Ex Parte Arning et al

Board of Patent Appeals and Interferences

Sep 27, 2010

10401639 (B.P.A.I. Sep. 27, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte ANDREAS ARNING, FRANK LEYMANN, DIETER ROLLER,
and ROLAND SEIFFERT
____________

Appeal 2009-013969
Application 10/401,639
Technology Center 3600
____________

Before MURRIEL E. CRAWFORD, ANTON W. FETTING, and BIBHU R.
MOHANTY, Administrative Patent Judges.

CRAWFORD, 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”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.

Appeal 2009-013969
Application 10/401,639

2
STATEMENT OF THE CASE
Appellants seek our review under 35 U.S.C. § 134 (2002) of the
Examiner’s final decision rejecting claims 1 to 6 and 10 to 21. We have
jurisdiction over the appeal under 35 U.S.C. § 6(b) (2002).

BACKGROUND
Appellants’ invention is directed to a method for improving service
broker quality service (Spec. 1).
Claim 1 is illustrative:
1. A computerized method for ranking service
offerings in a service-oriented architecture, in
which said service offerings are offered by a
Service Broker to a Service Requestor comprising:
querying, by the Service Requestor, the
Service Broker for a list of qualifying services;
generating, by the Service Broker, a result
list of qualifying services;
submitting the result list to a trained data-
mining model; and
in response to said submitting, generating a
newly ranked, improved result list.

Appellants appeal the following rejections:
Claims 10 to 15 under 35 U.S.C. § 101 because the claims recite
various components of a computer software program.
Claims 1 to 6, 10 to 15 and 16 to 21 under 35 U.S.C. § 112, first
paragraph, as failing to comply with the enablement requirement.
Claims 2, 4 and 10 to 21 under 35 U.S.C. § 112, second paragraph, as
being indefinite for failing to particularly point out and distinctly claim the
subject matter which the applicant regards as the invention.
Appeal 2009-013969
Application 10/401,639

3
Claims 1 to 6 and 10 to 21 under 35 U.S.C. § 102(b) as anticipated by
Herz (US 6,029,195, iss. Feb. 22, 2000).

ISSUES
Did the Examiner err in the § 101 rejection because a computer
system is a real world machine that falls within one of the enumerated
statutory classes for patent eligible subject matter?
Did the Examiner err in the enablement rejection because any person
can make and use the invention from the description in the Specification?
Did the Examiner err in the rejection under the second paragraph of
section 112, because (1) there is no rule or law that limits dependent claims
to limitations that occur after the limitations of the parent claim, (2) there is
nothing inherently ambiguous about negative limitations and because the
structure of the limitations in claims 10 to 21 is provided in the
Specification?
Did the Examiner err in the anticipation rejection because Herz does
not disclose a Service Requestor querying a Service Broker or a trained data
mining model?
FACTUAL FINDINGS
We adopt the Examiner’s findings as our own. (Ans. 7 to 8).

ANALYSIS
Patentable subject matter
The Examiner has based this rejection on the holding that claim 10
recites software per se. The Appellants argue that the recitation in claim 10
of “[a] computer system,” is indicative of a real world machine that falls
Appeal 2009-013969
Application 10/401,639

4
within the enumerated statutory classes. We initially note that software that
is claimed as mere functions is not within the statutory categories and is not
patent eligible subject matter. See In re Chatfield, 545 F.2d 152, 159 (CCPA
1976) (Rich, J., dissenting) (“It has never been otherwise than perfectly clear
to those desiring patent protection on inventions which are new and useful
programs for general purpose computers (software) that the only way it
could be obtained would be to describe and claim (35 U.S.C. [§] 112) the
invention as a ‘process’ or a ‘machine.’”) The body of claim 10 recites
various means along with the functions which can be referring to software
alone. While a system is normally considered an apparatus, in the present
case this interpretation is not in keeping with the body of claim 10 which
merely recites functions that can be implemented by software alone. The
Appellants disclose that the invention can be realized with just software
(Spec. 13). In addition, we agree with the Examiner that phrase “computer
system” is broad enough to include software only because Appellants
disclose that the invention can be implemented by software alone.
In view of the foregoing, we will sustain this rejection as it is directed
to claim 10. We will also sustain the rejection as it is directed to claims 11
to 15 because the Appellants have not argued the separate patentability of
these claims.

Enablement
The Examiner is of the opinion that the Appellants have not disclosed
what the data mining model is and how it actually works and as such does
not give sufficient guidance that would enable one skilled in the art to
practice the claimed invention without undue experimentation. We are not
Appeal 2009-013969
Application 10/401,639

5
persuaded of error by the Examiner by Appellants’ argument that the
existing know-how of data mining technology can be applied to the ranking
services.
We agree with the Examiner’s reasoning on page 5 of the Answer. In
particular we agree that in light of the scarcity of information in the
Specification and the figures related to what the data mining model actually
is, it would be left up to one skilled in the art to guess and try to figure out
exactly how to go about and construct the data mining model and such
would amount to undue experimentation. In our view, the Examiner has
established a reasonable basis to question the enablement of claims 1 to 6,
10 to 15, and 16 to 21. Once the examiner has established a reasonable basis
to question the enablement provided for the claimed invention, the burden
falls on the appellant to present persuasive arguments, supported by suitable
proofs where necessary, that one skilled in the art would be able to make and
use the claimed invention using the disclosure as a guide. See In re
Brandstadter, 484 F.2d 1395, 1406 (CCPA 1973). The Appellants’
conclusory statement that the Specification and figures would enable a
person of ordinary skill in the art to make and use the invention without
experimentation is not sufficient to meet the burden of establishing
that the claims rejected are in fact enabled. The Appellants have not filed
any evidence to support the conclusory statements. Therefore, we will
sustain this rejection.

Indefiniteness
We agree with the Appellants that the recitation in claim 2 that the
step of training an untrained data mining model to produce the trained data-
Appeal 2009-013969
Application 10/401,639

6
mining model recited in claim 1 satisfies the requirements of 35 U.S.C. §
112, second paragraph. The second paragraph of 35 U.S.C. § 112 requires
claims to set out and circumscribe a particular area with a reasonable degree
of precision and particularity. In re Johnson, 558 F.2d 1008, 1015 (CCPA
1977). In making this determination, the definiteness of the language
employed in the claims must be analyzed, not in a vacuum, but always in
light of the teachings of the prior art and of the particular application
disclosure as it would be interpreted by one possessing the ordinary level of
skill in the pertinent art. Id. In the instant case it is clear from a reading of
the Specification and claims 1 and 2 that claim 2 adds the additional step of
training an untrained data mining model. There is no requirement that the
steps recited in dependent claim 2 occur after the steps in claim 1. As such,
we will not sustain this rejection as to claim 2.
We agree with the Appellants that the recitation in claim 4 that the
feedback information is collected without requesting assistance from the
Service Requestor is clear when read in light of the Appellants’
Specification. Indeed, on page 12, Appellants disclose that it is the Service
Broker that collects the feedback information. In view of the disclosure,
claim 4 clearly recites that this information is collected without the
assistance of the Service Requestor. As such, we will not sustain this
rejection as to claim 4.
Claims 10 to 21 are set out in means plus function format. When a
claim uses the term “means” to describe a limitation, a presumption inheres
that the inventor used the term to invoke 35 U.S.C. § 112, paragraph 6.
Altiris, Inc. v. Symantec Corp., 318 F.3d 1363, 1375 (Fed. Cir. 2003). “This
presumption can be rebutted where the claim, in addition to the functional
Appeal 2009-013969
Application 10/401,639

7
language, recites structure sufficient to perform the claimed function in its
entirety.” Id. Once a court concludes that a claim limitation is a means-
plus-function limitation, two steps of claim construction remain: 1) the court
must first identify the function of the limitation; and 2) the court must then
look to the specification and identify the corresponding structure for that
function. Med. Instr. and Diagnostics Corp. v. Elekta AB, 344 F.3d 1205,
1210 (Fed. Cir. 2003).
“If there is no structure in the specification corresponding to the
means-plus-function limitation in the claims, the claim will be found invalid
as indefinite.” Biomedino, LLC v. Waters Techs, Corp., 490 F.3d 946, 950
(Fed. Cir. 2007); see also In re Donaldson Co., 16 F.3d 1189, 1195 (Fed.
Cir. 1994) (en banc).
In Aristocrat Techs. Austl. Pty Ltd. v. Int’l Game Tech., 521 F.3d 1328,
1333 (Fed. Cir. 2008), the court set forth that for a claim to a programmed
computer, a particular algorithm may be the corresponding structure under
§ 112, sixth paragraph:
For a patentee to claim a means for performing a
particular function and then to disclose only a
general purpose computer as the structure designed
to perform that function amounts to pure
functional claiming. Because general purpose
computers can be programmed to perform very
different tasks in very different ways, simply
disclosing a computer as the structure designated
to perform a particular function does not limit the
scope of the claim to “the corresponding structure,
material, or acts” that perform the function, as
required by section 112 paragraph 6.
Appeal 2009-013969
Application 10/401,639

8
In two other recent cases, the Federal Circuit followed Aristocrat in
holding means-plus-function claims invalid for indefiniteness for lack of
sufficient description of algorithms to transform a general purpose computer
to a special purpose of computer under 35 U.S.C. § 112, sixth paragraph.
See Finisar Corp. v. DirecTV Group, Inc., 523 F.3d 1323, 1340-41 (Fed.
Cir. 2008) and Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1367
(Fed. Cir. 2008).
The Appellants argue that the flow chart in Figure 3 is the algorithm
to accomplish the function in the claim. Thus the issue is whether the flow
chart in Figure 3 describes an algorithmic structure for performing the
recited functions. We find Figure 3 does not. Figure 3 is simply a series of
boxes connected serially each box containing the name of a function. For
example, the means for querying the Service Broker for a list of qualifying
services is block 310. This box does not disclose structure for performing
this function. Similarly the means for generating a result list is block 320
with no structure as to how the result list is generated. There are similar
blocks regarding the other means-plus-function recitations in claim 10
without disclosing structure as to how the functions are performed. Thus,
we find that there is no description of structure disclosed that corresponds to
the means for the functions recited in claim 10. Therefore, we will sustain
the rejection as it is directed to claims 10 and claims 11 to 15 dependent
thereon. We will also sustain this rejection as it is directed to claim 16 and
claims 17 to 21 dependent thereon because claim 16 also recites the same
means-plus-function limitations as claim 10.
Appeal 2009-013969
Application 10/401,639

9
Anticipation
We are not persuaded of error by the Examiner by Appellants’
argument that Herz does not disclose a Service Broker generating a result
list of qualifying services but rather the Service Broker therein disclosed
generates a list of ordered news articles. We agree with the Examiner that as
Herz discloses generating a list, the actual data in the list is not
determinative of patentability because the data in the list is non-functional
descriptive material. Non-functional descriptive material cannot render
nonobvious an invention that otherwise would have been obvious. In re
Ngai, 367 F.3d 1336, 1339 (Fed. Cir. 2004); cf. In re Gulack, 703 F.2d 1381,
1385 (Fed. Cir. 1983) (when descriptive material is not functionally related
to the substrate, the descriptive material will not distinguish the invention
from the prior art in terms of patentability). The type of data contained in
the list in the present invention is not functionally related to how the method
of claim 1 is performed.
We also agree with the Examiner that as Herz discloses that data is
analyzed and a ranked list of results is generated using interest feedback
from the user that is continually updated to reflect the users changing
interests, Herz discloses a trained data mining model as broadly claimed.
In view of the foregoing, we will sustain this rejection as it is directed
to claim 1. We will also sustain this rejection as it is directed to claims 2 to
6 because the Appellants have not argued the separate patentability of these
claims.
In regard to this rejection as it is directed to claims 10 to 21 as we
stated above in discussing the rejection of these claims under 35 U.S.C. §
112, second paragraph, no reasonably definite meaning can be ascribed to
Appeal 2009-013969
Application 10/401,639

10
certain language appearing in the claims. As the court in In re Wilson, 424
F.2d 1382, 1385 (CCPA 1970) stated: “[a]ll words in a claim must be
considered in judging the patentability of that claim against the prior art. If
no reasonably definite meaning can be ascribed to certain terms in the claim,
the subject matter does not become obvious- the claim becomes indefinite.”
In comparing the claimed subject matter with the applied prior art, it
is apparent to us that considerable speculations and assumptions are
necessary in order to determine what in fact is being claimed. Since a
rejection based on prior art cannot be based on speculations and
assumptions, see In re Steele, 305 F.2d 859, 862 (CCPA 1962), we are
constrained to reverse, pro forma, this rejection as it is directed to claims 10
to 21 under 35 U.S.C. § 102(b). We hasten to add that this is a procedural
reversal rather than one based upon the merits of the § 102(b) rejection.

DECISION
We AFFIRM the Examiner’s rejection of:
Claims 10 to 15 under 35 U.S.C. § 101.
Claims 1 to 6, 10 to 15, and 16 to 21 under 35 U.S.C. § 112, first
paragraph.
Claims 10 to 21 under 35 U.S.C. § 112, second paragraph, as being
indefinite for failing to particularly point out and distinctly claim the subject
matter which the applicant regards as the invention.
Claims 1 to 6 under 35 U.S.C. § 102(b) as anticipated by Herz.
We REVERSE the Examiner’s rejection of:
Claims 2 and 4 under 35 U.S.C. § 112, second paragraph.
Claims 10 to 21 under 35 U.S.C. § 102(b) as anticipated by Herz.
Appeal 2009-013969
Application 10/401,639

11

TIME PERIOD
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1) (2007).

AFFIRMED

hh

IBM AUSTIN IPLAW (DG)
C/O DELIZIO GILLIAM, PLLC
15201 MASON ROAD, SUITE 1000-312
CYPRESS, TX 77433