Ex Parte Cummins

Patent Trial and Appeal Board

Dec 5, 2013

11482594 (P.T.A.B. Dec. 5, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte FRED A. CUMMINS
___________

Appeal 2011-012842
Application 11/482,594
Technology Center 3600
____________

Before HUBERT C. LORIN, MEREDITH C. PETRAVICK, and
JOHN W. MORRISON, Administrative Patent Judges.

PETRAVICK, Administrative Patent Judge.

DECISION ON APPEAL
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STATEMENT OF THE CASE
Fred A. Cummins (Appellant) seeks our review under 35 U.S.C. § 134
of the final rejection of claims 1-20. We have jurisdiction under 35 U.S.C.
§ 6(b).

SUMMARY OF DECISION
We AFFIRM-IN-PART and enter a new ground of rejection pursuant
to 37 C.F.R § 41.50(b). 1

THE INVENTION
Claims 1 and 8, reproduced below, are illustrative of the subject
matter on appeal.
1. A method for service-oriented design,
comprising:
performing a role analysis;
performing a services synthesis based on said
role analysis;
performing an organization design based on
said services synthesis; and
transformation planning based on said
organization design to produce a service
oriented transformation plan.

8. A data processing system having at least a processor and
accessible memory, comprising:

1 Our decision will make reference to the Appellant’s Appeal Brief (“App.
Br.,” filed Mar. 23, 2011) and Reply Brief (“Reply Br.,” filed Aug. 9, 2011),
and the Examiner’s Answer (“Ans.,” mailed Jun. 9, 2011).

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means for receiving role analysis data;
means for receiving services data to perform a service[]
synthesis;
means for receiving organization design data; and
means for receiving transformation planning data and to
produce therefrom a service-oriented transformation
plan.

THE REJECTIONS
The Examiner relies upon the following as evidence of
unpatentability:
Hodges
Broomhall
US 2004/0093381 A1
US 2005/0278202 A1
May 13, 2004
Dec. 15, 2005

The following rejections are before us for review:
1. Claim 8 is 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 1-7 are rejected under 35 U.S.C. § 101 as being directed
to non-statutory subject matter.
3. Claims 1-20 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Hodges and Broomhall.

ISSUES
The first issue is whether claim 8 is indefinite because the
Specification fails to describe the corresponding structure for the means-
plus-function limitations.
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The second issue is whether claims 1-7 are directed to non-statutory
subject matter as they encompass an abstract idea.
The third issue is whether claim 1-20 are unpatentable over the
combination of Hodges and Broomhall. Specifically, the issue is whether
the prior art teaches “performing a role analysis” and “performing a services
synthesis based on said role analysis” (Claim 1).

FINDINGS OF FACT
We find that the findings of fact, which appear in the Analysis below,
are supported by at least a preponderance of the evidence. Ethicon, Inc. v.
Quigg, 849 F.2d 1422, 1427 (Fed. Cir. 1988) (explaining the general
evidentiary standard for proceedings before the U.S. Patent and Trademark
Office).

ANALYSIS
The rejection of claim 8 under 35 U.S.C. § 112, second paragraph, as being
indefinite and a new rejection of claims
We are not persuaded by Appellant’s argument (App. Br. 10-11 and
Reply Br. 4-5) that the Examiner erred in rejecting claim 8 under 35 U.S.C.
§ 112, second paragraph, as being indefinite. The Examiner found that,
because the Specification did not describe adequately the corresponding
structure for all four of claim 8’s means-plus-function limitation, the scope
of claim 8 was indefinite. See Ans. 4-5, 14-15.
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Appellant points to ¶¶ [0035], [0040], [0044], and [0051]2 as
describing that each of the recited function “can be performed with an
appropriately programmed ‘data processing system.’” App. Br. 10. The
Appellant also points to a Fig. 1’s memory 108 and processor 102 as
disclosing the hardware that stores and executes the program for performing
the recited programming. Id.
The Federal Circuit has stated that simply disclosing a general
purpose computer as the structure to perform the claimed function does not
meet the corresponding structure requirement of 35 USC § 112 sixth
paragraph. Aristocrat Techs. Austl. Pty Ltd. v. Int’l Game Tech., 521 F3d
1328, 1333 (Fed Cir 2008). Rather, “[T]he corresponding structure for a
§ 112 [paragraph] 6 claim for a computer-implemented function is the
algorithm disclosed in the specification.” Id. (citing Harris Corp. v.
Ericsson Inc., 417 F.3d 1241, 1249 (Fed. Cir. 2005). Here none of ¶¶
[0035], [0040], [0044], and [0051] provides a specific set of instructions or
algorithm for performing the claimed functions (i.e., receiving and
producing). Therefore, we agree with the Examiner that the Specification
describes inadequately the structure corresponding to the means-plus-
function elements of claim 8. The rejection of claim 8 under 35 U.S.C.

2 In the Summary of the Claimed Subject Matter section of the Brief maps
each limitation of claim 8 to ¶ [0008] of the Spec. and to item 100 of Figure
1. App. Br. 7. However, ¶ [0008] does nothing more than repeat claim 8
verbatim, and fig. 1’s item 100 refers to Appellant’s entire data processing
system.
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§ 112, second paragraph, as being indefinite for failing to particularly point
out and distinctly claim the subject matter which Appellant regards as the
invention is affirmed.
Because claims 9-13 each depend upon independent claim 8, we also
conclude that these claims are indefinite under 35 U.S.C. § 112, second
paragraph, for the reasons discussed above. Accordingly, we enter a new
ground of rejection (see 37 C.F.R. § 41.50(b)) on claim 9-13 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.

The rejection of claims 1-7 under 35 U.S.C. § 101 as being directed to non-
statutory subject matter
We are not persuaded by Appellant’s argument (App. Br. 11-13 and
Reply Br. 5-7) that the Examiner erred in rejecting claim 1 under 35 U.S.C.
§ 103(a) as being directed to non-statutory subject matter. The Examiner
found that claim 1 fails the machine-or-transformation test, as claim 1 does
not recite any particular machine or transformation of a particular article.
See Ans. 5-7 and 15-16. We agree with the Examiner.
Notwithstanding that this test for determining patent eligibility of a
process is unduly narrow under Bilski v. Kappos, 130 S. Ct. 3218 (2010), it
can nevertheless be instructive as a factor in determining whether the
claimed processes are patent-ineligible abstract ideas. Appellant does not
dispute the Examiner’s finding that claim 1 recites neither a particular
machine nor a transformation of a particular article (see App. Br. 11-13 and
Reply Br. 5-7), and that the Appellant does not provide any other arguments
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or reason as to why claim 1 recites statutory subject matter other than to
asserts claim 1 “is clearly not a law of nature, a physical phenomenon or an
abstract idea” (Reply Br. 6; see also App. Br. 13.). Therefore, we find
Appellant’s argument unpersuasive.
Further, we note that the claim 1 seems be to made up of mere
concepts: 1) perform a role analysis (e.g., define a requirement for a
participant to achieve a particular result (Spec. ¶ [0027])); 2) perform a
service synthesis based on the role analysis (e.g., define a service that fulfills
similar roles (Spec. ¶ [0036])); 3) performing an organization design based
on said service synthesis (e.g., grouping services into organizations (Spec.
¶ [0042])); and 4) transformation planning based on said organization design
to produce a service oriented transformation plan (e.g., mapping the defined
services to the existing organization (Spec. ¶ [0046])). The claim is nothing
more than a concept of how to organize an enterprise. The claim covers any
use of this concept known and unknown. The claim could be performed by
any means, existing or future-devised. In the words of Gottschalk v. Benson,
409 U.S. 63 (CCPA 1972), the claimed processes would wholly preempt this
concept and “in practical effect would be a patent on the [concept] itself.”
Id. at 72.
Appellant does not provide separate arguments for dependent claims
2-7 and, therefore, these claims will stand or fall with claim 1 (see 37 C.F.R.
§ 41.37(c)(1)(vii)). Accordingly, the rejection of claims 1-7 under 35 U.S.C.
§ 101 as being directed to non-statutory subject matter is affirmed.

Further, claims 14-20 recite “[a] computer program product tangibly
embodied in a machine readable storage medium” that includes instructions
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for performing the method of claim 1. As discussed supra, we found the
method claim 1 encompasses an abstract idea. Independent claims 14-20
track closely the subject matter of claim 1 and additional require a “machine
readable storage medium.” We find that the recitation of an article to be
nominal and that claim 14 is not “truly drawn to a specific computer
readable medium, rather than to the underlying method” (CyberSource Corp.
v. Retail Decisions, Inc., 654 F.3d 1366, 1374-75 (internal quotation marks
omitted)). See also CLS Bank Int’l v. Alice Corp. Pty. Ltd., 717 F.3d 1269
(Fed. Cir. 2013); Dealertrack, Inc. v. Huber, 674 F.ed 1312 (Fed. Cir. 2012);
Fort Properties, Inc. v. American Master Lease LLC, 671 F.3d 1317 (Fed
Cir. 2012).
Accordingly, we enter a new ground of rejection (see 37 C.F.R.
§ 41.50(b)) on claims 14-20 under 35 U.S.C. § 101 as being directed to non-
statutory subject matter.

The rejection of claims 1-20 under §103(a) as being unpatentable over
Hodges and Broomhall
Claims 1-7
We are persuaded by Appellant’s argument (App. Br. 7-12 and Reply
Br. 7-14) that the Examiner erred in rejecting claims 1-20 under 35 U.S.C.
§103(a) as being unpatentable over Hodges and Broomhall. We agree with
the Appellant that the Examiner errs in relying upon Hodges cataloging of
resources as both the claimed “performing a role analysis” and “performing
a services synthesis based on said role analysis” (Claim 1, emphasis added).
Reply Br. 7-12.
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To teach the role analysis, the Examiner cites, in pertinent part, to
Hodge’s ¶ [0024]. Paragraph [0024] describes the creation of a
ServiceMeter profile 18 that includes a service level agreement (¶ [0028]).
See Ans. 8, 14. To teach the service synthesis, the Examiner cites, in
pertinent part, to Hodges ¶ [0049]. Paragraph [0049] describes a service
creation platform 201 that automatically populates the ServiceMeter profile.
In the rejection that Examiner asserts that the service synthesis is based on
the role analysis because ¶ [0009] describes reviewing service properties for
compliance with a service level agreement. Ans. 8, 14. As the Appellant
argues (Reply Br. 7-12), the Examiner seems to be relying upon the creation
of the ServiceMeter profile, which includes the service level agreement, as
both the role analysis and the service synthesis.
Finally, we note that the Examiner does not rely upon Broomhall to
cure these deficiencies of Hodges.
Accordingly the rejection of claim 1, and claims 2-7, dependent
thereon, under 35 U.S.C. § 103(a) as being unpatentable over Hodges and
Broomhall is reversed.

Claims 8-13
Because we find that claims 8-13 are indefinite under 35 U.S.C. §112,
second paragraph, we pro forma reverse the Examiner’s obviousness
rejections of claims 8-13. The claims on appeal must be reasonably
understood without resort to speculation. Presently, speculation and
conjecture must be utilized as the claims on appeal do not adequately reflect
what the disclosed invention is. See In re Steele, 305 F.2d 859, 862 (CCPA
1962) (A prior art rejection cannot be sustained if the hypothetical person of
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ordinary skill in the art would have to make speculative assumptions
concerning the meaning of claim language.).

Claims 14-20
Independent claim 14 contains limitations similar to claim 1. For the
same reasons as provided for the rejection of claim 1 above, we find that the
Examiner has not established a prima facie case of obviousness of claim 14
or its dependent claims 15-20. Accordingly, the rejection of claim 14, and
claims 15-20, dependent thereon, under 35 U.S.C. § 103(a) as being
unpatentable over Hodges and Broomhall is reversed.

DECISION
The decision of the Examiner to reject claims 1-8 and 14-20 is
affirmed and to reject claims 9-13 is reversed.
The decision contains new grounds of rejection 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.”
37 C.F.R. § 41.50(b) also provides that Appellant, WITHIN TWO
MONTHS FROM THE DATE OF THIS 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 prosecution
will be remanded to the Examiner. . . .
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(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). See 37 C.F.R.
§ 1.136(a)(1)(iv).

AFFIRMED-IN-PART; 37 C.F.R. 41.50(b)

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