Ex Parte Black et al

Board of Patent Appeals and Interferences

Mar 12, 2012

11491695 (B.P.A.I. Mar. 12, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte ANDRE B. BLACK, DAVID F. CHEUNG, RUBY KENNEDY,
and YUCHUN LEE
___________

Appeal 2011-001013
Application 11/491,695
Technology Center 3600
____________

Before ANTON W. FETTING, MEREDITH C. PETRAVICK, and
MICHAEL W. KIM, Administrative Patent Judges.

PETRAVICK, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2011-001013
Application 11/491,695

2
STATEMENT OF THE CASE
Andre B. Black et al., (Appellants) seek our review under 35 U.S.C. §
134 of the rejection of claims 1-25. We have jurisdiction under 35 U.S.C.
§ 6(b).

SUMMARY OF DECISION
We AFFIRM. 1

THE INVENTION
This invention is drawn to a method of producing a promotion from a
template. See Spec. 1:12-16. Claim 1, reproduced below, is illustrative of
the subject matter on appeal.
1. A computer-implemented method comprises:
generating, by one or more computers, a promotion template
by:
assigning a plurality of basic attributes to the promotion
template;
assigning one or more standard attributes to the
promotion template, with the standard attributes including at
least one standard attribute that is a parameterized standard
attribute;
storing the promotion template at a location in an
electronic medium;
generating a promotion instance from the promotion template
by:

1 Our decision will make reference to the Appellants’ Appeal Brief (“App.
Br.,” filed Jun. 16, 2010) and Reply Brief (“Reply Br.,” filed Oct. 4, 2010),
and the Examiner’s Answer (“Ans.,” mailed Aug. 4, 2010).

Appeal 2011-001013
Application 11/491,695

3
assigning the parameterized standard attribute a default
value; and
assigning the parameterized standard attribute to the
promotion instance;
generating, when the promotion instance is assigned to a group
in a marketing campaign, a mutation in the default value to a
provide a mutated value of the parameterized standard attribute
associated with the promotion instance;
determining the mutated value of the parameterized standard
attribute is a unique value; and
generating, by one or more computers, a new promotion version
from the promotion instance by at least assigning the unique
value of the parameterized standard attribute to the promotion
version.

THE REJECTIONS
The Examiner relies upon the following as evidence of
unpatentability:
Willers
Veit
US 2004/0204988 A1
US 2005/0197899 A1
Oct. 14, 2004
Sep. 8, 2005

The following rejections are before us for review:
1. Claims 1-25 are rejected under 35 U.S.C. § 112, second paragraph, as
being indefinite for failing to particularly point out and distinctly
claim the subject matter which applicant regards as the invention.
2. Claims 1-25 are rejected under 35 U.S.C. §103(a)2 as being
unpatentable over Veit and Willers.

2 Page 4 of the Answer mistakenly states that claims 1-25 are rejected under
35 U.S.C. § 102(e). See App. Br. 13 n.55.
Appeal 2011-001013
Application 11/491,695

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ISSUES
The first issue is whether claims 1-25 are indefinite under 35 U.S.C.
§ 112, second paragraph. Specifically, the issue is whether the recitation of
“when the promotion instance is assigned to a group in a marketing
campaign” in a step of generating a mutation
The second issue is whether claims 1-25 are unpatentable under 35
U.S.C. § 103(a) over Veit and Willers.

ANALYSIS
The rejection of claims 1-25 under §112, second paragraph.
The Examiner and the Appellants dispute whether the recitation of
“when the promotion instance is assigned to a group in a marketing
campaign” in the step of generating a mutation causes claim 1 to be
indefinite. See App. Br. 19-20; Reply Br. 1-2; Ans. 3-4, 11-12.
We find that claim 1 fails to satisfy the requirement under 35 U.S.C. §
112, second paragraph, for definiteness. The test for compliance is whether
the claims set out and circumscribe a particular area with a reasonable
degree of precision and particularity when read in light of the application
disclosure as they would be interpreted by one of ordinary skill in the art. In
re Moore, 439 F.2d 1232, 1235 (CCPA 1971).
Claim 1 recites “when the promotion instance is assigned to a group in
a marketing campaign.” The Appellants state that this “is not a claimed step
per se but is the condition that governs when the step of generating occurs.”
App. Br. 20. Claim 1 does not recite or require a step of assigning the
promotion instance to a group in a marketing campaign per se.
Appeal 2011-001013
Application 11/491,695

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This lack of a step requiring that the condition of assigning the
promotion instance be performed causes the scope of claim 1 to be
ambiguous. It is unclear whether the scope of claim 1 is implicitly limited to
a method in which the condition is always satisfied and therefore, the step of
generating a mutation is required to be performed, as Appellants seem to
assert (App. Br. 19, this limitation “refers to the action of generating a
mutation . . . as a result of assigning the promotion instance to a group”) or
whether claim 1 also encompasses, when given the broadest reasonable
interpretation in light of the Specification, a method in which the condition
is not satisfied. Further, if claim 1 encompasses a method in which the
condition is not satisfied, the scope of claim 1 is ambiguous as to what is
required by the recited step of generating a mutation. This ambiguity is
further compounded by the fact that the subsequent “determining” step
references the mutated value. If the generating step is not performed
because the condition is not satisfied, it is unclear how the “determining”
step is to be performed. Therefore, we find that claim 1 fails to set out and
circumscribe a particular area with a reasonable degree of precision and
particularity when read in light of the application disclosure as they would
be interpreted by one of ordinary skill in the art.
Method claim 11 recites the same step at issue. Independent claims
12, 22, and 23 are directed to the structures of an article or apparatus and
each recite a computer program product which causes a processor or
computer to perform the step above. For the reasons as discussed above, we
find claims 11, 12, 22, and 23 to be indefinite. Accordingly, the rejection of
claims 1-25 under 35 U.S.C. § 112, second paragraph, as being indefinite for
Appeal 2011-001013
Application 11/491,695

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failing to particularly point out and distinctly claim the subject matter which
applicant regards as the invention is affirmed.

The rejection of claims 1-25 under §103(a) as being unpatentable over Veit
and Willers
We do not reach the merits of the rejection under 35 U.S.C. § 103(a).
Since the claims fail to satisfy the requirement under 35 U.S.C. § 112,
second paragraph, for definiteness, we reverse, pro forma, the Examiner's
rejection under 35 U.S.C. § 103(a). See In re Steele, 305 F.2d 859, 862-63
(CCPA 1962) (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 claim language.); see also In re
Wilson, 424 F.2d 1382, 1385 (CCPA 1970) (“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.”)

DECISION
The decision of the Examiner to reject claims 1-25 is affirmed.
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

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