Ex Parte Cheng et al

Board of Patent Appeals and Interferences

Jul 25, 2012

10758359 (B.P.A.I. Jul. 25, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
_____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________

Ex parte LILI CHENG, DAVID P. VRONAY,
RYSZARD K. KOTT, and SEAN U. KELLY
_____________

Appeal 2009-014281
Application 10/758,359
Technology Center 2100
______________

Before, MAHSHID D. SAADAT, DAVID M. KOHUT, and
JOHNNY A. KUMAR, Administrative Patent Judges.

KOHUT, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a) of the final
rejection of claims 1-6, 8, 9, 11, 12, 27-31, and 38.1 We have jurisdiction
under 35 U.S.C. § 6(b).

1 Claims 7 and 10 were previously cancelled and claims 13-26 and 32-37
were previously withdrawn.
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We reverse the Examiner’s rejection of these claims and enter new
grounds of rejections.

INVENTION
The invention is directed to a computer readable storage medium and
method for graphically notifying users of the availability of an entity. Spec.
1-3. Claim 1 is representative of the invention and is reproduced below:
1. A system embodied on computer readable storage medium
that facilitates notifications, comprising:
a state component that receives information relating to a state
of at least one entity, wherein an entity is an individual or group
of individuals; and
a notifications component that dynamically renders at least
one graphical indicia representative of the entity’s state to at
least one user, the notification component determines graphical
indicia to render based upon a utility component that factors
cost to the at least one user associated with rendering graphical
indicia that incorrectly represents the entity’s state versus
benefit to the at least one user of rendering graphical indicia
that correctly represents the entity’s state.

REFERENCE
Yoakum US 7,139,797 B1 Nov. 21, 2006
(filed Apr. 10, 2002)

REJECTIONS AT ISSUE
Claims 1-6, 8, 9, 11, 12, 27-31, and 38 are rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Yoakum. Ans. 3-15.

ISSUE
Did the Examiner err in finding that Yoakum teaches or suggests a
utility component that factors cost to the at least one user associated with
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rendering graphical indicia that incorrectly represents the entity’s state
versus benefit to the at least one user of rendering graphical indicia that
correctly represents the entity’s state?2
ANALYSIS
Independent claim 1 recites “a utility component that factors cost to
the at least one user associated with rendering graphical indicia that
incorrectly represents the entity’s state versus benefit to the at least one user
of rendering graphical indicia that correctly represents the entity’s state.”
Independent claims 27 and 38 contain similar limitations. Claims 2-5, 6, 8,
9, 11, and 12 and 28-31 are dependent upon claims 1 and 27 (respectively).
The Examiner finds that, while Yoakum does not explicitly disclose the
above referenced limitation, the referenced limitation would have been
obvious in light of Yoakum since a cost/benefit factor is inherent in
Yoakum’s calculation of availability and the list of ways to communicate to
the entity. Ans. 4-5 and 20. Appellants argue that Yoakum’s list is based
upon rules that are specified by a user and not by a cost/benefit analysis.
App. Br. 6. However, even if Yoakum’s list was based upon a cost/benefit
analysis, Appellants argue that cost/benefit analysis would be based upon the
entity and not the user trying to contact the entity. Reply Br. 3-4. We agree
with Appellants.
Claim 1 recites “factor[ing] cost to the at least one user…versus the
benefit to the at least one user,” wherein the user is the person trying to
contact the entity. All of the Examiner’s findings are based upon the cost
versus the benefit to the entity, not the user. See Ans. 20-24. Thus, we

2 Appellants make additional arguments regarding claims 2, 5, 8, 11, 29-31,
and 38. App. Br. 7-10; Reply Br. 4-12. We will not address these additional
arguments as this issue is dispositive of the appeal.
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agree with Appellants that the Examiner has not shown that Yoakum teaches
the disputed limitation and we cannot sustain the Examiner’s rejection of
claims 1-6, 8, 9, 11, 12, 27-31, and 38.

NEW GROUNDS OF REJECTION
We enter a new ground of rejection of claims 1-6, 8, 9, 11, 12, and 38
under 35 U.S.C. § 101 as covering both non-statutory subject matter and
statutory subject matter. While claims 1 and 38 recite “a system embodied
on computer readable storage medium that facilitates notifications,
comprising: …,” the recited components constitute encoded instructions
stored in a computer readable medium. On pages 19 and 20 of Appellants’
Specification, Appellants provide examples of computer-readable media that
include: RAM, ROM, flash memory, DC-ROM, DVD, RF, infrared, and
other wireless media. Therefore, since the broadest reasonable interpretation
of “computer-readable media” covers signals per se, these claims must be
rejected under 35 U.S.C. § 101 as covering non-statutory subject matter. See
In re Nuijten, 500 F.3d 1346, 1356-57 (Fed. Cir. 2007), and Subject Matter
Eligibility of Computer Readable Media, 1351 Off. Gaz. Pat. Office 212
(Feb. 23, 2010).
We also enter a new ground of rejection of claims 27-31 under 35
U.S.C. § 101 as being directed to non-statutory subject matter.
Section 101 of the Patent Act defines patentable subject matter:
“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. The Supreme Court has long
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held that this provision contains an important implicit exception. “‘[L]aws of
nature, natural phenomena, and abstract ideas’ are not patentable.” (Mayo
Collaborative Servs. v. Prometheus Labs., Inc., 132 S.Ct. 1289, 1290 (2012)
(citation omitted).
Claim 27 recites method steps including receiving state information,
dynamically rendering at least one graphical indicia, and presenting the at
least one graphical indicia. Claims 28-31 are dependent upon claim 27.
Each of these method steps is broad enough to read on a mental process.
That is, claim 27 recites abstract thought-processes that may be performed
either entirely in the head of an artisan or with paper and pencil.
Furthermore, we are unable to identify any factors in this record weighing
toward patent eligibility.3
For the foregoing reasons, we conclude that claims 1-9, 11, 12, 27-31,
and 38 are directed to non-statutory subject matter under 35 U.S.C. § 101.

CONCLUSION
The Examiner erred in finding that Yoakum teaches or suggests a
utility component that factors cost to the at least one user associated with
rendering graphical indicia that incorrectly represents the entity’s state
versus benefit to the at least one user of rendering graphical indicia that
correctly represents the entity’s state.

3 See USPTO Interim Guidance for Determining Subject Matter Eligibility
for Process Claims in View of Bilski v. Kappos, 75 Fed. Reg. 43922, Jul. 27,
2010.
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SUMMARY
The Examiner’s decision to reject claims 1-6, 8, 9, 11, 12, 27-31, and
38 is reversed.
We enter new grounds of rejection for claims 1-9, 11, 12, 27-31, and
38 under 35 U.S.C. § 101.
TIME PERIOD
This decision contains new grounds of rejection pursuant to 37 C.F.R.
§ 41.50(b). 37 C.F.R. § 41.50(b) provides "[a] new ground of rejection
pursuant to this paragraph shall not be considered final for judicial review."
37 CFR § 41.50(b) also provides that the appellant, 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 . . . .

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)

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ELD