Ex Parte Borton

Board of Patent Appeals and Interferences

Mar 26, 2007

09813636 (B.P.A.I. Mar. 26, 2007)

The opinion in support of the decision being entered today was not written 1
2
3
4
5
6
7
8
9
10
11
12
13
14
15
16
17
18
19
20
21
22
23
24
25
26
27
28
29
30
31
32
33
for publication in and is not binding precedent of the Board.

UNITED STATES PATENT AND TRADEMARK OFFICE
___________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
___________

Ex parte GREGORY F. BORTON
___________

Appeal 2007-1443
Application 09/813,636
Technology Center 3600
___________

Decided: March 26, 2007
___________

Before ROBERT E. NAPPI, LINDA E. HORNER and ANTON W. FETTING,
Administrative Patent Judges.
FETTING, Administrative Patent Judge.
DECISION ON APPEAL

STATEMENT OF CASE
This appeal involves claims 1-12 and 19-24, the only claims pending in this
application. We have jurisdiction over the appeal pursuant to 35 U.S.C. §§ 6 and
134.

We AFFIRM.

Appeal 2007-1443
Application 09/813,636

1
2
3
4
5
6
7
8
9
10
11
12
13
14
15
16
17
18
19
20
21
22
23
24
25
26
27
28
29
30

The Appellant invented business projections, scenario management and
activity-based costing methods for business planning (Specification 1). An
understanding of the invention can be derived from a reading of exemplary
claim 1, which is reproduced below.
1. A method for activity-based business modeling for an organization
that doesn't require historical information from a general ledger, the
method comprising steps of:
receiving a plurality of task entries, wherein each task entry is
comprised of defined types of future action which will generate a
result;
receiving a plurality of resource entries, wherein each resource entry
is comprised of defined types of personnel, hardware, software,
services, or combinations thereof which are presumed to be available
in the future;
receiving mapping information that shows a relationship between each
of the task entries and the plurality of resource entries, wherein each
task entry is assigned a subset of the plurality of resources;
processing the plurality of task entries, the plurality of resource entries
and the mapping information with a computer to formulate a business
model; and
generating a forward-looking report after the processing step and
related to the business model.

This appeal arises from the Examiner’s Final Rejection, mailed March 16,
2006. The Appellant filed an Appeal Brief in support of the appeal on June 28,
2006, and the Examiner mailed an Examiner’s Answer to the Appeal Brief on
September 26, 2006. A Reply Brief was filed on November 21, 2006.

2

Appeal 2007-1443
Application 09/813,636

PRIOR ART 1
2
3
4
5
6
7
8
9
10
11
12
13
14
15

The prior art reference of record relied upon by the Examiner in rejecting the
appealed claims is:
Morgan US 5,799,286 Aug. 25, 1998

REJECTIONS1
Claims 1-12 and 19-222 stand rejected under 35 U.S.C. § 101 as directed to
non-statutory subject matter.
Claims 1-12 and 19-24 stand rejected under 35 U.S.C. § 112, first paragraph, as
not enabling one skilled in the pertinent art to make and use the claimed subject
matter from the original disclosure.
Claims 23 and 24 stand rejected under 35 U.S.C. § 102(b) as anticipated by
Morgan.
Claims 1-12 and 19-22 stand rejected under 35 U.S.C. § 103(a) as obvious over
Morgan.

1 The Examiner withdrew a rejection of claims 1-12 and 19-24 under U.S.C. § 112,
second paragraph, and under 35 U.S.C. § 103(a) as obvious over Calver (Answer
2).
2 The rejection under 35 U.S.C. § 101 in the Answer implies that claims 23 and
24 also are within the scope of this rejection (Answer 3) by including claims “22-
24” in the nominal rejection. However, claims 23 and 24 were not included
previously (Final Rejection 2; Br. 5 and 9) and the Examiner indicates that the
grounds in the Brief are correct except for withdrawn rejections (Answer 2). The
Examiner does not refer to claims 23 or 24 in the analysis of the rejection in the
Answer. Accordingly, we treat the inclusion of claims 23 and 24 in the nominal
rejection within the Answer as a typographical error and that these claims are not
before us in this rejection.
3

Appeal 2007-1443
Application 09/813,636

ISSUES 1
2
3
4
5
6
7
8
9
10
11
12
13
14
15
16
17
18
19
20
21
22
The issues pertinent to this appeal are
• Whether the art applied shows task entries comprised of defined types of
future actions which will generate a result (All claims);
• Whether the art applied shows mapping a relationship between each of the
task entries and resource entries (All claims);
• Whether the art applied shows processing the task and entries before entry of
any historical information (Claim 7);
• Whether generating a forward-looking report after the processing step and
related to the business model is a useful, concrete and tangible result and not
mere manipulation of an abstract idea (All claims); and
• Whether the Specification enables the claims (All claims).
In particular, the Appellant contends that, as to rejections over art, Morgan uses
historical information rather than future actions (Br. 6-7); Morgan maps
expenditures to activities rather than mapping future resources to future tasks (Br.
7); and that, with respect to claim 7, Morgan uses historical activity rather than
processing the resource entry and the task entry before entry of any historical
information (Br. 8). As to the rejections regarding patentable subject matter, the
Appellant contends that the claimed report is a useful, concrete and tangible result
(Br. 9), and as to enablement, that the original Specification p. 8, ll. 14-30 and
Figs. 2A&B are enabling.

4

Appeal 2007-1443
Application 09/813,636

FACTS PERTINENT TO THE ISSUES 1
2
3
4
5
6
7
8
9
10
11
12
13
14
15
16
17
18
19
20
21
22
23
The following Findings of Fact (FF), supported by a preponderance of
substantial evidence, are pertinent to the above issues.
1) Morgan describes a flexible tool that not only tracks current operational
performance, but also provides the information for forecasts or budgets
(Morgan, col. 4, ll. 40-43).
2) Morgan provides forecast and budget reports (Morgan, col. 5, ll. 6-9).
3) Morgan describes basic functions of the flexible tool, including identifying, for
each management organization, all of the activities to achieve prospective
business objectives (Morgan, col. 5, ll. 23-25).
4) Activities to achieve prospective business objectives are future actions which
will generate a result.
5) Thus, Morgan shows task entries comprised of defined types of future actions
which will generate a result.
6) Morgan determines the people, facilities and equipment associated with the
activities (Morgan, col. 5, ll. 56-58).
7) Determining the people, facilities and equipment associated with the activities
is a mapping of resources, such as people, facilities and equipment, with the
tasks defined as activities.
8) Thus, Morgan shows mapping a relationship between each of the task entries
and resource entries.
9) Morgan’s tool creates forecasts and budgets, including activity forecasts, with
estimated projections for equipment utilization, activity cost information and
5

Appeal 2007-1443
Application 09/813,636

product volumes. Historical information is preferably used to create this
information (Morgan, col. 7, ll. 56-63).
1
2
3
4
5
6
7
8
9
10
11
12
13
14
15
16
17
18
19
20
21
22
23
24
25
26
10) Creating forecasts and budgets, including activity forecasts, with estimated
projections for equipment utilization, activity cost information and product
volumes is a processing of the tasks and entries within the forecast model.
11) Preferentially using historical information implies alternatively not using
such historical information.
12) On the first implementation of a business plan, there will be no historical
information and thus modeling and forecasting will be done before entry of any
historical information.
13) Thus, Morgan implies processing the task and entries before entry of any
historical information, both as an alternative implementation and on initial
implementation.
14) A person of ordinary skill in the art of business forecasting has knowledge
and experience in formulating business models, entering inputs, such as tasks
and resources for such models, and generating reports based on such models.

PRINCIPLES OF LAW
Our reviewing court provided the following holding in Warmerdam:
Despite the oft-quoted statement in the legislative history of the 1952
Patent Act that Congress intended that statutory subject matter
"include anything under the sun that is made by man," S. Rep. No.
1979, 82d Cong., 2d Sess., 5 (1952), reprinted in 1952 U.S.C.C.A.N.
2394, 2399; H.R. Rep. No. 1923, 82d Cong., 2d Sess., 6 (1952),
Congress did not so mandate. Congress included in patentable subject
matter only those things that qualify as "any . . . process, machine,
6

Appeal 2007-1443
Application 09/813,636

manufacture, or composition of matter, or any . . . improvement
thereof . . . ." 35 U.S.C. § 101 (1988). Cf. In re Alappat, 33 F.3d 1526
(Fed. Cir. 1994) (en banc) ("The use of the expansive term "any" in
1
2
3
4
5
6
7
8
9
10
11
12
13
14
15
16
17
18
19
20
21
22
23
24
25
26
27
28
29
30
31
32
33
§ 101 represents Congress's intent not to place any restrictions on the
subject matter for which a patent may be obtained beyond those
specifically recited in § 101 and the other parts of Title 35.")
To include some things is to exclude others. The chore of defining
exactly what is excluded under § 101, and applying such definitions to
specific cases, has caused courts to expend much effort in trying to
find the right words to describe some rather abstract notions. In
Diamond v. Diehr, 450 U.S. 175, 67 L. Ed. 2d 155, 101 S. Ct. 1048
(1981), the Supreme Court summarized the scope of the § 101
exclusion and the Court's prior efforts at describing it by saying
"[e]xcluded from such patent protection are laws of nature, natural
phenomena, and abstract ideas . . . . Our recent holdings in Gottschalk
v. Benson [409 U.S. 63, 34 L. Ed. 2d 273, 93 S. Ct. 253 (1972)] and
Parker v. Flook [437 U.S. 584, 57 L. Ed. 2d 451, 98 S. Ct. 2522
(1978)], both of which are computer-related, stand for no more than
these long-established principles." Id. at 185. …
[W]e find that regardless whether the claim can be said to recite
indirectly or directly a mathematical algorithm, the dispositive issue
for assessing compliance with § 101 in this case is whether the claim
is for a process that goes beyond simply manipulating "abstract ideas"
or "natural phenomena".
In re Warmerdam, 33 F.3d 1354, 1358-60, 31 USPQ2d 1754, 1757 (Fed.
Cir. 1994).
In the case where a claim is for a process, as opposed to a product, “[t]he line
between a patentable ‘process’ and an unpatentable ‘principle’ is not always clear.
Both are ‘conception[s] of the mind, seen only by [their] effects when being
executed or performed.” Parker v. Flook, 437 U.S. U.S. 584, 589 (1978) (quoting
Tilghman v. Proctor, 102 U.S. 707, 728 (1880)). “The holding that the discovery
of [Benson’s] method could not be patented as a ‘process’ forecloses a purely
literal reading of § 101.” Flook, 437 U.S. at 589. The Supreme Court has
7

Appeal 2007-1443
Application 09/813,636

recognized only two instances in which a method may qualify as a section 101
process: when the process “either [1] was tied to a particular apparatus or
[2] operated to change materials to a ‘different state or thing.’” Id. at 588 n.9
(quoting Cochrane v. Deener, 94 U.S. 780, 787-788 (1877) (“A process is...an act,
or a series of acts, performed upon the subject matter to be transformed and
reduced to a different state or thing”)). “[W]hen a claim containing [an abstract
idea] implements or applies that [idea] in a structure or process which, when
considered as a whole, is performing a function which the patent laws were
designed to protect (e.g., transforming or reducing an article to a different state or
thing), then the claim satisfies the requirements of § 101.” Diamond v. Diehr, 450
U.S. 175, 192 (1981); see also Gottschalk v. Benson, 409 U.S. 63, 70 (1972)
(“Transformation and reduction of an article ‘to a different state or thing’ is the
clue to the patentability of a process claim that does not include particular
machines.”).
1
2
3
4
5
6
7
8
9
10
11
12
13
14
15
16
17
18
19
20
21
22
23
24
25
Our reviewing court also held that abstract subject matter is not patentable
unless it produces a useful, concrete and tangible result. State Street Bank & Trust
Co. v. Signature Financial Group Inc., 149 F.3d 1368, 47 USPQ2d 1596 (Fed. Cir.
1998).
ANALYSIS
Claims 1-12 and 19-22 rejected under 35 U.S.C. § 101 as directed to non-statutory
subject matter.
All of the claims are directed toward methods of modeling business activities
by which implications are presented in a report. Such modeling is intangible and
abstract, being manipulation of the ideas of what might occur, and is not
instantiated in some physical way so as to be limited to a practical application of
8

Appeal 2007-1443
Application 09/813,636

the idea. In this case, the claimed methods do not require any machine or
apparatus to perform the steps and do not operate to physically transform any
material to a different state or thing, and are therefore not processes within the
meaning of the patent statutes. As such, they do not fall within any of the statutory
categories of patentable subject matter under § 101.
1
2
3
4
5
6
7
8
9
10
11
12
13
14
15
16
17
18
19
20
21
22
23
24
25
The Appellant argues that the claims are statutory because they produce a
useful result, i.e., “generating a forward-looking report” (Br. 9). Our reviewing
court has applied the “useful, concrete, and tangible result” test only to claims that
are directed to machine implementation of mathematical algorithms, and we find
no precedent requiring us to extend it to non-machine implemented methods in this
case. See In re Alappat, 33 F.3d 1526, 1544, 31 USPQ2d 1545, 1557 (Fed. Cir.
1994) (“This [claimed invention] is not a disembodied mathematical concept
which may be characterized as an ‘abstract idea,’ but rather a specific machine to
produce a useful, concrete, and tangible result”); State Street, 149 F.3d at 1373, 47
USPQ2d at 1601 (holding “transformation of data … by a practical application of a
mathematical algorithm, formula, or calculation, because it produces ‘a useful,
concrete and tangible result.’”); and AT&T Corp. v. Excel Communications, Inc.,
172 F.3d 1352, 1358, 50 USPQ2d 1447, 1452 (Fed. Cir. 1999) (“Because the
claimed process applies the Boolean principle to produce a useful, concrete, and
tangible result without pre-empting other uses of the mathematical principle, on its
face the claimed process comfortably falls within the scope of § 101.”
Therefore, all of the claims are directed toward ineligible subject matter.
Accordingly we sustain the Examiner's rejection of claims 1-12 and 19-22 rejected
under 35 U.S.C. § 101 as directed to non-statutory subject matter.

9

Appeal 2007-1443
Application 09/813,636

Claims 1-12 and 19-24 rejected under 35 U.S.C. § 112, first paragraph, as not
enabling a person of ordinary skill in the art to make and use the claimed subject
matter from the original disclosure.
1
2
3
4
5
6
7
8
9
10
11
12
13
14
15
16
17
18
19

The Examiner rejects the above claims because the Examiner finds the
Specification is unclear as to how a business model is formulated, tasks are
entered, or reports are generated with a model (Answer 63).
As our Findings of Fact (FF 13), supra, shows, a person skilled in the pertinent
art would know how to make and use the claimed invention without undue
experimentation, as demonstrated in the prior art. Accordingly we do not sustain
the Examiner's rejection of claims 1-12 and 19-24 under 35 U.S.C. § 112, first
paragraph, as not enabling a person skilled in the art to make and use the claimed
subject matter from the original disclosure.

Claims 1-12 and 19-22 rejected under 35 U.S.C. § 103(a) as obvious over Morgan.
We note that the Appellant argues these claims as a group. Accordingly, we
select claim 1 as representative of the group.
From the Findings of Fact, supra, we must conclude that
• The art applied shows task entries comprised of defined types of future
actions which will generate a result (All claims) (FF 5);

3 The Examiner also indicates that claim 6 is indefinite within the 35 U.S.C. § 112,
first paragraph rejection analysis (Answer 6). Such a characterization as being
indefinite is actually a rejection under 35 U.S.C. § 112, second paragraph, which
the Examiner withdrew. Accordingly, we treat this as an ancillary remark by the
Examiner not associated with the 112, first paragraph rejection.
10

Appeal 2007-1443
Application 09/813,636

• The art applied shows mapping a relationship between each of the task
entries and resource entries (All claims) (FF
1
2
3
4
5
6
7
8
9
10
11
12
13
14
15
16
17
18
19
20
21
22
23
8); and
• The art applied shows processing the task and entries before entry of any
historical information (Claim 7) (FF 13).
Accordingly we sustain the Examiner's rejection of claims 1-12 and 19-22
under 35 U.S.C. § 103(a) as obvious over Morgan.

Claims 23 and 24 rejected under 35 U.S.C. § 102(b) as anticipated by Morgan.
We note that it appears unusual for claims, such as claims 23 and 24, that each
refers back to another claim, to be rejected for lack of novelty, whereas the claim
they refer to is rejected because of obviousness. Claims 23 and 24, although both
refer back to claim 1, are not strictly dependent claims, because, being directed to a
computer readable medium and to a system, each capable of implementing, but not
affirmatively executing, the method of claim 1, they do not fully incorporate the
subject matter of claim 1, much as a product by process claim does not incorporate
the actual process execution within its scope. In particular, their structure would
be fully capable of executing the procedure of claim 1 with or without historical
information, and, more to the point, the use or lack thereof of historical
information is not part of the structural scope of these claims. We further note that
the Appellant has not separately argued these claims.
Accordingly, we sustain the Examiner's rejection of claims 23 and 24 under
35 U.S.C. § 102(b) as anticipated by Morgan.

11

Appeal 2007-1443
Application 09/813,636

REMARKS 1
2
3
4
5
6
7
8
9
10
11
12
13
14
15
16
17
18
19
20
21
22
23
24
The Appellant also contends that the Examiner’s objection against claims 2, 8-
11, 23 and 24 is improper (Br. 10). However, this relates to a petitionable matter
and not to an appealable matter. See In re Schneider, 481 F.2d 1350, 1356-57, 179
USPQ 46, 51 (CCPA 1973) and In re Mindick, 371 F.2d 892, 894, 152 USPQ 566,
568 (CCPA 1967). See also MPEP § 1002.02(c), item 3(a) and § 1201. Thus, the
relief sought by the Appellants would have been properly presented by a petition to
the Commissioner under 37 C.F.R. § 1.181 instead of by appeal to this Board.
Accordingly, we will not further consider this issue.
The Examiner is urged to consider searching user manuals of any of the
popular project management software packages as pertinent sources of prior art,
should prosecution continue following this appeal. Project management software
routinely creates forward looking reports based on the mapping of prospective
activities to resources and are generally not tied to a general ledger.

DECISION
To summarize, our decision is as follows:
• The rejection of claims 1-12 and 19-22 rejected under 35 U.S.C. § 101 as
directed to non-statutory subject matter is sustained.
• The rejection of claims 1-12 and 19-24 under 35 U.S.C. § 112, first
paragraph, as not enabling a person skilled in the pertinent art to make and
use the claimed subject matter from the original disclosure is not sustained.
• The rejection of claims 23 and 24 under 35 U.S.C. § 102(b) as anticipated by
Morgan is sustained.
12

Appeal 2007-1443
Application 09/813,636

• The rejection of claims 1-12 and 19-22 under 35 U.S.C. § 103(a) as obvious
over Morgan is sustained.
1
2
3
4
5
No time period for taking any subsequent action in connection with this appeal
may be extended under 37 CFR § 1.136(a) (1) (iv).

AFFIRMED 6
7
8
9
10
11
12
13
14
15
16
17
18
19
20
21

vsh

TOWNSEND AND TOWNSEND AND CREW, LLP
TWO EMBARCADERO CENTER
EIGHTH FLOOR
SAN FRANCISCO CA 94111-3834
13