Ex Parte Doyle

Board of Patent Appeals and Interferences

Nov 12, 2009

10158696 (B.P.A.I. Nov. 12, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE 1
___________ 2
3
BEFORE THE BOARD OF PATENT APPEALS 4
AND INTERFERENCES 5
___________ 6
7
Ex parte JAY BRADLEY DOYLE 8
___________ 9
10
Appeal 2009-004404 11
Application 10/158,696 12
Technology Center 3600 13
___________ 14
15
Decided: November 12, 2009 16
___________ 17
18
Before HUBERT C. LORIN, ANTON W. FETTING, and JOSEPH A. 19
FISCHETTI, Administrative Patent Judges. 20
FETTING, Administrative Patent Judge. 21
DECISION ON APPEAL 22
23
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STATEMENT OF THE CASE 1
James Bradley Doyle (Appellant) seeks review under 35 U.S.C. § 134 2
(2002) of a final rejection of claims 1-3 and 5-8, the only claims pending in 3
the application on appeal. 4
We have jurisdiction over the appeal pursuant to 35 U.S.C. § 6(b) 5
(2002). 6
SUMMARY OF DECISION1 7
We AFFIRM. 8
THE INVENTION 9
The Appellant invented a method for motivating persons in a 10
predetermined business field, such as independent business owners 11
(Specification 1:4-6). 12
An understanding of the invention can be derived from a reading of 13
exemplary claim 1, which is reproduced below [bracketed matter and some 14
paragraphing added]. 15

1 Our decision will make reference to the Appellant’s Appeal Brief (“App.
Br.,” filed December 13, 2007) and Reply Brief (“Reply Br.,” filed May 21,
2008), and the Examiner’s Answer (“Ans.,” mailed March 21, 2008), and
Final Rejection (“Final Rej.,” mailed May 14, 2007).
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1. A method for motivating a group of persons in a 1
predetermined business field comprising the steps of: 2
[1] selecting at least two teams from the group of persons, 3
each team having a plurality of persons each of which is 4
engaged in the business field, 5
[2] identifying a plurality of business activity categories 6
which relate favorably to success in the business field, 7
[3] inputting effort expended by each person on each team in 8
each activity category at predetermined time intervals over a 9
predetermined time duration, 10
[4] assigning a score to each person in each category during 11
each time interval, 12
[5] tabulating the assigned scores in each category for each 13
team over said time duration, and 14
[6] motivating persons on said at least two teams by naming 15
a winning team as a result of said tabulation. 16
17
THE REJECTIONS2 18
The Examiner relies upon the following prior art: 19
Pearson et al. 5,018,736 May 28, 1991
Brewer, Geoffrey, Employee Motivation: On with the Show, Incentive, 20
May 1992 at 30. 21
22
Claims 1-3 and 5-8 stand rejected under 35 U.S.C. § 101 as being 23
directed toward non-statutory subject matter. 24

2 The Examiner has withdrawn the previously asserted rejection of claims 1-
3 and 5-8 under 35 U.S.C. 112, first paragraph, for a lack of enablement, and
35 U.S.C. 112, second paragraph, as being incomplete for omitting essential
steps (Ans. 2-3).
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Claims 1-3 and 5-8 stand rejected under 35 U.S.C. § 103(a) as 1
unpatentable over Pearson and Brewer. 2
ISSUES 3
The issues pertinent to this appeal are: 4
• Whether the Appellant has sustained the burden of showing that the 5
Examiner erred in rejecting claims 1-3 and 5-8 under 35 U.S.C. § 101 6
as being directed towards non-statutory subject matter. 7
o This pertinent issue turns on whether the recited method steps 8
are tied to a particular machine or apparatus or whether the 9
recited method transforms an article into a different state or 10
thing. 11
• Whether the Appellant has sustained the burden of showing that the 12
Examiner erred in rejection claims 1-3 and 5-8 under 35 U.S.C. § 13
103(a) as unpatentable over Pearson and Brewer. 14
o This pertinent issue turns on whether Pearson and Brewer 15
describe the all of the limitations of claim 1. 16
17
FACTS PERTINENT TO THE ISSUES 18
The following enumerated Findings of Fact (FF) are believed to be 19
supported by a preponderance of the evidence. 20
Facts Related to the Prior Art 21
22
23
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Pearson 1
01. Pearson is directed to an interactive contest system which 2
allows remotely located participants to compete by optimizing the 3
performance of their team rosters through the selection and trading 4
of players (Pearson 1:5-9). 5
02. Pearson describes a contest that is based on a score by a team 6
roster that is composed of a number of athletes (players) and the 7
score is generated based on the actual performances of the 8
individual players on the team during the term of the contest 9
(Pearson 2:48-64). 10
03. A central controller handles all of the necessary data handling 11
and the participant interfaces (Pearson 2:65-67). The controller 12
accesses the contest roster and a statistical database used to 13
evaluate a contest player’s performance in specific categories, 14
such as runs, hits, runs batted in, and homeruns for baseball 15
(Pearson 3:1-5 and 11:3-15). A player is evaluated on a daily or 16
weekly basis as a function of that player’s statistical performance, 17
and this evaluated quantity is added a week-to-date score and a 18
contest-to-date score (Pearson 3:6-14). A contest participant’s 19
team roster performance is determined by summing the individual 20
scores of all of the players on the participant’s team roster 21
(Pearson 3:16-19). Competition among the participants is based 22
upon a comparison of the team roster point totals for a given 23
period of time (Pearson 3:58-60). A participant wins the 24
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competition by maintaining the team roster which generates the 1
most points during the time period (Pearson 3:60-62). 2
Brewer 3
04. Brewer is directed to a discussion of Motorola’s Total 4
Customer Satisfaction Worldwide Team Competition (Brewer ¶ 5
5). 6
05. The competition beings with all of the teams presenting their 7
problem solving efforts at the local level and are judged by 8
quality-control officials (Brewer ¶ 6). The top 22 teams are 9
selected for a full day competition and are awarded points by 10
senior managers for performance in specific criteria (Brewer ¶ 6). 11
These criteria include teamwork, project selection, quality of 12
analysis, quality of suggested remedies, results, 13
institutionalization, and presentation (Brewer ¶ 6). A winning 14
team was selected and awarded a gold medal (Brewer ¶ 10). The 15
goal of the competition began as a way to increase teamwork, but 16
now has resulted in employees taking it upon themselves to focus 17
on customer satisfaction and product quality (Brewer ¶ 13). The 18
competitors are motivated by top-management recognition and by 19
recognition from their peers around the world (Brewer ¶ 14). 20
Facts Related To The Level Of Skill In The Art 21
06. Neither the Examiner nor the Appellant has addressed the level 22
of ordinary skill in the pertinent art personnel management and 23
employee performance. We will therefore consider the cited prior 24
art as representative of the level of ordinary skill in the art. See 25
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Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) 1
(“[T]he absence of specific findings on the level of skill in the art 2
does not give rise to reversible error ‘where the prior art itself 3
reflects an appropriate level and a need for testimony is not 4
shown’”) (quoting Litton Indus. Prods., Inc. v. Solid State Sys. 5
Corp., 755 F.2d 158, 163 (Fed. Cir. 1985). 6
Facts Related To Secondary Considerations 7
07. There is no evidence on record of secondary considerations of 8
non-obviousness for our consideration. 9
PRINCIPLES OF LAW 10
101 – Eligible Processes 11
The law in the area of patent-eligible subject matter for process claims 12
has recently been clarified by the Federal Circuit in, In re Bilski, 545 F.3d 13
943 (Fed. Cir. 2008) (en banc), petition for cert. filed, 77 USLW 3442 (U.S. 14
Jan. 28, 2009) (No. 08-964). 15
The en banc court in Bilski held that “the machine-or-transformation test, 16
properly applied, is the governing test for determining patent eligibility of a 17
process under § 101.” Bilski, 545 F.3d at 956. The court in Bilski further 18
held that “the ‘useful, concrete and tangible result’ inquiry is inadequate [to 19
determine whether a claim is patent-eligible under § 101.]” Bilski, 545 F.3d 20
at 959-60. 21
The court explained the machine-or-transformation test as follows: “A 22
claimed process is surely patent-eligible under § 101 if: (1) it is tied to a 23
particular machine or apparatus, or (2) it transforms a particular article into a 24
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different state or thing.” Bilski, 545 F.3d at 954 (citations omitted). The 1
court explained that “the use of a specific machine or transformation of an 2
article must impose meaningful limits on the claim’s scope to impart patent-3
eligibility” and “the involvement of the machine or transformation in the 4
claimed process must not merely be insignificant extra-solution activity.” 5
Bilski, 545 F.3d at 961-62 (citations omitted). 6
The court declined to decide under the machine implementation branch 7
of the inquiry whether or when recitation of a computer suffices to tie a 8
process claim to a particular machine. Bilski, 545 F.3d at 962. As to the 9
transformation branch of the inquiry, however, the court explained that 10
transformation of a particular article into a different state or thing “must be 11
central to the purpose of the claimed process.” Id. As to the meaning of 12
“article,” the court explained that chemical or physical transformation of 13
physical objects or substances is patent-eligible under § 101. Id. The court 14
also explained that transformation of data is sufficient to render a process 15
patent-eligible if the data represents physical and tangible objects, i.e., 16
transformation of such raw data into a particular visual depiction of a 17
physical object on a display. Bilski, 545 F.3d at 962-63. The court further 18
noted that transformation of data is insufficient to render a process patent-19
eligible if the data does not specify any particular type or nature of data and 20
does not specify how or where the data was obtained or what the data 21
represented. Bilski, 545 F.3d at 962 (citing In re Abele, 684 F.2d 902, 909 22
(CCPA 1982) (process claim of graphically displaying variances of data 23
from average values is not patent-eligible) and In re Meyer, 688 F.2d 789, 24
792-93 (CCPA 1982) (process claim involving undefined “complex system” 25
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and indeterminate “factors” drawn from unspecified “testing” is not patent-1
eligible)). 2
3
Obviousness 4
A claimed invention is unpatentable if the differences between it and 5
the prior art are “such that the subject matter as a whole would have been 6
obvious at the time the invention was made to a person having ordinary skill 7
in the art.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007); Graham 8
v. John Deere Co., 383 U.S. 1, 13-14 (1966). 9
In Graham, the Court held that that the obviousness analysis is 10
bottomed on several basic factual inquiries: “[(1)] the scope and content of 11
the prior art are to be determined; [(2)] differences between the prior art and 12
the claims at issue are to be ascertained; and [(3)] the level of ordinary skill 13
in the pertinent art resolved.” Graham, 383 U.S. at 17. See also KSR, 550 14
U.S. at 406. “The combination of familiar elements according to known 15
methods is likely to be obvious when it does no more than yield predictable 16
results.” Id. at 416. 17
ANALYSIS 18
Claims 1-3 and 5-8 rejected under 35 U.S.C. § 101 as being directed 19
toward non-statutory subject matter 20
The Examiner found that claims 1-3 and 5-8 failed to produce a useful, 21
concrete, and tangible results (Ans. 5-8). The Appellant contends that the 22
specification clearly sets forth a useful method (App. Br. 7) and that 35 23
U.S.C. § 101 does not require a real world result (Reply Br. 1-2). 24
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We disagree with the Appellant. The current test to determine whether 1
the subject matter of method claims 1-3 and 5-8 is directed towards statutory 2
subject matter is the machine-or-transformation test, as described in Bilski. 3
Independent claim 1 recites a method for motivating a group of persons. 4
Claim 1 only recites steps and does not recite the use of any machine or 5
apparatus. As such, the method steps in claim 1 are not tied to a particular 6
machine or apparatus. Although some of the steps recite the tabulation of 7
values, these steps are not limited to a particular machine or apparatus. 8
Additionally, the steps recited by the claims are for motivating persons 9
through the use of a competition. The motivation of individuals does not 10
transform an article into a different state or thing. Dependant claims 2-3 and 11
5-8 also fail to tie the method steps to a particular machine or apparatus or 12
transform an article into a different state or thing. As such, claims 1-3 and 13
5-8 fail to satisfy the both prongs of the machine-or-transformation test and 14
are rejected under 35 U.S.C. § 101 as being directed towards non-statutory 15
subject matter. 16
17
Claims 1-3 and 5-8 rejected under 35 U.S.C. § 103(a) as unpatentable 18
over Pearson and Brewer 19
The Appellant first contends that Pearson and Brewer fail to describe the 20
step of motivating the persons on the teams by naming a winning team as a 21
result of the score or tabulation, as required by limitation [6] of claim 1 22
(App. Br. 8). The Appellant specifically argues that Pearson and Brewer fail 23
to describe that the game participants themselves form the team and 24
therefore it is the participants that are motivated (App. Br. 8). 25
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We disagree with the Appellant. Limitation [6] requires motivating the 1
persons on the teams by naming a winning team based on a compiled score. 2
Brewer describes a competition used by Motorola that motivates employees, 3
who are organized into teams, by declaring a winner (FF 05). Brewer 4
further describes that competition participants are motivated by receiving 5
recognition from top-management and their peers (FF 05). As such, Brewer 6
explicitly describes that competition participants are motivated by naming a 7
winning team, as required by limitation [6] of claim 1. 8
As discussed supra, the Examiner has relied on Brewer to describe 9
limitation [6] and therefore the Appellant's contention Pearson fails to 10
describe the step of motivating persons does not persuade us of error on the 11
part of the Examiner because the Appellant responds to the rejection by 12
attacking the references separately, even though the rejection is based on the 13
combined teachings of the references. Nonobviousness cannot be 14
established by attacking the references individually when the rejection is 15
predicated upon a combination of prior art disclosures. See In re Merck & 16
Co. Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986). 17
The Appellant further contends that there is no motivation to combine 18
Pearson and Brewer. We disagree with the Appellant. Pearson is concerned 19
with creating an interactive competition (FF 01). Pearson accomplishes this 20
goal by creating a system that enables users to create a roster of athletes and 21
the user is awarded an aggregate score based on the individual scores earned 22
by the athletes (FF 02). Brewer is also concerned with creating a 23
competition (FF 04). Brewer accomplishes this by allowing competition 24
participants align themselves into teams and create a solution to a customer 25
satisfaction problem at Motorola (FF 05). A person with ordinary skill in 26
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the art would have recognized to combine Brewer and Pearson in order to 1
motivate competition participants by declaring a winner to the competition 2
and using this as an incentive for employees to participate in the 3
competition. As such, Pearson and Brewer are concerned about the same 4
problem and a person with ordinary skill in the art would have been lead to 5
combine their teachings. 6
The Appellant additionally contends that Pearson and Brewer fail to 7
describe selecting two or more teams, as required by limitation [1] of claim 8
1 (App. Br. 9-10). We disagree with the Appellant. Pearson describes a 9
competition between at least two participants by comparing the aggregate 10
score of a first participant’s team roster against the aggregate score of a 11
second participant’s team roster (FF 03). That is, each participant’s roster is 12
a team and all of the teams are selected and compared to determine a winner. 13
Furthermore, Brewer describes that multiple teams participate on the local 14
level and teams are selected from this batch to participate on the global level 15
(FF 05). As such, both Pearson and Brewer to explicitly describe selecting 16
two or more teams. 17
The Appellant further contends that Pearson and Brewer fail to describe 18
identifying a plurality of business activity categories which relate favorable 19
to success in the business field, as required by limitation [2] of claim 1 (App. 20
Br. 9-10). We disagree with the Appellant. Pearson describes that 21
collecting statistical information on categories related to the athlete’s 22
performance (FF 03). Each of these categories, such as runs and hits, are 23
related to the success of the athlete in that sporting event, such as baseball. 24
Furthermore, Brewer explicitly describes that teams set out to solve 25
problems that are directly related to a customer satisfaction problem in 26
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Motorola and teams are evaluated on the categories of teamwork, project 1
selection, and quality of analysis, quality of suggested remedies, results, 2
institutionalization, and presentation (FF 05). These categories are related to 3
the success of a business field and business activity. As such, Pearson and 4
Brewer explicitly describe limitation [2] of claim 1. 5
The Appellant additionally contends that Pearson and Brewer fail to 6
describe inputting the effort expended by each team member in each 7
category and then assigning a score to each person in each category during a 8
time interval, as required by limitations [3] and [4] (App. Br. 10). 9
We disagree with the Appellant. Pearson describes that a player on the 10
team roster is evaluated based on that player’s performance in each of the 11
tracked categories and that player receives a numerical quantity for that 12
performance (FF 03). The competition tracks this performance of the player 13
over a given period of competition time and the participant with the most 14
aggregated points (accrued by players on the participant’s roster) is the 15
winner (FF 03). As discussed supra, Brewer describe that the team 16
members are the participants in the competition. As such, Pearson and 17
Brewer describe limitations [3] and [4] of claim 1. 18
CONCLUSIONS OF LAW 19
The Appellant has not sustained the burden of showing that the 20
Examiner erred in rejecting claims 1-3 and 5-8 under 35 U.S.C. § 101 as 21
being directed towards non-statutory subject matter. 22
The Appellant has not sustained the burden of showing that the 23
Examiner erred in rejecting claims 1-3 and 5-8 under 35 U.S.C. § 103(a) as 24
unpatentable over Pearson and Brewer. 25
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1
DECISION 2
To summarize, our decision is as follows. 3
• The rejection of claims 1-3 and 5-8 under 35 U.S.C. § 101 as being 4
directed towards non-statutory subject matter is sustained. 5
• The rejection of claims 1-3 and 5-8 under 35 U.S.C. § 103(a) as 6
unpatentable over Pearson and Brewer is sustained. 7
No time period for taking any subsequent action in connection with this 8
appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv)(2007). 9
10
AFFIRMED 11
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