Ex Parte Barbee et al

Board of Patent Appeals and Interferences

Jun 21, 2011

11189191 (B.P.A.I. Jun. 21, 2011)

UNITED STATES PATENT AND TRADEMARK OFFICE
________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
________________

Ex parte LAQUICIA S. BARBEE, RYAN A. BOYLES, and
JASON C. PLURAD
________________

Appeal 2009-009777
Application 11/189,191
Technology Center 2100
________________

Decided:
________________

Before LANCE LEONARD BARRY, ST. JOHN COURTENAY III, and
DEBRA K. STEPHENS, Administrative Patent Judges.

COURTENAY, Administrative Patent Judge.

DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) (2002) from the
Examiner’s rejection of claims 1-8. We have jurisdiction under 35 U.S.C.
§ 6(b) (2008). We affirm-in-part and set forth new grounds of rejection
under 35 U.S.C. § 112, second paragraph.
Appeal 2009-009777
Application 11/189,191

2
STATEMENT OF THE CASE
According to Appellants, the invention relates to tab order
management of controls in a markup language environment. More
particularly, the invention on appeal is directed to the management of tab
ordering in a portal environment. (Spec. 1, para. [0001])

Exemplary Claim 1
1. A tab order management data processing system comprising:
a portal server configured to render a portal page;
a portlet aggregator configured to provide portlet markup for different
portlets in said portal page; and

tab order management logic coupled to said portlet aggregator and
configured to transform a relative tab order for tabbed elements in
each of said different portlets into a single tab order for said portal
page.

Examiner's Rejections
1. The Examiner rejected claims 1, 2, and 6-8 under 35 U.S.C.
§ 101 as being directed to non-statutory subject matter.

2. The Examiner rejected claims 1-8 under 35 U.S.C. § 102(e) as
being anticipated by Hayes (US 2006/0080612 A1).

Appeal 2009-009777
Application 11/189,191

3
REJECTION UNDER §101
Claims 1-2
ISSUE
Under §101, did the Examiner err in concluding that
claims 1 and 2 are directed to non-statutory subject matter?

ANALYSIS
Appellants contend that claims 1 and 2 meet the requirements of
35 U.S.C. §101 because the standard set forth by the Federal Circuit only
requires that the claims could encompass statutory subject matter, and since
under a broadest reasonable claim construction, the claimed system could
include hardware. (App. Br. 5).
Based upon our review of the record, we agree with the Examiner’s
legal conclusion regarding the rejection under § 101. (Ans. 8). As noted by
the Examiner, paragraph [0019] of Appellants’ Specification indicates that
the claimed invention can be implemented in an entirely software
embodiment. (See Spec. [0019]). Therefore, in accordance with the broadest
reasonable interpretation consistent with the Specification, the claimed
invention can be embodied in hardware or software, and thus covers both
statutory and non-statutory embodiments. An embodiment that is software
per se falls outside of the scope of §101. Our reviewing Court has further
guided that claims covering both statutory and non-statutory subject matter
are non-statutory:
The four categories together describe the exclusive reach of
patentable subject matter. If a claim covers material not found
in any of the four statutory categories, that claim falls outside
the plainly expressed scope of § 101 even if the subject matter
Appeal 2009-009777
Application 11/189,191

4
is otherwise new and useful. In re Nuijten, 500 F.3d 1346, 1354
(Fed. Cir. 2007).

This reasoning is applicable here. Therefore, we find the Examiner
did not err in concluding that claims 1 and 2 are directed to non-statutory
subject matter. Accordingly, we affirm the Examiner’s rejection of claims 1
and 2 under §101.
Claims 6-8
ISSUE
Under §101, did the Examiner err in concluding that
claims 6-8 are directed to non-statutory subject matter?

ANALYSIS
Appellants contend that based upon the Federal Circuit’s decision
(In re Comisky), and based on the broadest reasonable interpretation, the
computer usable medium can require the use of statutory subject matter, and
therefore claims 6-8 meet the requirements of 35 U.S.C. §101. (App. Br. 7)
In rejecting claims under 35 U.S.C. §101, a computer-readable
medium (or media) comprising instructions is directed to statutory subject
matter so long as the language of the claims is not supported in the
Specification with non-statutory embodiments (i.e., signals, transmission
mediums and the like). See Nuijten, 500 F.3d at 1357 (A claim directed to
computer instructions embodied in a signal is not statutory under 35 U.S.C.
§ 101).

Appeal 2009-009777
Application 11/189,191

5
Here, as pointed out by the Examiner, specific embodiments of the
claimed computer-useable medium are disclosed in the Specification that
may include propagation signals and carrier waves. (Ans. 4; see also Spec.
¶¶ [0020] “propagation medium”).
Therefore, we conclude that claim 6 covers non-statutory subject
matter. Because claims 7 and 8 do not cure the aforementioned deficiencies
of claim 6, we also conclude that claims 7 and 8 cover non-statutory subject
matter.
Accordingly, we affirm the Examiner’s rejection of claims 6-8 under
§101.

NEW GROUND OF REJECTION UNDER
37 C.F.R. § 41.50(b)
ISSUE
We do not reach the merits of the Examiner's anticipation rejection
because we feel it necessary to first address the threshold issue of whether
independent claims 1, 3, and 6 (and associated dependent claims) are
indefinite under 35 U.S.C. §112, second paragraph.

PRINCIPLES OF LAW
Claim Construction
During prosecution, “the PTO gives claims their ‘broadest reasonable
interpretation.’” In re Bigio, 381 F.3d 1320, 1324 (Fed. Cir. 2004) (quoting
In re Hyatt, 211 F.3d 1367, 1372 (Fed. Cir. 2000)).

Appeal 2009-009777
Application 11/189,191

6
The USPTO is not required in the course of prosecution to interpret
claims in the same manner as courts are required to during infringement
proceedings. “It would be inconsistent with the role assigned to the PTO in
issuing a patent to require it to interpret claims in the same manner as judges
who, post-issuance, operate under the assumption the patent is valid.” In re
Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997).

35 U.S.C. § 112, Second Paragraph
The test for definiteness under 35 U.S.C. § 112, second paragraph, is
“whether those skilled in the art would understand what is claimed when the
claim is read in light of the specification.” Orthokinetics, Inc. v. Safety
Travel Chairs, Inc., 806 F.2d 1565, 1576 (Fed. Cir. 1986) (citations
omitted). See also Ex parte Miyazaki, 89 USPQ2d 1207, 1211 (BPAI 2008)
(precedential), available at
http://www.uspto.gov/web/offices/dcom/bpai/prec/fd073300.pdf.
A prior art rejection cannot be sustained if the hypothetical person of
ordinary skill in the art would have to make speculative assumptions
concerning the meaning of the claim language. See In re Steele, 305 F.2d
859, 862-863 (CCPA 1962).
ANALYSIS
Independent claims 1, 3, and 6
Based upon our review of Appellants’ independent claims viewed in
light of the Specification, we are unable to ascertain the scope of the
“relative tab order” and “single tab order” recited in each of claims 1, 3, and
6. In particular, we conclude that the claim terms “relative tab order” and
“single tab order” are terms which have no definite meaning, within the
Appeal 2009-009777
Application 11/189,191

7
express language of each independent claim. Additionally, we find
Appellants fail to provide an artisan with clear notice of a definition for
these terms in the Specification. When we look to Appellants’ Specification
for context, we find little meaningful clarification, for example:
Notably, tab order management logic 200 can be coupled
to the aggregator 105. The tab order management logic
200 can be configured to transform the relative tab order
indices of each tabbed element in each portlet 115B into
a single, unified tab order index. In more particular
illustration, Figure 2 is a flow chart illustrating a process
for tab order management in a portal environment.
Beginning in block 210, an index for the portal display
can be set to an initial value. In block 220, a first portlet
can be selected for processing. In block 230, the number
of tabbed elements in the selected portlet can be counted.
Specifically, each element which permits tabbed
navigation can be counted to determine a number of
elements which can be navigated through the activation
of a tab operation.

(Spec. 7, ¶ [0016]).

Under § 112, second paragraph, claims must be sufficiently definite
such that those skilled in the art would understand what is being claimed
when the claim is read in light of the Specification. See Miyazaki, 89
USPQ2d at 1211.
Because each independent claim on appeal is directed to the
transformation of a relative tab order into a single tab order, without defining
the specific differences between the relative tab order and the single tab
order, it is our view that a person of ordinary skill in the art would not have
been able to reasonably ascertain a definite meaning for the recited terms
“relative tab order” and “single tab order” so as to determine the metes and
Appeal 2009-009777
Application 11/189,191

8
bounds of the claimed invention. Moreover, it is our view that Appellants’
Specification fails to set forth a definition of the recited “relative tab order”
and “single tab order” with “reasonable, clarity, deliberateness, and
precision” that would render the incorporation of such definition into the
claims appropriate (quoting In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir.
1994)).
Since the prior art rejections cannot be sustained if the hypothetical
person of ordinary skill in the art would have to make speculative
assumptions concerning the meaning of the claim language, a material issue
of claim interpretation is present which must be resolved before the merits of
the Examiner’s and Appellants’ positions can be properly considered. See
In re Steele, 305 F.2d at 862-863.
Therefore, we pro forma reverse the Examiner's rejection of
independent claims 1, 3, and 6, and all claims which depend therefrom that
stand rejected under 35 U.S.C. § 102(e).

CONCLUSIONS OF LAW
We conclude that claims 1, 2 and 6-8 are directed to non-statutory
subject matter under 35 U.S.C. § 101.
We conclude that claims 1-8 are indefinite under 35 U.S.C. § 112,
second paragraph.

DECISION
We affirm the Examiner’s rejection of claims 1-2 and 6-8 under §101.
Appeal 2009-009777
Application 11/189,191

9
We pro forma reverse the Examiner’s rejection of claims 1-8 under
35 U.S.C. § 102(e) and enter a new ground of rejection for claims 1-8 under
35 U.S.C. § 112, second paragraph.
37 C.F.R. § 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) 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.…

AFFIRMED-IN-PART
41.50(b)

pgc