Ex Parte Backman

Board of Patent Appeals and Interferences

Jan 26, 2011

10667449 (B.P.A.I. Jan. 26, 2011)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
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Alexandria, Virginia 22313- 1450
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APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO. I
101667,449 09/23/2003 Lina Strand Backman 1018798-000162 9444
21 839 7590 01/28/2011
BUCHANAN, INGERSOLL & ROONEY PC
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ALEXANDRIA. VA 223 13- 1404
EXAMINER
DANNEMAN, PAUL
r ARTUNIT 1 PAPERNUMBER 1
Please find below andlor attached an Office communication concerning this application or proceeding.
NOTIFICATION DATE
The time period for reply, if any, is set in the attached communication.
DELIVERY MODE
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
0112812011 ELECTRONIC
ADIPFDD @bipc.com
offserv@ bipc.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
Ex parte LINA STRAND BACKMAN
Appeal 2010-00061 0
Application 101667,449
Technology Center 3600
Before MURRIEL E. CRAWFORD, HUBERT C. LORIN, and
JOSEPH A. FISCHETTI, Administrative Patent Judges.
LORIN, Administrative Patent Judge.
1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. 5 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. 5 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 2010-00061 0
Application 101667,449
STATEMENT OF THE CASE
Lina Strand Backman (Appellant) seeks our review under 35 U.S.C.
# 134 (2002) of the final rejection of claims 1-20. We have jurisdiction
under 35 U.S.C. # 6(b) (2002).
SUMMARY OF DECISION
We REVERSE and enter NEW GROUND OF REJECTION, pursuant
to our authority under 37 C.F.R # 41.50(b). '
THE INVENTION
This invention is a method of informing a potential customer of the
merits of a new product by morphing a visual presenting of a known product
into the new product. Specification 2:24-3:9.
Claims 1 and 17, reproduced below, are illustrative of the subject
matter on appeal.
1. A process of informing potential consumers of a
new product, including in no particular order:
presenting to a potential consumer a visual
presentation of a first, known product having at
least one function and at least one characteristic
capable of visualization; presenting to said
potential consumer visual presentation of a second,
known product having at least one known function
similar to said at least one function of said first
known product and at least one characteristic
capable of visualization; and presenting to said
2 Our decision will make reference to the Appellant's Appeal Brief ("App.
Br.," filed Feb. 24, 2009) and Reply Brief ("Reply Br.," filed Jul. 13, 2009),
and the Examiner's Answer ("Answer," mailed May 13, 2009).
Appeal 2010-00061 0
Application 101667,449
potential consumer one or more intermediate
visual presentations of at least one of the first and
second products by changing the appearance of
said at least one characteristic of said first product
to more closely resemble said at least one
characteristic of said second product, one of said
intermediate visual presentations being an visual
presentation of said new product.
17. An advertisement for a new product,
comprising: a visual presentation of a first, known
product having at least one function and at least
one characteristic capable of visualization; a visual
presentation of a second, known product having at
least one known function substantially similar to
said at least one function of said first known
product and at least one characteristic capable of
visualization; a plurality of intermediate visual
presentations of products changing the appearance
of said at least one characteristic of said first
product to more closely resemble said at least one
characteristic of said second product, one of said
intermediate visual presentations being an visual
presentation of said new product; and
identification of a source of said new product.
THE REJECTIONS
The Examiner relies upon the following as evidence of
unpatentability :
Zawilinski US 5,676,138 Oct. 14, 1997
Jain US 200310195793 A1 Oct. 16, 2003
The following rejections are before us for review:
Appeal 2010-00061 0
Application 101667,449
1. Claim 1-13 and 17-20 are rejected under 35 U.S.C. 5 101 as
being directed to non-statutory subject matter.
2. Claims 1-2, 5-7, 10-1 1, and 14-18 are rejected under 35 U.S.C.
5 103 (a) as being unpatentable over Jain.
3. Claims 3-4, 8-9, 12-13, and 19-20 are rejected under 35 U.S.C.
§103(a) as being unpatentable over Jain and Zawilinski.
ISSUES
The first issue is whether claims 1-13 and 17-20 are directed to non-
statutory subject matter under 35 U.S.C. 5 101.
The second issue is whether claims 1-2, 5-7, 10-1 1, and 14-18 are
unpatentable under 35 U.S.C. §103(a) over Jain. Specifically, the issue is
whether the Examiner has established a prima facie showing that one of
ordinary skill in the art would have been led by Jain to the steps of
presenting a plurality of visual presentations of a first known product, a
second known product, and at least one intermediate visual presentation.
The rejection of claims 3-4, 8-9, 12-13, and 19-20 under 35 U.S.C. §103(a)
as being unpatentable over Jain and Zawilinski also turns on this issue.
FINDINGS OF FACT
We find that the following enumerated findings of fact (FF) are
supported by at least a preponderance of the evidence. Ethicon, Znc. v.
Quigg, 849 F.2d 1422, 1427 (Fed. Cir. 1988) (explaining the general
evidentiary standard for proceedings before the Office).
1. The Specification states: "Further, [']visual presentations ['I should
be given a broad definition to include still images, moving images
Appeal 2010-00061 0
Application 101667,449
and animations, models or prototypes or any other means to
visually present characteristics or functions of a product."
Specification 5 :5-8. See also Specification 10: 15- 17.
2. The Specification states: "As explained elsewhere herein, the
mechanism for presentation can be using images or prototypes or
models, in person or remotely over a network or broadcast
system." Specification 5: 17- 19. See also Specification 10:25-28.
3. The Specification states: "The methods of the present invention
may be embodied in a code, which can be read by a computer, on a
computer readable recording medium. The computer readable
recording medium includes all kinds of recording apparatuses 30
on which computer readable data are stored." Specification 11:27-
4. Jain's paragraphs [0173] and [0174] state:
The approach is personalized (3.5) for the selected
set of target customers. Personalization of research
approach refers to the modification of the research
design, i.e., the experiment, the survey
questionnaire or campaign parameters to suit an
individual customer, such that maximum
information value with minimal inputs is obtained
from the customer. It uses customer's previous
purchase history, previous responses to research
designs, click-stream information and any other
available data for the purpose. For example, if the
customer has already purchased the product, the
research approach would remove the question
about whether helshe has made a purchase or not.
Instead the research design might focus on
feedback, comparison with other products etc.,
depending on the merchant's objective.
Appeal 2010-00061 0
Application 101667,449
For example, Table 2 represents a scenario of
missing information and the potential research
approach. Missing information from Joe, Jane and
George can be collected either from responses to
advertisement(s) or by specifically asking a survey
question. Since surveys can handle larger number
of attributes with relative ease, a survey might be
the preferred research approach for Jane, and
advertisements may be preferred for Joe and
George. Also, advertisements shown to Maria may
have different values of the attribute of the product
but excluding the attribute value for which her
preference is known.
ANALYSIS
The rejection of claims 1-13 and 17-20 under 35 U.S. C. § 101 as being
directed to non-statutory subject matter.
The Appellant and the Examiner dispute whether claims 1-13 and 17-
20 are drawn to non-statutory subject matter under 35 U.S.C. 5 101. Answer
4-6 and Reply Br. 1-5. While we agree with the Examiner's conclusion that
claims 1-13 and 17-20 are drawn to non-statutory subject matter, we
disagree with the Examiner's rationale in reaching that conclusion and find
that the Examiner has failed to establish a prima facie showing. Since our
reasoning differs from that of the Examiner, we shall reverse the Examiner's
rejection and enter a new ground of rejection, as detailed below.
The rejection of claims 1-2, 5- 7, 10-1 1, and 14-1 8 under 35 U.S. C. $1 03(a)
as being unpatentable over Jain.
The Appellant argues that Jain does not teach the steps recited in
independent claims 1, 5, and 10 that require presenting a plurality of visual
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Application 101667,449
presentations of a first known product, a second known product, and at least
one intermediate visual presentation. App. Br. 8-1 1. The Examiner cites
paragraphs [0173] and [0174] of Jain (Answer 6-7 and 12-13), which
describe personalizing an advertisement and a survey to each selected
particular customer (see FF 4). The Examiner then concludes it would have
been obvious "to determine that the presentation of an advertisement of the
similar product or the new product is equivalent to Applicant's presentation
of a visual." Answer 6-7. However, the Examiner's rejection does not
specifically address the steps at issue, which require that at least three of the
recited visual presentations are presented to the recited potential customer.
"[R]ejections on obviousness grounds cannot be sustained by mere
conclusory statements; instead, there must be some articulated reasoning
with some rational underpinning to support the legal conclusion of
obviousness." KSR Znt'l Co. v. Telejlex, 550 U.S. 398,418 (2007) (quoting
In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006).
The Examiner has not provided some articulated reasoning with some
rational underpinning to support a conclusion that the steps at issue as
recited in the claims would be obvious, and has failed to establish a prima
facie showing of obviousness. Accordingly, we find that the Appellant has
overcome the rejection of claims 1, 5, and 10, and claims 2, 6,7, 11, and 14-
18, dependent thereon, under 35 U.S.C. 5 103(a) as being unpatentable over
Jain, and we reverse this rejection.
Appeal 2010-00061 0
Application 101667,449
The rejection of claims 3-4, 8-9, 12-13, and 19-20 under 35 U.S.C. §103(a)
as being unpatentable over Jain and Zawilinski.
This rejection is directed to claims dependent on claims 1, 7, 11, and
17, whose rejection under 35 U.S.C. 5 103(a) we have reversed above. For
the same reasons, we will not sustain the rejections of claims 3-4, 8-9, 12-13,
and 19-20 over the cited prior art. Cf. In re Fritch, 972 F.2d 1260, 1266
(Fed. Cir. 1992) ("[Dlependent claims are nonobvious if the independent
claims from which they depend are nonobvious."). We note that the
Examiner did not apply Zawilinski to cure the deficiencies of Jain discussed
above. Answer 8-9.
NEW GROUND OF REJECTION
Pursuant to C.F.R. 41.37(b), we enter a new ground of rejection on
claim 1-20 under 35 U.S.C. 5 101. We reject claims 1-20 as being drawn to
non-statutory subject matter.
Method Claims 1-13
We find that claims 1-13 are drawn to non-statutory subject matter as
they encompass an abstract idea. The law in the area of patent-eligible
subject matter for process claims has recently been clarified by the Supreme
Court in Bilski v. Kappos, 130 S. Ct. 3218, No. 08-964, 2010 WL 2555192
(U.S. June 28, 2010). The Court held that the term "process" as used in 35
U.S.C. 5 101, does not categorically exclude business methods. Bilski, 130
S. Ct. at 3228-3229.
The Court is unaware of any argument that the
6 6 ordinary, contemporary, common meaning,"
Diehr, supra, at 182, 101 S.Ct. 1048, of "method"
excludes business methods. Nor is it clear what a
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Application 101667,449
business method exception would sweep in and
whether it would exclude technologies for
conducting a business more efficiently.
Bilski, 130 S. Ct. at 3222.
"At the same time, some business method patents raise special
problems in terms of vagueness and suspect validity." Bilski, 130 S. Ct. at
3229. (citing eBay Znc. v. MercExchange, L.L.C., 547 U.S. 388, 397
(2006))(Kennedy, J., concurring).
In searching for a limiting principle, this Court's
precedents on the unpatentability of abstract ideas
provide useful tools. See infra, at 12- 15. Indeed, if
the Court of Appeals were to succeed in defining a
narrower category or class of patent applications
that claim to instruct how business should be
conducted, and then rule that the category is
unpatentable because, for instance, it represents an
attempt to patent abstract ideas, this conclusion
might well be in accord with controlling precedent.
Bilski, 130 S. Ct. at 3229 (2010).
Claims 1-13 are drawn to business methods. Taking claim 1 as
representative, the broadest reasonable construction of the claimed process
in light of the Specification as it would be interpreted by one of ordinary
skill in the art is that it provides a series of instructions that do no more than
introduce a product by presenting visual presentations (i.e., information3) to
3 The "type" of information (e.g. "a first known product having at least one
function and at least one characteristic capable of visualization" (Claim 1))
the claimed process uses limit the claimed subject matter only in terms of the
content of the information. They are properly characterized as nonfunctional
descriptive material. In the context of prior art rejections, a distinction over
the prior art based on nonfunctional descriptive material is patentably
inconsequential. See in re Ngai, 367 F.3d 1336, 1339 (Fed. Cir. 2004)
Appeal 2010-00061 0
Application 101667,449
a customer at least three times to a potential consumer. The claim
encompasses any use of the concept of introducing a product by presenting
information to a customer at least three times.
We now turn to the question of whether the claimed process subject
matter is patent-eligible under 35 U.S.C. 5 101. Various factors must be
considered and weighed when analyzing claims as a whole before reaching a
conclusion on patent subject matter eligibility.
The factors relevant in this case are the lack of an express or implied
recitation in the claims to a particular machine or transformation and that the
claims are a mere statement of a general concept. There are no express or
implied requirements that the claims are tied to a particular machine and
there are no express or implied transformations in claim 1.
As we have reasonably broadly construed it, the subject matter of
claim 1 is a series of instructions for introducing a product by presenting at
least three visual presentations. The vague instructions listed in the claim do
no more than instruct how business should be conducted; that is to introduce
where, in the context of a prior art rejection, the court held that attaching
instructions to an otherwise known product did not render the product
patentable over the prior art. See also In re Gulack, 703 F.2d 138 1, 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) and Ex parte Mathias, 84 USPQ2d 1276
(BPAI 2005) (non-precedential)(Federal Circuit Appeal NO. 2006- 1 103;
WL 2433879, affirmed without written opinion Aug. 19, 2006)(patentable
weight need not be given to descriptive material absent a new and unobvious
functional relationship between the descriptive material and the substrate).
We see no reason why recitations of nonfunctional descriptive material
should not be similarly treated as inconsequential in the process of
determining whether claimed subject matter is statutory under 35 U.S.C.
g 101.
Appeal 2010-00061 0
Application 101667,449
a product by presenting at least three visual presentations. The claim covers
any use of the concept of introducing a product by presenting at least three
visual presentations. In the words of Gottschalk v. Benson, 409 U.S. 63,72
(1972), the claimed process "would wholly pre-empt the [introduction of a
product by presenting information to a customer at least three times] and in
practical effect would be a patent on the [concept] itself."
For the foregoing reasons, based upon consideration of all the relevant
factors with respect to claims 1- 13 as a whole, claims 1- 13 are held to claim
an abstract idea and are therefore rejected as ineligible subject matter under
35 U.S. C 5 101. As discussed above, since our rationale differs from that
of the Examiner, we designate our decision that claims 1-13 are drawn to
non-statutory subject matter as a new ground of rejection under 35 U.S.C.
g 101.
Article Claims 14-1 6
We find that claims 14-16 are drawn to non-statutory subject matter as
they: 1) encompass a signal and 2) recite an abstract idea.
First, we reject claims 14-16 claims 14-16 are rejected under 35
U.S.C. 5 101 as being directed to non-statutory subject matter for
encompassing a signal. Article claims 14-16 are drawn to a "computer
readable medium having embodied thereon a computer program." Giving
these claims the broadest reasonable construction in light of the
Specification, we find that these claims encompass forms of a computer
program being disposed on transitory propagating signals per ~ e . ~ We note
4 See Subject Matter Eligibility of Computer Readable Media, 135 1 Off.
11
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Application 101667,449
that, while the Specification does discuss a computer readable recording
medium (FF 3), the claim is not so limited. A signal does not fit within at
least one of the four statutory subject matter categories under 35 U.S.C.
5 101. In re Nuijten, 500 F.3d 1346, 1357 (Fed. Cir. 2007). Accordingly,
claims 14-16 are rejected under 35 U.S.C. 5 101 as being directed to non-
statutory subject matter for encompassing a signal.
Second, it should be noted that, in challenging the rejection of the
claims over the cited prior art under 35 U.S.C. 5 103(a), the Appellant's
brief does not separately address the article claims 14-16. See App. Br. 12-
13. Given this, we presume that the Appellant takes the view that these
claims should be treated the same as method claims 1-13. This would be a
fair view because claim 14, for instance, includes the method claim 1; the
only difference being that claim 14 is drawn to "[a] computer readable
medium" having embodied thereon a computer program for carrying out the
method of claim 1. The claim limitation to a computer readable medium
having embodied thereon a computer program is nominal as imposes no
meaningful limits on the scope of the claim apart from describing a field
(i.e., computer field) in which to conduct the process. The limitation is
indicative of the field of use within which to manifest the abstract idea of
introducing a product by presenting at least three visual presentations.
"Flook stands for the proposition that the prohibition against patenting
abstract ideas 'cannot be circumvented by attempting to limit the use of the
formula to a particular technological environment' or adding 'insignificant
postsolution activity."' In re Bilski, 130 S. Ct. 3218, 3230 (quoting
Gaz. Pat. Office 212 (Feb. 23, 2010).
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Application 101667,449
Diamond v. Diehr, 450 U.S. 175, 191- 192 (198 I).) Field-of-use limitations
are insufficient to render otherwise patent-ineligible subject matter patent-
eligible. See Diehr, 450 U.S. at 191 (1981).
Accordingly, claims 14-16 are also rejected under 35 U.S.C. 5 101 as
being directed to non-statutory subject matter for reciting abstract ideas.
Claims 17-20
We reject claims 17-20 under 35 U.S.C. 5 101 because claims 17-20
do not fit within one of the four categories of statutory subject matter under
35 U.S.C. 5 101. We take claim 17 as representative. Claim 17 recites "an
advertisement" that comprises a "visual presentation of first, known
product," a "visual presentation of a second, known product," and "a
plurality of intermediate visual presentations of products."
35 U.S.C. 5 101 sets out four categories of subject matter: process,
machine, manufacture, or composition of matter. Claim 17 clearly is not
directed to a process, as it does not recite any action (see In re Nuijten, 500
F.3d 1355 (Fed. Cir. 2007)), or a composition of matter, as it does not recite
a composition of two or more substances (see In re Nuijten, 500 F.3d 1357
(Fed. Cir. 2007)). Claim 17 is also not directed to a machine, as it does not a
concrete thing made of plural parts or devices (see In re Nuijten, F.3d 1355
(Fed. Cir. 2007)).
Claim 17 also encompasses subject matter which is not a manufacture.
The recited "advertisement" is not directed only to an article of manufacture,
as not all embodiments with in the scope of the claim comprise a tangible
article or commodity. See In re Nuijten, F.3d 1355 (Fed. Cir. 2007). For
example, we note that the Specification states: "Further, 'visual
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Application 101667,449
presentations' should be given a broad definition to include still images,
moving images and animations, models or prototypes or any other means to
visually present characteristics or functions of a product." FF 1. Moving
images, such as those broadcasted and projected on a TV, are not a tangible
article. We note that claim 17 does not require a display mechanism, such as
a computer or TV screen. FF 2.
Accordingly, we reject claims 17-20 under 35 U.S.C. 5 101 as being
drawn to non-statutory subject matter.
DECISION
The Examiner's rejection of claims 1-20 under 35 U.S.C. 5 103(a) is
reversed. We also reverse the Examiner's rejection of claims 1-13 and 17-
20 under 35 U.S.C. 5 101, but enter new grounds of rejection of claims 1-20
under 35 U.S.C. 5 101.
This decision contains a new ground of rejection pursuant to
37 C.F.R. 5 41.50(b) (effective September 13, 2004, 69 Fed. Reg. 49960
(August 12, 2004), 1286 Off. Gaz. Pat. Office 21 (September 7, 2004)). 37
C.F.R. 5 41.50(b) provides "[a] new ground of rejection pursuant to this
paragraph shall not be considered final for judicial review."
37 C.F.R. 5 41.50(b) also provides that the appellant, 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) Reopen prosecution. Submit an appropriate amendment of the
claims so rejected or new evidence relating to the claims so rejected,
Appeal 2010-00061 0
Application 101667,449
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
5 41.52 by the Board upon the same record . . . .
REVERSED; 37 C.F.R 6 41.50(b)
mev
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