Ex parte Donner

Board of Patent Appeals and Interferences

Mar 26, 1999

08161816 (B.P.A.I. Mar. 26, 1999)

Application for patent filed December 6, 1993, entitled1
"Intellectual Property Audit System."
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THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered
today (1) was not written for publication in a law
journal and (2) is not binding precedent of the Board.
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Paper No. 34
UNITED STATES PATENT AND TRADEMARK OFFICE
__________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte IRAH H. DONNER
__________
Appeal No. 96-2552
Application 08/161,8161
__________
ON BRIEF
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Before HARKCOM, Vice Chief Administrative Patent Judge, and
JERRY SMITH and BARRETT, Administrative Patent Judges.
BARRETT, Administrative Patent Judge.
DECISION ON APPEAL
Appeal No. 96-2552
Application 08/161,816
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This is an appeal under 35 U.S.C. § 134 of the final
rejection of claims 1, 3-8, 10-12, 14-16, 18, 19, and 21-27.
Claims 2, 9, 13, 17, and 20 have been canceled. The amendment
after final received March 24, 1995 (Paper No. 14), and the
amendment after final received March 28, 1996 (Paper No. 23),
have not been entered.
We reverse.
BACKGROUND
The disclosed invention is directed to an apparatus and
computer-implemented process to automatically determine an
estimated value of an intellectual property portfolio.
Claim 11 reads as follows:
11. A computer-implemented intellectual property
method for automatically determining a machine
implemented estimated value of an intellectual property
portfolio, comprising the steps of:
(a) storing first objectively determinable
characteristics of representative intellectual property
portfolios and objectively determinable values
corresponding to each of the representative intellectual
property portfolios, the first objectively determinable
characteristics and the objectively determinable values
forming a baseline against which to assess the estimated
value of the intellectual property portfolio;
(b) analyzing the intellectual property portfolio
stored in an intellectual property database to determine
second objectively determinable characteristics of the
intellectual property portfolio to be estimated;
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Application 08/161,816
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(c) deriving first information representing the
second objectively determinable characteristics of the
intellectual property portfolio to be estimated
responsive to said analyzing step (b) and generating a
first electrical signal indicative of the first
information;
(d) retrieving second information representing the
first objectively determinable characteristics and the
objectively determinable values of the representative
intellectual property portfolios and generating a second
electrical signal indicative of the second information;
and
(e) comparing the first signal indicative of the
first information received from said deriving step (c) to
the second signal indicative of the second information
received from said retrieving step (d) producing an
estimated value electrical signal indicating the
estimated value of the intellectual property portfolio
when the first information of the intellectual property
portfolio is statistically similar to the second
information of one of the representative intellectual
property portfolios,
wherein the intellectual property database includes
one of a patent database, a trademark database, and a
copyright database, and the intellectual property
database further includes one of a legal reporter
database, a current events database and an intellectual
property status database.
The examiner does not rely on any prior art references.
Claims 1, 3-8, 10-12, 14-16, 18, 19, and 21-27 stand
rejected under 35 U.S.C. § 101 as being directed to
nonstatutory subject matter, in particular, to a method of
doing business. The application was remanded by order entered
Appeal No. 96-2552
Application 08/161,816
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July 10, 1995 (Paper No. 26), to reconsider the rejection
under 35 U.S.C. § 101 in view of proposed Patent and Trademark
Office (PTO) guidelines which issued as Examination Guidelines
for Computer-Related Inventions, 1184 Off. Gaz. Pat. &
Trademark Office 87 (March 26, 1996). The examiner maintained
the rejection "since there is no practical application having
a physical transformation in the industrial arts" ([Second]
Sup. Examiner's Answer, Paper No. 28, page 1). The examiner
states that "the gist of the overall invention resides in the
abstract idea for business financial
calculations/determinations (e.g. to estimate the value) which
lacks the required physical transformation in the industrial
arts for a practical application" (EA2). The examiner relies
on the business methods analysis in the district court's
decision in State Street Bank & Trust Co. v. Signature
Financial Group Inc., 38 USPQ 1530 (D. Mass. 1996), rev'd and
remanded, 149 F.3d 1368, 47 USPQ2d 1596 (Fed. Cir. 1998).
We refer to the Examiner's Answer (Paper No. 18), the
Supplemental Examiner's Answer (Paper No. 25), and the
[Second] Supplemental Examiner's Answer (Paper No. 28) for a
statement of the examiner's position and to the Appeal Brief
Appeal No. 96-2552
Application 08/161,816
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(Paper No. 17), the Reply Brief (Paper No. 19), and the
Supplemental Reply Brief (Paper No. 21) for a statement of
appellant's position.
OPINION
The Federal Circuit recently held that there is no
special "business method" exception to § 101. State Street,
149 F.3d at 1375-77, 47 USPQ2d at 1602-04, 1998). For this
reason alone the examiner's rejection must be reversed based
on superseding case law. In addition, however, we have
several other comments regarding the rejection.
First, the examiner does not come to grips with the
apparatus nature of independent claims 1, 26, and 27. Claims
in apparatus form conventionally fall into the 35 U.S.C. § 101
statutory category of a "machine." The exceptions to § 101,
such as mathematical algorithms per se and "business methods"
(to the extent such an exception was recognized before State
Street), applied to "processes" under § 101 because processes
are abstract in the sense that they do not have to be
performed with any particular apparatus. To the best of our
knowledge, only apparatus claims drafted in means-plus-
function language under § 112, sixth paragraph, were ever
Appeal No. 96-2552
Application 08/161,816
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treated as process claims. Claims 1 and 26 are not in means-
plus-function format. Appellant's independent claim 1 is
directed to "An intellectual property computer-implemented
system" and independent claim 26 is directed to "A computer
architecture." The claims include specific computer
components. For example, claim 1 recites "a first database,"
"a database access and collection device connected to be
responsive to said first database and accessing said first
database," "a second database," and "a comparison device
connected to be responsive to said database access and
collection device and to said second database." Claims 1 and
26 are drafted as "machine" claims and the examiner has not
explained how such claims could be treated as a process under
the relevant case law. Consequently, this is another reason
why the rejection of claims 1, 3-8, 10, 21-23, and 26 is
reversed.
Claim 27 is drafted in means-plus-function format. The
treatment of "means" claims as process claims has been
modified by State Street. The district court in State Street
construed the claims to be directed to a process, with each
"means" clause merely representing a step in that process.
Appeal No. 96-2552
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The Federal Circuit stated, 149 F.3d at 1371, 47 USPQ2d at
1599: "However, 'machine' claims having 'means' clauses may
only be reasonably viewed as process claims if there is no
supporting structure in the written description that
corresponds to the claimed 'means' elements." The Federal
Circuit stated that independent claim 1, when properly
construed under 35 U.S.C. § 112, sixth paragraph, is a
machine. Claim 1 is set forth in the decision with "the
subject matter in brackets stating the structure the written
description discloses as corresponding to the respective
'means' recited in the claims," 149 F.3d at 1371, 47 USPQ2d at
1599. As will be shown, the Federal Circuit's decision
appears to substantially limit the treatment of "means" claims
as process claims.
At issue in State Street was U.S. Patent 5,193,056,
issued to Boes, and assigned to Signature Financial Group,
Inc. The only structure disclosed in the Boes patent was "a
personal computer 44 programmed with software 50" (col. 6,
line 49). "The personal computer 44 used by portfolio/fund
accountant 43 is capable of producing printed output 46 and
storing data on data disk 52, which preferably is a floppy
Appeal No. 96-2552
Application 08/161,816
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disk, although other types of storage media may be used."
(Col. 6, lines 52-56.) The personal computer has a cathode
ray tube (CRT) display (col. 7, line 60) and a way
(undisclosed, but conventionally a keyboard) to allow a user
to manually enter data (col. 8, lines 53-58). The Federal
Circuit construed the "computer processor means" in claim 1 as
a personal computer including a CPU", construed "first means
for initializing the storage medium" as "an arithmetic logic
circuit configured to prepare the data disk to magnetically
store selected data," and second, third, fourth, and fifth
means as the arithmetic logic circuit configured to perform
the various functions. Thus, although Boes did not describe
the internal structure of the computer as having a CPU and
arithmetic logic circuit, or the correspondence to the claimed
means, this conventional computer structure was considered to
be the structure corresponding to the claimed means. Claim 1
was not treated as a process claim despite the fact that Boes
did not describe any particular kind of computer. The Federal
Circuit's treatment of "means" claims is consistent with the
decision in In re Alappat, 33 F.3d 1526, 1541, 31 USPQ2d 1545,
1555 (Fed. Cir. 1994) (in banc) in which claims in means-plus-
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function language which read on both special disclosed
computer structure and on a general purpose computer were held
to be statutory as a machine. Therefore, it now appears that
"means" claims will not be treated as process claims even if
the only structure disclosed is a general purpose computer.
For this additional reason, claim 27 is considered within the
§ 101 statutory class of a "machine" and the rejection of
claim 27 is reversed.
Second, process claim 11 recites a "computer-implemented
intellectual property method" which performs the steps of
"storing," "analyzing," "deriving," "retrieving," and
"comparing," which are all physical method steps carried out
by the computer. In addition, the "generating a first
electrical signal indicative of the first information,"
"generating a second electrical signal indicative of the
second information," "comparing the first signal . . . to the
second signal," and "producing an estimated value electrical
signal indicating the estimated value" all require a physical
electrical signal. This is unlike "signals" in nonstatutory
claims which "may represent either physical quantities or
abstract quantities." In re Walter, 618 F.2d 758, 770,
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Application 08/161,816
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205 USPQ 397, 409 (CCPA 1980). It appears from the examiner's
arguments that the examiner did not afford any weight to the
physical aspects of the claims. Nevertheless, since we
reverse the rejection for other reasons, it is not necessary
to decide the case on this issue.
Third, the analysis that the claims do not recite a
"practical application having a physical transformation in the
industrial arts" ([Second] Sup. Examiner's Answer, page 1) has
been modified by State Street. The Federal Circuit noted that
a "practical application" was "a useful, concrete and tangible
result." State Street, 149 F.3d at 1373, 47 USPQ2d at
1600-01. The Court further stated, id., 47 USPQ2d at 1601:
Today, we hold that the transformation of data,
representing discrete dollar amounts, by a machine
through a series of mathematical calculations into a
final share price, constitutes a practical application of
a mathematical algorithm, formula, or calculation,
because it produces "a useful, concrete and tangible
result"--a final share price momentarily fixed for
recording and reporting purposes and even accepted and
relied upon by regulatory authorities and in subsequent
trades.
Although this statement is made with respect to mathematical
calculations, it is manifestly intended to apply to the
analysis of other "abstract ideas." Thus, a "process" no
longer requires a physical transformation of something to a
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Application 08/161,816
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different state or thing: transformation of data is
sufficient if it produces "a useful, concrete and tangible
result." This reasoning appears intended to be broadly
construed. The claimed results of "determining the estimated
valued of the intellectual property portfolio" (claims 1, 26,
and 27) and "indicating the estimated valued of the
intellectual property portfolio" (claim 11) all seem to be "a
useful, concrete and tangible result" and, hence, a practical
application which renders the claimed subject matter
statutory. For this additional reason, the rejection of
claims 1, 3-8, 10-12, 14-16, 18, 19, and 21-27 is reversed.
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Application 08/161,816
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CONCLUSION
The rejection of claims 1, 3-8, 10-12, 14-16, 18, 19,
and 21-27 is reversed.
REVERSED
GARY V. HARKCOM )
Vice Chief Administrative Patent Judge )
)
)
)
) BOARD OF
PATENT
JERRY SMITH ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
LEE E. BARRETT )
Administrative Patent Judge )
Appeal No. 96-2552
Application 08/161,816
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Irah H. Donner
PEPPER HAMILTON LLP
1300 Nineteenth Street, N.W.
Washington, DC 20036