Ex Parte Blevins et al

Board of Patent Appeals and Interferences

Feb 12, 2010

11014307 (B.P.A.I. Feb. 12, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte TERRENCE BLEVINS, MARK NIXON, KEN BEOUGHTER,
MICHAEL LUCAS, and ARTHUR WEBB
____________

Appeal 2009-008248
Application 11/014,307
Technology Center 2100
____________

Decided: February 16, 2010
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Before JAMES D. THOMAS, LANCE LEONARD BARRY,
and STEPHEN C. SIU, Administrative Patent Judges.

THOMAS, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE

This is an appeal under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 1 through 43. We have jurisdiction under 35 U.S.C.
6(b). An Oral Hearing was conducted for this appeal on February 4, 2010.
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We reverse and institute new grounds of rejection within the
provisions of 37 C.F.R. § 41.50(b).

INVENTION
Smart process objects, which have both graphical and simulation
elements, may be used to create one or more graphic displays and one or
more process simulation modules, each having elements which may
communicate with one another and with devices within a process plant to
model and depict the operation of a process plant. The smart process objects
may include one or more device objects, which represent physical devices
within the process plant, and may include one or more smart connection
objects which represent and model the flow of a material, such as a gas, a
liquid, a composition of solid, electricity, etc., through a connection between
entities within the process plant. The smart process objects may also include
one or more smart stream objects, which also may represent and mode the
flow of a material at a particular point in the process plant. The smart
device, connection, and stream objects may be interconnected to model the
flow of material through the actual physical devices within the process plant
thereby enabling enhanced simulation and modeling capabilities with the
smart connection and stream objects providing a convenient manner of
enabling different entities and sections of a process model to be tied to one
another. (Abstract 52; Fig. 2).

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ILLUSTRATIVE CLAIM

1. A modeling entity for use in modeling a connection between
physical entities in a process plant, the modeling entity comprising:

a computer readable memory; and,

a connection object stored on the computer readable memory and
adapted to be executed on a processor, the connection object including:

a parameter memory adapted to store connection parameter data
pertaining to the connection in the process plant; and,

a graphic representation of the connection adapted to be
displayed to a user on a display device.

PRIOR ART AND EXAMINER’S REJECTIONS
The Examiner relies on the following references as evidence of
obviousness:
Nichols U.S. 5,347,466 Sep. 13, 1994
Kodosky U.S. 5,821,934 Oct. 13, 1998
Dessureault U.S. 7,065,476 B2 Jun. 20, 2006
(Filing date April 22, 2002)
All claims on appeal, claims 1 through 43, stand rejected under
35 U.S.C. § 103. As evidence of obviousness as to claims 1 through 24, 26
through 35, and 37 through 43, the Examiner relies upon Kodosky in view of
Nichols. To this combination of references, the Examiner adds Dessureault
as to claims 25 and 36.

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ANALYSIS
For the reasons set forth subsequently in this opinion, with respect to
all claims on appeal, claims 1 through 43, the existing prior art rejections
must be reversed, pro forma, because they are necessarily based on
speculative assumptions and inferences as to the meaning of the claims. See
In re Steele, 305 F.2d 859, 862-863 (CCPA 1962). It should be understood,
however, that our decision in this regard is based solely on the indefiniteness
of the claimed subject matter and does not reflect the adequacy or the
inadequacy of the prior art evidence applied in support of the rejection
before us. Once definite claims are presented, the Examiner is free to apply
the same, different, or additional prior art if the Examiner so chooses.

New Rejections within 37 C.F.R. § 41.50(b)
Claims 1 through 43 are rejected under the second paragraph
35 U.S.C. § 112 as being indefinite.
Each independent claim 1, 10, 23, and 32 sets forth features that may
or may not occur in the future, beginning with the “for use in” language in
the preamble of independent claim 1 on appeal. The use of the word “to” as
a modifier within various functionalities indicates that there is no present
tense recitation of the recited function for which a potential infringer would
know with certainty whether or not he or she would be infringing the recited
features. The suffix “-able” is used extensively, thus indicating the lack of a
positive recitation of the functionality that is recited. It is merely a potential
act that may or may not occur in the future. There is no positive recitation in
claim 1 that the computer readable memory is actually read and,
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additionally, the parameter memory included “within” the connection object
is recited to perform an act that may never occur in the future. The claimed
processor and display device are only passively recited and not positively
recited as an actual element within the body of representative independent
claim 1 on appeal. Substantially similar deficiencies are noted in
independent claims 10, 23, and 32.

PRINCIPALS OF LAW
Statutory Subject Matter
The subject matter of claims permitted within 35 U.S.C. § 101 must
be a machine, a manufacture, a process, or a composition of matter.
Moreover, our reviewing court has stated that “[t]he four categories [of
§ 101] together describe the exclusive reach of patentable subject matter. If
the 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), cert. denied, 127 S. Ct. 70 (2008). Accord In re Ferguson, 558 F.3d
1359 (Fed. Cir. 2009). This latter case held that claims directed to a
“paradigm” are nonstatutory under 35 U.S.C. § 101 as representing an
abstract idea. Thus, a “signal” cannot be patentable subject matter because it
is not within any of the four categories. In re Nuijten, 500 F.3d at 1357.
Laws of nature, abstract ideas, and natural phenomena are excluded from
patent protection. Diamond v. Diehr, 450 U.S. 175, 188 (1981). A claim
that recites no more than software, logic or a data structure (i.e., an
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abstraction) does not fall within any statutory category. In re Warmerdan,
33 F.3d 1354, 1361 (Fed. Cir. 1994).

ANALYSIS
Claims 1 through 43 are rejected under 35 U.S.C. § 101 as being
directed to nonstatutory subject matter.
As the reader will appreciate from our invention statement earlier in
this opinion, which directly quotes the abstract of the invention in the
application in this appeal, the presently claimed subject matter relates to an
abstract “modeling entity” to the extent recited in the preamble of illustrative
independent claim 1 on appeal. The focus of the disclosed invention and
substantially all of the subject matter of the body of each independent claim
1, 10, 23, and 32 is upon the so-called smart process objects and the like,
which are data structures within object oriented programming protocols. As
such, they relate to data abstractions/constructs and are akin to the paradigm
abstract idea of In re Ferguson. The objects are said to represent or
associate with physical elements but themselves are merely abstract
software-based data structures. Indeed, the subject matter of these
independent claims on appeal relate to the subject matter in disclosed figure
2, which is directed to a logical block diagram of a set of programming
applications and other entities that include these smart process objects and
programming process modules. The earlier-noted case law prohibits the
direct claiming of such abstractions. Even the mere concept of modeling a
real world environment of the independent claims on appeal is an abstraction
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in itself notwithstanding the use of various object oriented protocol data
constructs in which to “represent” a process plant.
Special attention is directed to the recitation of “a computer readable
memory” and the feature of “a parameter memory” that is recited to be
“within” claimed objects themselves. They are considered to be mere
transitory entities in themselves since these recitations are inclusive of a
signal embodiment based upon the disclosed invention of all programming
concepts in Specification paragraph [0110]. The claimed processor and
execution functionality are based upon the software entity labeled an
execution engine 48 within the suite of software applications 32 as
illustrated in disclosed figure 2 and do not necessarily represent a physical
structure to perform the execution.

CONCULSIONS AND DECISION
We have pro forma reversed the two outstanding rejections under 35
U.S.C. § 103 that encompass all claims on appeal, claims 1 through 43. We
have instituted two new grounds of rejection within 37 U.S.C. § 41.50(b).
The first is a rejection of all claims on appeal under 35 U.S.C. § 112, second
paragraph, as being vague and indefinite. The second rejection of all claims
on appeal is based upon 35 U.S.C. § 101 since these claims are directed to
nonstatutory subject matter.
A new ground of rejection is pursuant to 37 C.F.R. § 41.50(b).
37 C.F.R. § 41.50(b) provides that, “[a] new ground of rejection pursuant to
this paragraph shall not be considered final for judicial review.”
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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 grounds of
rejection to avoid termination of proceedings (37 C.F.R. § 1.197 (b)) 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
37 C.F.R. § 41.52 by the Board upon the same record ….

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

REVERSED
37 C.F.R. § 41.50(b)

pgc

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