Ex Parte Benny et al

Board of Patent Appeals and Interferences

May 27, 2010

09876090 (B.P.A.I. May. 27, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte MARK ANDREW BENNY, PHILIPPE COMPAIN, ALAN PAUL
PICKERSGILL, STEPHEN WILLIAM NEKOLAICHUK, ROBERT J.
SIMMONS, and CHRIS EDWARD TERRY
____________

Appeal 2009-001260
Application 09/876,090
Technology Center 2400
____________

Decided: May 28, 2010
____________

Before JOSEPH L. DIXON, JAY P. LUCAS, and
ST. JOHN, COUTERNAY III, Administrative Patent Judges.

DIXON, Administrative Patent Judge.

DECISION ON APPEAL

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The Appellants appeal under 35 U.S.C. § 134(a) from the Final rejection
of claims 22-25. We have jurisdiction under 35 U.S.C. § 6(b).
We Affirm-In-Part.

I. STATEMENT OF THE CASE
The Invention
The invention at issue on appeal relates to a method and a program for
creating a technical delivery framework to manage information technology
systems (Spec. 1).

The Illustrative Claim
Claim 22, an illustrative claim, reads as follows:
22. A method for creating a technical framework for use in
delivering a specific set of information technology services for
a customer, comprising the steps of:
determining a solution scope for the technical framework to be
created, the solution scope guided by an information technology
services contract with the customer, the solution scope based on
common practices for delivering certain types of information
technology services;
mapping the customer's existing equipment to lowest level
abstractions of architectural building blocks in a technical
model, the technical model describing people, processes, tools
and information used to deliver specific services to customers,
the architectural building blocks comprising architectural
components that are sufficiently modular and bounded to be
described as self-contained entities;
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creating a list of design objects as a function of the solution
scope for the technical framework, the design objects based on
logical groupings of architectural building blocks, including
software and hardware components; and
designating relationships between the design objects as a
function of the solution scope and the specific set of
information technology services for the customer.

The Reference
The Examiner relies on the following reference as evidence:
Hill US 6,670,973 B1 Dec. 30, 2003

The Rejections
The following rejections are before us for review:
Claims 23-24 stand rejected under 35 U.S.C. § 101 as being
directed to nonstatutory subject matter.
Claims 22-25 stand rejected under nonstaturary obviousness-type
double patenting as being unpatentable over claims 1-15 of the
copending Application No. 09/875,8631 or claims 25-30 of the
copending Application No. 09/875,8652.
Claims 22-25 stand rejected under 35 U.S.C. § 102(e) as being
anticipated by Hill.

1 The copending Application No. 09/875,863 is now US 7,389,217. The
allowed claims are the substantially same as those in the copending
application.
2 The copending Application No. 09/875,865 is now US 7487079.
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II. ISSUES
1. Has the Examiner erred in finding that the technical framework
recited in claim 23 and a computer program product recited in claim 24 are
not patent-eligible subject under 35 U.S.C. § 1013?
2. Has the Examiner erred in identifying that claims 22-25 stand
rejected under nonstaturary obviousness-type double patenting as being
unpatentable over claims 1-15 of copending Application No. 09/875,863 of
claims 25-30 of the copending Application No. 09/875,865?
3. Has that the Examiner erred in finding that Hill discloses the
limitations “determining a solution scope for the technical framework to be
created, the solution scope guided by an information technology services
contract with the customer, the solution scope based on common practices
for delivering certain types of information technology services” as recited in
claim 22?

III. PRINCIPLES OF LAW
Anticipation
“[A]nticipation of a claim under § 102 can be found only if the
prior art reference discloses every element of the claim . . . .” In re King,
801 F.2d 1324, 1326 (Fed. Cir. 1986) (citing Lindemann Maschinenfabrik
GMBH v. American Hoist & Derrick Co., 730 F.2d 1452, 1457 (Fed. Cir.
1984)). “[A]bsence from the reference of any claimed element negates

3 The rejection of claim 22 under 35 U.S.C. § 101 has been expressly
withdrawn by the Examiner (Ans. 10).
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anticipation.” Kloster Speedsteel AB v. Crucible, Inc., 793 F.2d 1565,
1571 (Fed. Cir. 1986), overruled on other grounds by Knorr-Bremse
Systeme Fuer Nutzfahrzeuge GmbH v. Dana Corp., 383 F.3d 1337
(Fed.Cir. 2004). In rejecting claims under 35 U.S.C. § 102, “[a] single
prior art reference that discloses, either expressly or inherently, each
limitation of a claim invalidates that claim by anticipation.” Perricone v.
Medicis Pharm. Corp., 432 F.3d 1368, 1375-76 (Fed. Cir. 2005) (citation
omitted).
35 U.S.C. § 101
Whoever invents or discovers any new and useful process,
machine, manufacture, or composition of matter, or any new
and useful improvement thereof, may obtain a patent therefor,
subject to the conditions and requirements of this title.

35 U.S.C. § 101.

Nonstatutory Obviousness-type Double Patenting

A nonstatutory obviousness-type double patenting rejection is
appropriate where the conflicting claims are not identical, but at least one
examined application claim is not patentably distinct from the reference
claim(s) because the examined application claim is either anticipated by, or
would have been obvious over, the reference claim(s). See e.g., In re Berg,
140 F.3d 1428 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046 (Fed. Cir.
1993); In re Longi, 759 F.2d 887 (Fed. Cir. 1985).

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IV. FINDING OF FACT
The following finding of fact (FF) is supported by a preponderance of
the evidence.
The Hill reference
1. Hill discloses a method and a computer program as a tool for
representing the information technology (IT) infrastructure of an
organization as a hierarchical list and graph (Abstract). The elements of the
hierarchical list and graph can be added and deleted. The relationship
between the elements of the hierarchical list and graph can be modified (col.
2, ll. 1-29).
V. ANALYSIS
The Appellants have the opportunity on appeal to the Board of Patent
Appeals and Interferences (BPAI) to demonstrate error in the Examiner’s
position. See In re Kahn, 441 F.3d 977, 985-86 (Fed. Cir. 2006) (citing In re
Rouffet, 149 F.3d 1350, 1355 (Fed. Cir. 1998). The Examiner sets forth a
detailed explanation of a reasoned conclusion of unpatentability in the
Examiner’s Answer. Therefore, we look to Appellants’ Briefs to show error
therein. Id.

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The Common Feature in the Claims
Independent claim 22, recites, inter alia, “determining a solution
scope for the technical framework to be created, the solution scope guided
by an information technology services contract with the customer, the
solution scope based on common practices for delivering certain types of
information technology services.” Independent claims 23-25 contain
similar recitations of these limitations.
35 U.S.C. § 101 Rejection
Claim 23
With respect to clam 23, the Appellants contend that claim 23 is
directed to a useful and tangible result, namely creating a technical
framework or use in delivering a specific set of IT services for a customer
(App. Br. 10). According to the Appellants, claim 23 is not directed to an
abstract idea, a law of nature or a natural phenomenon. Rather, “[i]t does
have substantial practical application, namely, providing a way for . . .
outsourcing services from one client to the next.” (Reply Br. 3). In addition,
the framework as claimed typically identifies how those parts fit together at
the highest level and “is not an abstract idea as asserted by the Examiner.” Id.
Finally, the Appellants contend that the Examiner does not cite any legal
authority to support his position and provide any evidence that any of
limitations of claim 23 can be performed by a person. Id.
We disagree with the Appellants’ contentions. “An idea of itself is not
patentable.”' Diamond v. Diehr, 450 U.S. 175, 185 (1981) (quoting Rubber-
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Tip Pencil Co. v. Howard, 87 U.S. (20 Wall.) 498, 507 (1874); Gottschalk v.
Benson, 409 U.S. 63, 70 (1972) (“[M]ental processes, and abstract
intellectual concepts are not patentable.”); see also id. at 71 (“It is conceded
that one may not patent an idea.”). The body of claim 23 recites “a solution
scope determined for the technical framework . . . a mapping of the
customer’s existing equipment to lowest level abstractions of architectural
building blocks . . . a list of design objects created as a function of the
solution scope . . . designated relationships between the design objects . . . a
detailed technical design developed for the information technology . . .”
(Emphasis added). The technical framework with all the steps can certainly
be written on a paper with a pencil by a person (e.g. summary for a
brainstorm meeting of a technical team) or can even be just an idea of how
to deliver IT service on someone’s mind (e.g. a IT project manager or a
senior IT architect).
We conclude that claim 23 is directed to a “paradigm” and thus is
nonstatutory under 35 U.S.C. § 101 as representing an abstract idea. See In
re Ferguson, 558 F.3d 1359, 1363 (Fed. Cir. 2009), petition for cert. filed,
77 U.S.L.W. 3680 (Jun. 20, 2009) (No. 80-1501) (“[E]ven if a claim may be
deemed to fit literally within one or more of the statutory categories, it may
not be patent eligible.”) “Phenomena of nature, though just discovered,
mental processes, and abstract intellectual concepts are not patentable, as
they are the basic tools of scientific and technological work.” Id. (quoting
Gottschalk v. Benson, 409 U.S. 63, 67 (1972) (internal quotation marks
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omitted)). Because the recited “information technology service contract” is a
mere meeting of the minds, the claimed “contract” is clearly directed to an
abstract intellectual concept or mental process.
In addition, “[t]he four categories [of § 101] 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 is otherwise new
and useful.” In re Nuijten, 500 F.3d 1346, 1354 (Fed. Cir. 2007) reh’g en
banc denied, 515 F.3d 1361 (Fed. Cir. 2008). When the language of claim
23 is considered as a whole, we conclude that the claimed “technical
framework” (an idea or a plan to perform IT service) falls outside the plainly
expressed scope of § 101 (i.e., process, machine, manufacture, or
composition of matter, or any new and useful improvement thereof), and
thus, even though it may be new and useful, it is directed to non-statutory
subject matter.
Claim 24
With respect to claim 24, the Examiner states that
The word “for” infers an intended use of the “computer
program product”, as opposed to a positively recited
embodiment. In other word, the claim does not necessitate that
the “computer program product” be physically embodied on a
“computer readable medium”. It is therefore directed to a
program per se and not to a process occurring as a result of
executing the program.
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(Ans. 4).

The Appellants contend that “[a]s the preamble specifically states, the
computer program product is for storage on a computer readable medium.
There is no ambiguity.” (Reply 4). Further, the Appellants contend that the
claim 24 as well as a computer readable medium can not be a “signal.” Id.
While claim 24 appears nominally directed to a "manufacture" under
§ 101 (as a computer program product), we agree with the Examiner that the
express language of the claim does not preclude a reading of the recited
“computer program product” on a disembodied computer program per se
(which could be transmitted as a wireless signal), coupled with a statement
of intended purpose regarding the “storage on a computer readable
medium.” (Preamble, claim 24). We particularly note that no storage
element is positively recited in the body of claim 24 to support the preamble.
Cf. Eaton Corp. v. Rockwell Int'l Corp., 323 F.3d 1332, 1339 (Fed. Cir.
2003) (When the limitations in the body of the claim “rely upon and derive
antecedent basis from the preamble, then the preamble may act as a
necessary component of the claimed invention.”). “An intended use or
purpose usually will not limit the scope of the claim because such statements
usually do no more than define a context in which the invention operates.”
Boehringer Ingelheim Vetmedica, Inc. v. Schering-Plough Corp., 320 F.3d
1339, 1345 (Fed. Cir. 2003).
Thus, we find the argued limitation “for storage on a computer
readable medium” is a statement of an intended use that does not limit the
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recited “computer program product” to actually being stored on a computer
readable medium, nor does it affect the scope of the body of the claim which
appears directed to steps of conducting the program. Therefore, we
conclude that claim 24, although claiming “a computer program product,”
broadly encompasses a computer program per se or a disembodied piece of
software.
Software in itself, with no structural tie to an article of manufacture,
machine, process or composition of matter, is not patentable subject matter.
See In re 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).
Software (a computer program) alone does not belong to one of those
categories.
This reasoning is applicable here. Therefore, while we agree with the
Appellants’ contention that claim 24 is not literally directed to a signal claim,
for the reasons discussed above, we agree with the Examiner’s interpretation
of claim 24 as encompassing a computer program per se that is non-statutory
under § 101.
Accordingly, we sustain the Examiner’s rejection of claims 23 and 24
under 35 U.S.C. § 101.

Nonstatutory Obviousness-type Double Patenting Rejection
With respect to claims 22-25, the Appellants contend that the
Examiner has not made any factual inquiry as to determining the differences
between the inventions claimed in the application and the claims in the cited
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patent application. Therefore, the Examiner improperly rejected claims 22-
25 under obviousness-type double patenting (App. Br. 12).
We agree with Appellants’ contention. A double patenting rejection
of the obviousness-type, if not based on an anticipation rationale, is
analogous to the nonobviousness requirement of 35 U.S.C. § 103 except that
the patent principally underlying the double patenting rejection is not
considered prior art. In re Braithwaite, 379 F.2d 594 (CCPA 1967).
Therefore, the analysis employed in an obviousness-type double patenting
rejection parallels the guidelines for analysis of a 35 U.S.C. § 103
obviousness determination. In re Braat, 937 F.2d 589 (Fed. Cir. 1991); In re
Longi, 759 F.2d 887 (Fed. Cir. 1985). In the instant case, however, the
Examiner has provided us with a conclusory statement that both claim 22 in
the instant application and claims 1-15 of application 09/875,863 or claim
25-30 of copending application 09/875,865 contain similar critical concepts.
The Examiner has not provided the required analysis to show how the
rejected claims define subject matter that is an obvious variation of the
subject matter of claims 1-15 or claims 25-30 of cited references.
Furthermore, the Examiner has not explained why and how one of ordinary
skill in the art would have been led to the recited limitations such as “the
solution scope guided by an information technology services contract with
the customer.” As such, the Examiner's conclusory statements about double
patenting fail to make clear how the subject matter of pending claims 22-25
is patentably indistinct from the subject matter of patented claims 1-15 or
25-30 of the cited references. We, therefore, cannot sustain the obviousness-
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type double patenting rejection.

35 U.S.C. § 102(e) Rejections
With respect to claim 22, the Appellants contend that the Hill
reference does not disclose determining a solution scope for the technical
framework to be created, nor is there any language in the cited passages that
disclose the solution scope is guided by the service contract with the
customer. (App. Br. 13). According to the Appellants, Hill does not
determine the solution scope, but only discloses a hierarchical list to
represent the IT infrastructure of the organization, in which each level
corresponds to one of the element types of the organization, namely,
organization, organization function, application, subsystem, or database
(Reply Br. 6-7).
The Examiner states that “the hierarchical list(s) and graph(s) (i.e.
‘solution scope’) are generated by a program” that is used by the
organization (i.e. customer). Therefore, the organization (i.e. ‘customer’)
inherently has a service agreement to use that program (i.e. ‘service
contract’).” (Ans. 13).
We disagree with the Examiner’s reading of the Hill reference. We
find that Hill teaches a program for presenting the IT infrastructure of an
organization that includes a hierarchical list and graph (FF 1). Although a
solution scope of an IT framework may be represented as a hierarchical list
and graph, the elements or components of the solution scope’s list and graph
are the services which would be provided, and are generally not the elements
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of IT infrastructure of the organization. We find nothing in Hill either
inherently or expressly for mentioning or determining a solution scope
guided by an IT service contract. Even if assuming the IT infrastructure is
the solution scope of the IT service, the Examiner’s inherency reasoning is
still misplaced because the Hill’s program may not be used by the
organization (the user may be anyone who is interested to know the IT
infrastructure of the organization), or the program may even be free software
without any service contract needed. Hence, it is not necessarily present in
Hill.
Because we agree with at least one of the Appellants’ contentions, we
find that the Examiner has not made a requisite showing of anticipation as
required to disclose the invention as recited in claim 22. The rejection of the
independent claims 23-25 contains the same noted deficiency.
Accordingly, we can not sustain the Examiner’s anticipation rejection
of claims 22-25.
VI. CONCLUSIONS
The Examiner did not err in concluding that the technical framework
recited in claim 23 and a computer program product recited in claim 24 are
not patent-eligible subject under 35 U.S.C. § 101.
The Examiner erred in rejecting claims 22-25 under nonstatutory
obviousness-type patenting.
The Examiner erred in finding that Hill discloses the limitations
“determining a solution scope for the technical framework to be created, the
solution scope guided by an information technology services contract with
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the customer, the solution scope based on common practices for delivering
certain types of information technology services” as recited in claim 22.

VII. ORDER
We reverse the anticipation rejections of claims 22-25 under 35 U.S.C.
§ 102.
We reverse the Examiner’s obviousness-type double patenting
rejection on claims 22-25.
We affirm the Examiner’s rejection of claims 23 and 24 under 35
U.S.C. § 101.
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)(iv).
AFFIRMED-IN-PART

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