Ex Parte De Vries

Board of Patent Appeals and Interferences

Sep 29, 2008

09681790 (B.P.A.I. Sep. 29, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte JEAN PIERRE DE VRIES
____________

Appeal 2007-2412
Application 09/681,790
Technology Center 3600
____________

Decided: September 29, 2008
____________

Before HUBERT C. LORIN, ANTON W. FETTING, and
MICHAEL W. O’NEILL, Administrative Patent Judges.

LORIN, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
De Vries (Appellant) seeks our review under 35 U.S.C. § 134 of the
final rejection of claims 1-23. We have jurisdiction under 35 U.S.C. § 6(b)
(2002).
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SUMMARY OF DECISION
We AFFIRM and ENTER A NEW GROUND OF REJECTION
PURSUANT TO 37 C.F.R. § 41.50(b) (2007).1

THE INVENTION
The Appellant’s claimed invention is “related to a system and method
for automatically sharing matched or common interests between at least two
entities while ensuring that non-shared interests are not disclosed or shared.”
(Specification [0002]). The invention is more easily understood from
reading the following example reproduced from the Specification.
One example of determining whether separate entities
have matched interests is embodied in buyer/seller relationship
where the seller does not wish to disclose his or her entire
inventory or prices for items in the inventory, and where the
buyer is only interested in certain items within a certain price
range. In this example, interests are considered to consist of an
object/price pair. Consequently, the seller will specify a price
or price range for each object in his inventory. This
information, i.e., the seller’s set of interests, is then stored in a
seller accessible computer readable medium. Further, the buyer
will likewise specify a price or price range for each object that
he or she is interested in acquiring. Again, this information,
i.e., the buyer’s set of interests, is then stored in a buyer
accessible computer readable medium. The seller’s set of
interests is then automatically compared to the buyer’s set of
interests using the turnwise partial disclosure method described
above to determine whether the buyer is interested in
purchasing any object that the seller may have to sell at a price
that the seller is willing to sell the object for.

1 Our decision will make reference to Appellant’s Appeal Brief (“App. Br.,”
filed Jul. 29, 2005) and Reply Brief (“Reply Br.,” filed Feb. 13, 2006), and
the Examiner’s Answer (“Answer,” mailed Dec. 5, 2005).
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(Specification [0048]). The “turnwise partial disclosure method” referred to
in the passage above is explained this way: first, the interests in each set of
interests are represented by a string of at least one character or bit or
encoded. (Specification [0044]). “[I]n one embodiment, the encoding
scheme uses a conventional one-way hash . . . to prevent a determination of
any interests from partially disclosed interests.” (Specification [0044]).
Then the string of bits are compared to determine whether the strings match.
(Specification [0045]).
In one embodiment, as soon as the comparison indicates that
the hashed interest of a first entity does not match any other hashed
interest of any other entity, the comparison is terminated with respect
to the hashed interest being compared. For example, in the case of
single bit or character comparisons, as soon as one bit or character of
an interest of a first entity does not match any other interests of any
other entity, the comparison is terminated with respect to the interest
being compared. Consequently, where the comparison is terminated,
the interest being compared is not completely disclosed. However,
the comparison continues for as long as each hashed interest, or each
bit or character continues to partially match one or more interests of
another entity, with hashes, partial hashes bits, or characters being
disclosed only to those entities where there is a continuing partial
match.
(Specification [0046]). The Specification illustrates encoding and
comparison equations which can be used in exemplary turn-based systems.
(See Specification [0066] to [0086]).

THE REJECTION
The Examiner relies upon the following as evidence of
unpatentability:
Shear US 6,112,181 Aug. 29, 2000
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Hilsenrath US 5,926,812 Jul. 20, 1999

The following rejection is before us for review:
Claims 1-23 are rejected under 35 U.S.C. § 103(a) as unpatentable
over Shear and Hilsenrath.

ISSUE
The issue before us is whether the Appellant has shown that the
Examiner erred in rejecting claims 1-23 as unpatentable over Shear and
Hilsenrath. This issue turns on whether the prior art would have led one
having ordinary skill in the art to progressively compare interests and make
partial matches.

FINDINGS OF FACT
We find that the following enumerated findings of fact (FF) 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 Office).
Claim construction
1. Claim 1 is drawn to a “system” but otherwise describes method
steps.
2. The first step of claim 1 calls for a “progressively comparing each
interest in each set of interests to interests in every other set of
interests.” (Emphasis added).
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3. The Specification does not provide a definition for “interests.”
However, the Specification describes an embodiment whereby a
user may enter “any desired characters, words, phrases, numbers,
etc. for representing interests” [0043]. Accordingly, “interests” are
data representing an expression of a feeling about something. Cf.
Webster’s New World Dictionary 703 (3rd Ed. 1988.)(Entry 6a) for
“interest”): “a feeling of intentness, concern, or curiosity about
something.”
4. The Specification does not provide a definition for “progressively
comparing.” The ordinary and customary meaning of
“progressive” is “continuing by successive steps.” (See Webster’s
New World Dictionary 1075 (3rd Ed. 1988.)(Entry 2 for
“progressive.”) Accordingly, “progressively comparing” broadly
covers comparing by successive steps.
5. The first step is not tied to a machine and could be performed
wholly by a mental step.
6. The second step of claim 1 calls for “analyzing the results of the
progressive comparison for determining whether any interests
belonging to any set of interests partially matches any interests in
any other set of interests.” (Emphasis added).
7. The Specification does not provide a definition for “partially
matches.” The ordinary and customary meaning of “partially” is
“not complete[ly] or total[ly].” (See Webster’s New World
Dictionary 985 (3rd Ed. 1988.)(Entry 2 for “partial.”) Accordingly,
“partially matches” in the context of the claim broadly covers
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matching data representing feelings about something which do not
completely or totally match data representing another feeling about
something.
8. Data representing feelings about something which completely or
totally match another data representing a feeling about something
partially match each other.
9. The second step is not tied to a machine and could be performed
wholly by a mental step.
10. The third step of claim 1 calls for “terminating the progressive
comparison for specific interests with respect to each set of
interests wherein the specific interests do not partially match any
interests; continuing the progressive comparison for specific
interests with respect to each set of interests wherein the specific
interests do partially match any interests.”
11. The third step is not tied to a machine and could be performed
wholly by a mental step.
12. The fourth step of claim 1 calls for “determining all shared
interests between any of the at least two sets of interests by
continuing the progressive comparison of interests to identify all
interests belonging [sic] any set of interests that completely match
interests in any other set of interests.”
13. The fourth step is not tied to a machine and could be performed
wholly by a mental step.
14. Claim 10 is directed to a “computer-implemented process.” The
claimed process provides for a step of “encoding each interest for
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each set of interests,” a step which describes a function to be
performed by a computer. The remaining steps are not tied to a
machine and could be performed wholly by mental steps.
15. Claim 17 is directed to a computer-readable medium having
computer executable instructions. The subject of those instructions
generally track the steps set forth in claims 1 and 10 and, apart
from their formulation as instructions, the steps could be
performed wholly by mental steps.
The scope and content of the prior art
16. Shear relates to systems for matching, e.g., electronic matchmaker.
(See col. 10). Shear is particularly concerned with electronic rights
management.
17. Shear seeks to describe techniques for matching, for example,
people with information. (Col. 2, ll. 64-66).
18. Shear seeks to describe a classifying and matching system
designed to effectively provide an entity with desired information.
(Col. 8, ll. 10-25).
19. Shear describes an electronic matchmaker which matches
specifically tailored interests. For example, “[t]he electronic
matchmaker in accordance with these inventions can learn about
what Harry and Tim each like, and can provide information to a
publisher so the publisher can narrowcast a newspaper or other
publication customized for each of them.” (Col. 10, ll. 45-59).
“Across the full range of personal and business activities, the
present inventions allow a degree of basic efficiency, including
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automation and optimization of previously very time consuming
activities, so that interests and possible resources are truly bets
matched.” (Col. 13, ll. 4-8).
20. Shear describes its system as having the capability to match
interests between entities. (E.g., see col. 16, ll. 31-54).
21. Col. 60, ll. 55-67 of Shear states:
Businesses and other organizations may be concerned with
privacy and confidentiality regarding information and/or
services used within the company. This concern may be
manifest regardless of whether the information and/or services
originated inside and/or outside the organization. Thus some
organizations may have strong incentives to take advantage of
the present inventions by operating a distributed matching and
classification utility 900 to provide matching and classification
services within the enterprise while at the same time
maintaining a higher degree of confidentiality and privacy by
selecting and/or limiting the nature, range, and detail of
information sent outside the organization.

22. Hilsenrath relates to a computer-implemented method for
comparing documents, extracting entries therefrom, and generating
sets of extracted entries and corresponding them to word clusters,
in an effort to provide fast and accurate searches to identify
documents of interest.
Any differences between the claimed subject matter and the prior art
23. The claimed subject matter combines steps and elements separately
disclosed in the prior art.
The level of skill in the art
24. Neither the Examiner nor the Appellant has addressed the level of
ordinary skill in the pertinent art of automatically sharing matched
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or common interests between at least two entities. We will
therefore consider the cited prior art as representative of the level
of ordinary skill in the art. See Okajima v. Bourdeau, 261 F.3d
1350, 1355 (Fed. Cir. 2001) (“[T]he absence of specific findings
on the level of skill in the art does not give rise to reversible error
‘where the prior art itself reflects an appropriate level and a need
for testimony is not shown’”) (Quoting Litton Indus. Prods., Inc. v.
Solid State Sys. Corp., 755 F.2d 158, 163 (Fed. Cir. 1985)).
Secondary considerations
25. There is no evidence on record of secondary considerations of non-
obviousness for our consideration.

PRINCIPLES OF LAW
“Section 103 forbids issuance of a patent when ‘the differences
between the subject matter sought to be patented and the prior art are such
that the subject matter as a whole would have been obvious at the time the
invention was made to a person having ordinary skill in the art to which said
subject matter pertains.’” KSR Int'l Co. v. Teleflex Inc., 127 S. Ct. 1727,
1734 (2007). The question of obviousness is resolved on the basis of
underlying factual determinations including (1) the scope and content of the
prior art, (2) any differences between the claimed subject matter and the
prior art, and (3) the level of skill in the art. Graham v. John Deere Co., 383
U.S. 1, 17-18 (1966). See also KSR, 127 S. Ct. at 1734 (“While the
sequence of these questions might be reordered in any particular case, the
[Graham] factors continue to define the inquiry that controls.”) The Court
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in Graham further noted that evidence of secondary considerations “might
be utilized to give light to the circumstances surrounding the origin of the
subject matter sought to be patented.” 383 U.S. at 17-18.

ANALYSIS
Rejection of claims 1-23 as unpatentable over Shear and Hilsenrath.
Claims 1-9
The Appellant argued claims 1-9 as a group (App. Br. 8). We select
claim 1 as the representative claim for this group, and the remaining claims
2-9 stand or fall with claim 1. 37 C.F.R. § 41.37(c)(1)(vii) (2007). Claim 1
reads as follows:
1. A system for determining shared
interests between at least two sets of interests,
comprising:
progressively comparing each interest in
each set of interests to interests in every other set
of interests;
analyzing the results of the progressive
comparison for determining whether any interests
belonging to any set of interests partially matches
any interests in any other set of interests;
terminating the progressive comparison for
specific interests with respect to each set of
interests wherein the specific interests do not
partially match any interests; continuing the
progressive comparison for specific interests with
respect to each set of interests wherein the specific
interests do partially match any interests; and
determining all shared interests between any
of the at least two sets of interests by continuing
the progressive comparison of interests to identify
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all interests belonging [sic, to] any set of interests
that completely match interests in any other set of
interests.
The Examiner found that Shear discloses all of the steps of claim 1 except
that “Shear does not explicitly teach continuing the progressive comparison
for specific interests with respect to each set of interests wherein the specific
interests do partially match any interests.” (Answer 4). The Examiner relied
on the teaching in Hilsenrath of “a comparison method for specific interests
with respect to each set of interests wherein the specific interests do partially
match any interests (Figures 1-5 and associated text; columns 4-13)” (Id.)
and determined that it would have been obvious “to combine Shear’s system
and method for matching with Hilsenrath’s cluster generation and cluster
similarity measurement to achieve a more accurate search result or
comparison match, as per teachings of Hilsenrath.” (Answer 5).
The Appellant has challenged the prima facie case on two grounds:
(1) the meaning of the term “value chains” in Shear is different than the one
the Examiner appears to be giving it and (2) neither Shear nor Hilsenrath
disclose partial disclosure of interests.
The Appellant’s first argument concerns the meaning to be given the
term “value chain” as used in Shear. (App. Br. 8-14). The reason for this
argument is not clear to us. As best we understand it, this part of the
Appellant’s argument against the Examiner’s reliance on Shear as evidence
that Shear discloses progressive comparison of individual interests. The
Examiner relied upon the disclosure in Shear at col. 14, ll. 12-26; Figs. 16A-
C and associated text; and col. 8, l. 26 – col. 30, l. 50. (See Answer 4).
Within these passages, Shear mentions “value chain” certificates as an
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example of a criteria on which matching can be based. (See e.g., col. 13, ll.
58-62). But based on our review of the record, the Examiner’s position that
Shear discloses progressive comparison of individual interests does not
depend on Shear’s disclosure of “value chains.” The disclosure in Shear to
which the Examiner refers is replete with teachings of matching interests.
(See e.g., col. 14, ll. 25-26) (“matching … between the interests of any of
such parties”). Shear also suggests progressive comparison of interests. For
example, Shear lists numerous techniques for classifying of interests which
may form a step precedent to the matching of interests between entities. See
col. 21, l. 20 – col. 22, l. 50 where estimation and statistical methods are
described. These successive classifying of the entities’ interests necessarily
effects a successive comparing of their interests so that an effective
matching of the interests is accomplished. Notwithstanding the disclosure of
“value chains,” Shear nevertheless supports the Examiner’s position. We
find it unnecessary to address the meaning one of ordinary skill in the art
should give the term “value chains” as used in Shear.
As to Mr. Shear’s testimony before the United States Senate Judiciary
Committee on April 3, 2001 (see discussion beginning at App. Br. 10), not
only is it not germane to the prosecution of this patent application before the
U.S. Patent and Trademark Office, it is new evidence that does not appear to
have been entered and thus its presence in the Brief violates the rules. See
Office communication mailed Jun. 24, 2005. Rule 41.37(c)(1)(ix) states that
“[r]eference to unentered evidence is not permitted in the brief.” Also, Rule
41.37(c)(2) states “[a] brief shall not include any new or non-admitted
amendment, or any new or non-admitted affidavit or other evidence.”
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Finally, Rule 41.33(d)(2) provides that evidence filed after the date of filing
an appeal will not be admitted except as permitted by sections 41.39(b)(1)
(reopening prosecution in response to a new ground in Examiner’s Answer),
41.50(a)(2)(i) (reopening prosecution in response to a supplemental
examiner’s answer) and 41.50(b)(1) (reopening prosecution in response to a
new ground in Board’s decision). Accordingly, we will not treat the merits
of the Appellant’s argument (App. Br. 8-14) in light of this evidence.
The Appellant’s second argument is that the Examiner has not shown
progressive comparison of individual interests which involves a progressive
partial disclosure of specific interests. (Emphasis added.) (See App. Br. 14-
20; see e.g., App. Br. 15: “failure of either Shear or Hilsenrath to teach, or
in any way describe, the Appellant’s claimed element relating to partial
disclosure of information”). This alleged distinction over the partial
disclosure of interests is the basis for challenging the applicability of not just
Shear, but Hilsenrath as well. However, this cannot be a persuasive
challenge as to error in the rejection because the claim nowhere mentions
disclosure of any interest. We do not agree with the Appellant’s
construction of the claim that “partial disclosures of interests” is inherent to
the claimed system. (See Reply Br. 3-7). There is simply nothing in the
claim which necessarily involves disclosure of any interest, let alone a
partial disclosure. The claim is directed to a system for determining shared
interests, not disclosing them. Simply because shared interests are
determined does mean they are disclosed or will be disclosed, whether fully
of partially. “Many of appellant’s arguments fail from the outset because,
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. . . they are not based on limitations appearing in the claims . . . .” In re
Self, 671 F.2d 1344, 1348 (CCPA 1982).
Accordingly, we do not find the Appellant’s arguments persuasive as
to error in the rejection and thus we will sustain it.

Claims 10-16
The Appellant argues claims 10-16 as a group (App. Br. 21). We
select claim 10 as the representative claim for this group, and the remaining
claims 11-16 stand or fall with claim 10. 37 C.F.R. § 41.37(c)(1)(vii)
(2007). Claim 10 reads as follows:
10. A computer-implemented process for
automatically determining whether unique entities
have any matched interests without disclosing non-
matched interests, comprising:
providing a set of interests for each entity;
encoding each interest for each set of
interests;
partially disclosing each encoded interest in
each set of interests to each unique entity;
automatically performing a comparison of
each partially disclosed encoded interest with the
partially disclosed interests in each other set of
interests;
determining whether there is a partial match
of interests between the partially disclosed
interests of any unique entities;
continuing to automatically perform the
partial comparison of each encoded interest for
specific interests for as long as there is a partial
match of the specific interests between any unique
entities; and
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automatically identifying interest matches between any
unique entities through the continued automatic partial
comparison of each encoded interest.
The Appellant’s challenge to the rejection of claim 10 begins by
incorporating the arguments made against claim 1. (App. Br. 21). Since we
found them unpersuasive as to error in the rejection of claim 1, we find
likewise with respect to claim 10.
The remaining challenge repeats the argument made with respect to
claim 1 in that the claimed subject matter distinguishes from that of the prior
art for requiring “partially disclosing” interests. (App. Br. 21-24). Whereas
this argument was not persuasive as to the rejection of claim, for the
foregoing reasons, this argument has relevance to claim 10 because claim 10
expressly includes as step of partially disclosing interests.
In that regard, the Examiner initially relied on col. 27 of Shear as
evidence that the prior art discloses this step. (Answer 6). In response, the
Appellant recognized that in col. 27, ll. 8-9, Shear explains that its invention
is capable of “‘delivery of portions of said control information from one or
more sources. ’” (App. Br. 25)(Emphasis original). According to the
Appellant, this disclosure refers to control information that the VDE
(“virtual distribution environment”; see Shear, col. 23, l. 9) uses to
determine matches. “The ability of the Shear reference (see col. 23, ll. 9-11)
to retrieve “portions” of its “control information” from various sources for
modifying how the “virtual distribution environment” will determine
matches has nothing whatsoever to do with the partial revealing of interests,
and comparing of the partially revealed interests disclosed and claimed by
the Appellant.” (App. Br. 25). The Examiner responded by adding that
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Shear also describes examples whereby partial disclosures are effected.
(Answer 11-12). “In an example provided by Shear, partial disclosure of
interests is used to maintain a high degree of confidentiality and privacy by
selecting and/or limiting the nature, range and detail of information sent
between parties in an organization (column 60, lines 53-67).” (Answer 12).
The Appellant has not disputed this. Rather the Appellant argued that, in
contrast to the claimed method, Shear fails to keep a full disclosure of non-
matched interests to an entity. (Reply Br. 15-21).
We do not find the Appellant’s argument persuasive as to error in the
rejection. We find that the disclosure at col. 60, lines 53-67, of Shear would
suggest to one of ordinary skill in the art to partially disclose interests,
especially where confidentiality and privacy is concerned. As to whether
Shear fails to keep a full disclosure of non-matched interests to an entity, we
are unable to see the significance of that failure, assuming Shear does in fact
fail to do so. Nowhere in claim 10 is there any mention of preventing the
disclosing of non-matched interests to an entity. The Appellant’s argument
is not commensurate in scope with what is claimed and is thus not
persuasive as to error in the rejection. Accordingly, we will sustain the
rejection.

Claims 17-23
The Appellant argues claims 17-23 as a group (App. Br. 24). We
select claim 17 as the representative claim for this group, and the remaining
claims 18-23 stand or fall with claim 17. 37 C.F.R. § 41.37(c)(1)(vii)
(2007).
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The Appellant’s challenge to the rejection of claim 17 is “on the same
basis as provided for the rejection of claim 10.” (App. Br. 24). Since we
found the arguments challenging the rejection of claim 10 unpersuasive as to
error in the rejection of claim 10, we find likewise with respect to claim 17.

New Ground of Rejection
The system claims
Claim 1 presents a series of steps which, were they to have been part
of a claim drafted in method format, would not have presented a statutory
process. We adhere to the rule expressed in Diamond v. Diehr, 450 U.S. 175
(1981), that, at least absent the development of some hitherto unknown type
of technology, “[t]ransformation 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.” 450 U.S. at 184 (quoting Gottschalk v.
Benson, 409 U.S. 63, 70 (1972)), cited with approval in In re Comiskey, 499
F.3d 1365, 1377 (Fed. Cir. 2007). Thus, a method that fails to recite a
transformation of subject matter into a different state or thing would not
qualify as a statutory process. Here, claim 1 includes the generic term
“system” in the preamble of the claim to signify an apparatus. However,
claim 1 does not further define the “system” in any structural aspect. None
the subsequent steps are tied to the preamble. In that respect, the recitation
of the term “system” in the preamble is not necessary to give life, meaning,
and vitality to the claim. See On Demand Machine Corp. v. Ingram
Industries, Inc., 442 F.3d 1331, 1343 (Fed. Cir. 2006) (“In considering
whether a preamble limits a claim, the preamble is analyzed to ascertain
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whether it states a necessary and defining aspect of the invention, or is
simply an introduction to the general field of the claim. In Kropa v. Robie,
38 C.C.P.A. 858, 187 F.2d 150, 152 (1951), the court aptly described the
inquiry as whether the preamble is “‘necessary to give life, meaning and
vitality to the claims or counts.’”) Furthermore, a “system,” per se, is not a
particular machine and does not effect a transformation of any subject matter
of the claim. Were this a method claim, the addition of the term “system”
would add nothing to what would otherwise be a non-statutory method.
“Nominal recitations of structure in an otherwise ineligible method fail to
make the method a statutory process.” Ex parte Langemyr, Appeal No.
2008-1495, slip op. at 20 (BPAI May 28, 2008). As the panel in Langemyr
stated, “[t]o permit such a practice would exalt form over substance and
permit claim drafters to file the sort of process claims not contemplated by
the case law.” Id. We see no difference between a method claim nominally
reciting structure and a “system” claim, like claim 1, that merely recites the
term “system” in the preamble but otherwise describes a non-statutory
method. To hold otherwise would be to exalt form over substance.
Dependent “system” claims 2-9 likewise fail for the same reasons.
None of these dependent claims adds a structural or functional limitation of
a particular machine, nor do they recite a transformation. The limitations of
the dependent claims could be performed solely via mental steps.

The manufacture claims
Independent claim 17 pertains to a computer readable medium having
computer-executable instructions configured to direct a processor to perform
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the steps of a method which steps could otherwise be performed solely via
mental steps. Accordingly, claim 17 pertains to a computer readable
medium that stores computer-executable instructions configured to direct a
processor to perform a non-statutory process. This is analogous to placing
instructions on a computer readable medium wherein the instructions are
designed to implement an algorithm or an abstract idea. There is also no
transformation in the subject matter of claim 17 because the claim merely
recites instructions stored on a computer readable medium. We see no
reason why placing instructions on a computer readable medium that cause a
general purpose computer, when executed, to engage in manipulations of the
sort set forth in claim 1 should be treated any differently than manipulations
of abstract ideas or algorithms. Claims as a whole to an algorithm or an
abstract idea are unpatentable where “[t]he sole practical application of the
algorithm was in connection with the programming of a general purpose
computer.” Diehr, 450 U.S. at 185-86. The statutory status of the claimed
subject matter is not affected by having a non-statutory process stored on
some computer-readable medium. To hold otherwise would be to exalt form
over substance. We also point out that, as with claim 1, the “computer-
readable medium” in the preamble of the claim is not further described in the
body of the claim to any structural extent. None the subsequent steps are
tied to the preamble. In that respect, the recitations in the preamble are not
necessary to give life, meaning, and vitality to the claim.
Dependent “computer-readable medium” claims 18-23 likewise fail
for the same reasons. These dependent claims recite steps which could
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otherwise be performed solely via mental steps. They do not recite a
transformation.
Accordingly, we hold that claims 1-9 and 17-23 are directed to non-
statutory subject matter, and thus we enter a new ground of rejection of these
claims as unpatentable under 35 U.S.C. § 101. We do not include method
claims 10-16 as part of the new ground of rejection because they include the
step of “encoding each interest for each set of interests.” This “encoding”
step cannot be accomplished via a mental step but suggests the use of a
computer. The encoding step and the steps using the encoded data (i.e., the
“interests”) thus tie into the computer described in the preamble of the claim.
Therefore, the preamble of claim 10 is necessary to give life, meaning and
vitality to the claim. Accordingly, we do not find the subject matter of the
method claims to be directed to a non-statutory process.

CONCLUSION
We conclude the Appellant has failed to show that the Examiner erred
in rejecting claims 1-23 under 35 U.S.C. § 103(a) as unpatentable over Shear
and Hilsenrath.

DECISION
The decision of the Examiner to reject claims 1-23 is affirmed.
We enter a new ground of rejection of claims 1-9 and 17-23 under 35
U.S.C. § 101 as being directed to non-statutory subject matter.

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Regarding the affirmed rejection, 37 C.F.R. § 41.52(a)(1) provides
“Appellant may file a single request for rehearing within two months of the
date of the original decision of the Board.”
In addition to affirming the Examiner’s rejection, this decision
contains new grounds of rejection pursuant to 37 C.F.R. § 41.50(b) (2007).
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 C.F.R. § 41.50(b) also provides that Appellant, 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 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. . . .

Should Appellant elect to prosecute further before the Examiner
pursuant to 37 C.F.R. § 41.50(b)(1), in order to preserve the right to seek
review under 35 U.S.C. §§ 141 or 145 with respect to the affirmed rejection,
the effective date of the affirmance is deferred until conclusion of the
prosecution before the Examiner unless, as a mere incident to the limited
prosecution, the affirmed rejection is overcome.
If Appellant elect prosecution before the Examiner and this does not
result in allowance of the application, abandonment or a second appeal, this
Appeal 2007-2412
Application 09/681,790

22
case should be returned to the Board of Patent Appeals and Interferences for
final action on the affirmed rejection, including any timely request for
rehearing thereof.
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) (2007).

AFFIRMED; 37 C.F.R. § 41.50(b)

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