Ex Parte Eisner

Board of Patent Appeals and Interferences

Jan 15, 2002

08668737 (B.P.A.I. Jan. 15, 2002)

The opinion in support of the decision being entered today was not
written for publication and is not binding precedent of the Board.
Paper No. 18
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte JACK W. EISNER
_____________
Appeal No. 2000-1195
Application No. 08/668,737
______________
ON BRIEF
_______________
Before HAIRSTON, JERRY SMITH, and BARRETT, Administrative Patent
Judges.
HAIRSTON, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal from the final rejection of claims
1 through 20.
The disclosed invention relates to a method and an apparatus
for predicting a sales probability for a sales account at a stage
within a sales cycle.
Claims 1 and 16 are illustrative of the claimed invention,
and they read as follows:
Appeal No. 2000-1195
Application No. 08/668,737
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1. A method for predicting a sales probability for a
sales account at a stage within a sales cycle, comprising
the steps of:
(a) determining a current stage of the sales cycle for
the sales account;
(b) calculating an account control level for the sales
account; and
(c) correlating a sales probability based upon said
current stage of the sales cycle and said calculated account
control level.
16. An apparatus for predicting a sales probability for a
sales account at a stage within a sales cycle, comprising:
means for determining a current stage of the sales
cycle for the sales account;
means for calculating an account control level for the
sales account; and
means for correlating a sales probability based upon
said current stage of the sales cycle and said calculated
account control level.
No references were relied on by the examiner.
Claims 1 through 20 stand rejected under 35 U.S.C. § 101 for
being directed to non-statutory subject matter.
Reference is made to the briefs (paper numbers 13 and 16)
and the answer (paper number 14) for the respective positions of
the appellant and the examiner.
Appeal No. 2000-1195
Application No. 08/668,737
3
OPINION
We have carefully considered the entire record before us,
and we will sustain the 35 U.S.C. § 101 rejection of claims
1 through 15, and we will reverse the 35 U.S.C. § 101 rejection
of claims 16 through 20.
According to the examiner (answer, page 3), the claimed
invention “contains no practical application,” and shows “a
series of steps which are grounded in the abstract idea of
performing mathematical manipulations of data.”
Appellant argues (brief, pages 10 and 11) that:
[T]he term “sales probability” is not merely just an
abstract idea or just a number that requires additional
interpretation, but instead is a real, useful and
concrete result that has practical application. Namely
it provides an answer to a user of the present
invention as to whether a sale will or will not likely
to occur. Thus, the generation of the sales
probability, in and of itself, is the practical
application of Appellant’s invention. This
interpretation is clearly consistent with the holdings
of both State Street Bank and AT&T.

. . . .
In support of the Appellant’s position that the
claimed invention has practical utility, Appellant
presently encloses a 1.132 declaration from Mr. Roni
Raitosola, a partner at CORRTEC, LLC. CORRTEC, LLC is
a company that is engaged in the business of
developing, marketing and selling banking software
applications to clients. CORRTEC, LLC has recently
purchased a software application from the Appellant
that embodies the Appellant’s claimed invention for use
Appeal No. 2000-1195
Application No. 08/668,737
1 In AT&T, the method claims expressly stated that they were
“for use in a telecommunications system.”
4
in its business. Mr. Roni Raitosola has declared that the
purchased software application is useful and practical in
predicting the useful information of sales probability for a
sales account.
In keeping with AT&T Corp. v. Excel Communications, Inc.,
172 F.3d 1352, 1356-57, 50 USPQ2d 1447, 1451 (Fed. Cir.), cert.
denied, 528 U.S. 946 (1999), and State Street Bank & Trust Co. v.
Signature Fin. Group, Inc., 149 F.3d 1368, 1373, 47 USPQ2d 1596,
1601 (Fed. Cir. 1998), cert. denied, 119 S.Ct. 851 (1999),
apparatus claims 16 through 20 are clearly directed to a
“machine” in means-plus-function format that makes use of a
mathematically-related algorithm to produce the practical
application of “predicting a sales probability for a sales
account.” On the other hand, method claims 1 through 15 differ
substantially from the method claims in AT&T1 because they are
nothing more than an abstract mathematical algorithm that is
totally disembodied from the machine that performs the method
steps. Without a recitation of the type of machine for
performing the method steps, the method claims on appeal are
broad enough to read on a human performing each of the recited
steps. For this reason, we agree with the
Appeal No. 2000-1195
Application No. 08/668,737
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examiner (answer, page 4) that the broadly recited method steps
of claims 1 through 15 are “not within the ‘technological arts’”
and do not satisfy the statutory requirements of 35 U.S.C. § 101.
Appellant’s arguments (reply brief, page 2) to the contrary
notwithstanding, the declaration submitted by Mr. Raitosola fails
to prove a “practical application” of method claims 1 through
15 because the claims on appeal are not limited to a computer
“software program” application. Thus, the 35 U.S.C. § 101
rejection of claims 1 through 15 is sustained because “the
resulting correlation is merely an abstract idea without a
‘practical application’” (answer, page 5).
Appeal No. 2000-1195
Application No. 08/668,737
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DECISION
The decision of the examiner rejecting claims 1 through
20 under § 101 is affirmed as to claims 1 through 15, and is
reversed as to claims 16 through 20. Accordingly, the decision
of the examiner is affirmed-in-part.
No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).
AFFIRMED-IN-PART
KENNETH W. HAIRSTON )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
JERRY SMITH ) APPEALS AND
Administrative Patent Judge ) INTERFERENCES
)
)
)
LEE E. BARRETT )
Administrative Patent Judge )
KWH:hh
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Application No. 08/668,737
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