descriptors that identify
“problems” with the metadata and data associated with the respective
analysis steps—analyses that likewise can be performed entirely mentally.
Such mental processes, however, are not statutory under § 101. See
Comiskey, 554 F.3d at 979 (“[M]ental processes-or processes of human
thinking-standing alone are not patentable even if they have practical
application.”); see also id. at 980 (“[T]he patent statute does not allow
patents on particular systems that depend for their operation on human
intelligence alone, a field of endeavor that both the framers and Congress
intended to be beyond the reach of patentable subject matter.”).
We reach the same conclusion regarding generating a report in the last
step of the claim, for such a “report” merely describes the identified
metadata and data problems—a description that likewise can merely be
performed mentally (or even communicated to another verbally). But even
assuming, without deciding, that such a report requires a tangible medium to
convey this description in a written form, such a report could be generated
entirely by merely transcribing the mental description on a piece of paper or
chalkboard—a manual written communication that not only does not require
a particular machine, but at best, constitutes insignificant extra-solution
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activity. Such a practice hardly passes muster under § 101. See Bilski, 545
F.3d at 962 (“[T]he involvement of the machine or transformation in the
claimed process must not merely be insignificant extra-solution activity.”);
see also id. at 963 (characterizing data gathering steps as insignificant extra-
solution activity); Parker v. Flook, 437 U.S. 584, 588-90 (1978)
(insignificant post-solution activity step found to be insufficient to impart
patentability).
Nevertheless, even assuming, without deciding, that a machine were
required to implement the recited method (which it does not), such a
machine would not be a particular machine as Bilski requires. See Bilski,
545 F.3d at 961-62. At best, such a nominal structural recitation would be
tantamount to a general purpose computer and would not tie the process to a
particular machine or apparatus.4 Indeed, such a nominal recitation of
physical structure tantamount to a general purpose computer is analogous to
the recitation of storing binary coded decimal signals in a shift register that
the U.S. Supreme Court found to be unpatentable in Benson. See Benson,
409 U.S. at 73 (listing claim 8 which calls for, in pertinent part, “storing the
binary coded decimal signals in a reentrant shift register”) (emphasis
added).
For the foregoing reasons, we find that claim 1 is not tied to a specific
machine or apparatus.

4 In Gottschalk v. Benson, 409 U.S. 63 (1972), the Court held that claims
directed to a method for converting binary-coded-decimal (BCD) numerals
into pure binary numerals for use with a general-purpose digital computer
were nonstatutory under § 101.
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Claim 1 Does Not Transform a Particular Article Into a Different State or
Thing

We also find that claim 1 does not transform a particular article into a
different state or thing. While the claim calls for (1) generating “quality
tags” to identify metadata and data problems, and (2) generating a report
describing these problems, this process simply does not transform a
particular article into a different state or thing. At best, these steps amount
to mere manipulations of data—manipulations that can be performed
entirely mentally—that fall short of transforming data sufficient to pass
muster under § 101.
Bilski does, however, recognize that certain types of data can be
transformed to meet the transformation test. For example, the court cites the
X-ray attenuation data in In re Abele, 684 F.2d 902 (CCPA 1982) which not
only represented physical and tangible objects, but was also transformed into
a particular visual depiction of a physical object on a display. Bilski, 545
F.3d at 962-63.
But the data manipulations in claim 1—manipulations that can be
performed entirely mentally as noted above—fall well short of the requisite
data transformation that is sufficient to meet the transformation test.
Therefore, the process of claim 1 does not transform a particular article into
a different state or thing.
For the foregoing reasons, independent claim 1 fails to recite statutory
subject matter under § 101. Although we decline to reject every claim under
our discretionary authority under 37 C.F.R. § 41.50(b), we emphasize that
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our decision does not mean the dependent claims are patentable. Rather, we
merely leave the patentability determination of these claims to the Examiner.
See MPEP § 1213.02.

THE OBVIOUSNESS REJECTION OF CLAIM 17
We now address the Examiner’s obviousness rejection of independent
claim 17 which calls for, among other things, (1) creating a catalog; (2)
importing metadata into the catalog from a file characterized by a file
structure and encoding; (3) opening an attribute list and comparing this list
to the metadata; (4) exporting the catalog to a repository; and (5) executing
report generation commands. When interpreting this claim as a whole and
considering these steps collectively and their relationships to each other and
the other recited limitations, we find that the claim is sufficiently tied to a
particular machine or transforms an article to a different state or thing so as
to pass Bilski’s machine or transformation test. Accordingly, since claim 17
recites statutory subject matter under § 101, we therefore review the
Examiner’s obviousness rejection of this claim.
The Examiner contends, among other things, that Informatica’s
metadata repository is also a “catalog” of metadata. Ans. 22. As such, the
Examiner reasons, since the catalog is already exported to a repository, it
therefore not only meets the catalog creation step associated with the recited
relation analysis, but also exporting the catalog to a repository recited in
connection with the report generation step of claim 17. Ans. 26.
Appellants challenge this assertion, and argue that even if a catalog
could be considered a repository (which Appellants maintain it cannot), a
repository cannot export something to itself. App. Br. 27. Appellants
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emphasize that the recited (1) catalog created in performing relation
analysis, and (2) repository that receives the exported catalog are discrete
components in claim 17. Id. According to Appellants, the cited references
fail to disclose both of these components, but rather disclose only a
repository. Id.
The issue before us, then, is as follows:

ISSUE
Under § 103, has the Examiner erred in rejecting claim 17 by finding
that Informatica and RealTime collectively would have taught or suggested
(1) a catalog created in performing relation analysis, and (2) a repository that
receives the exported catalog?
This issue turns on whether the Examiner erred by finding that
Informatica’s metadata repository can function as both the recited catalog
and repository.

FINDINGS OF FACT (FF)
1. Informatica’s “Active Metadata” feature “captures all technical,
operational, and business metadata—in real time—in a single open
repository. This repository ensures that metadata is always up to date,
accurate, complete, and available.” Informatica, at 3 (“Active Metadata”
section).

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ANALYSIS
We will reverse the Examiner’s rejection of independent claim 17
essentially for the reasons indicated by Appellants. App. Br. 27. We first
note that claim 17 calls for two separate and distinct elements: (1) a catalog
created in performing relation analysis, and (2) a repository that receives the
exported catalog. For this reason alone, the Examiner’s rejection is
problematic, for the Examiner equates both of these limitations to the same
element, namely Informatica’s repository. Ans. 22, 26.
Even if we assume, without deciding, that a catalog can be considered
a repository as the Examiner asserts (id.) (or vice-versa), a repository cannot
export something to itself—whether it corresponds to Informatica’s
metadata repository (FF 1) or otherwise. The Examiner’s position in this
regard is simply untenable. Nor has the Examiner shown that RealTime
cures this deficiency.
We are therefore persuaded that the Examiner erred in rejecting
independent claim 17. Since this issue is dispositive regarding our reversal
of the rejection of this claim, we need not address Appellants’ other
arguments pertaining to claim 17 (App. Br. 25-26, 28-33).

CONCLUSION
The Examiner erred in rejecting claim 17 under § 103, and claim 1
does not recite statutory subject matter under § 101.
Since our decision that independent claim 1 fails to recite statutory
subject matter under § 101 is dispositive regarding patentability of that
claim, we need not reach the question of whether claims 1-16 would have
been obvious over the cited references. See Diehr, 450 U.S. at 188;
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Comiskey, 554 F.3d at 973 (declining to reach obviousness rejection on
appeal after concluding may claims were nonstatutory under § 101); Bilski,
545 F.3d at 951 n.1 (noting that § 101 is a threshold requirement and that
Examiners may reject claims solely on that basis); In re Rice, 132 F.2d 140,
141 (CCPA 1942) (finding it unnecessary to reach prior art rejection after
concluding claims were directed to nonstatutory subject matter). Accord Ex
parte Gutta, 93 USPQ2d 1025, 1036 (BPAI 2009) (precedential).

ORDER
We reverse the Examiner’s decision rejecting claim 17. We newly
reject claim 1 under § 101.
This decision contains a new ground of rejection pursuant to 37
C.F.R. § 41.50(b) that provides that “[a] new ground of rejection . . . shall
not be considered final for judicial review.”
Section 41.50(b) also provides that the Appellants, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new ground of rejection to
avoid termination of the appeal as to the rejected claims:
(1) 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 that the proceeding be reheard under § 41.52 by the
Board upon the same record. . . .

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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)(iv).

REVERSED
37 C.F.R. § 41.50(b)

pgc

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