Ex Parte Estrada et al

Board of Patent Appeals and Interferences

Aug 26, 2010

10731823 (B.P.A.I. Aug. 26, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
10/731,823 12/09/2003 Miguel A. Estrada LOT920030075US1 (029) 4386
46321 7590 08/27/2010
CAREY, RODRIGUEZ, GREENBERG & PAUL, LLP
STEVEN M. GREENBERG
950 PENINSULA CORPORATE CIRCLE
SUITE 2022
BOCA RATON, FL 33487
EXAMINER
OUELLETTE, JONATHAN P
ART UNIT PAPER NUMBER
3629
MAIL DATE DELIVERY MODE
08/27/2010 PAPER
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte MIGUEL A. ESTRADA,
JOSEPH A. RUSSO, and
THOMAS M. SPINE
____________

Appeal 2009-012192
Application 10/731,823
Technology Center 3600
____________

Before HUBERT C. LORIN, ANTON W. FETTING, and
BIBHU R. MOHANTY, Administrative Patent Judges.

LORIN, Administrative Patent Judge.

DECISION ON APPEAL1

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.
Appeal 2009-012192
Application 10/731,823
2
STATEMENT OF THE CASE
Appellants seek our review under 35 U.S.C. § 134 of the Examiner’s
final decision rejecting claims 1-20. We have jurisdiction over the appeal
under 35 U.S.C. § 6(b).
We REVERSE and enter a NEW GROUND OF REJECTION,
pursuant to our authority under 37 C.F.R. § 41.50(b).

Claim 1 is illustrative:
1. A method for managing membership in a collaborative computing
environment community, the method comprising:
receiving identification of a selected group of end user persons
to invite to join the collaborative computing community;
evaluating the selected group to identify one or more invitees
there from;
inviting the one or more identified invitees; and
receiving an indication from one or more invitees that the
invitee wishes to join the community.

Appellants appeal the following rejection:
1. Claims 1-20 under 35 U.S.C. § 102(e) as anticipated by Hatscher (US
2004/0122693 A1; Jun. 24. 2004).

ISSUE
Does Hatscher describe, expressly or inherently, a process comprising
“receiving an indication from one or more invitees that the invitee wishes to
join the community” ?
Also, given their broadest reasonable construction in light of the
Specification as they would be interpreted by one of ordinary skill in the art,
are the processes recited in claims 1-7 abstract ideas?
Appeal 2009-012192
Application 10/731,823
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FACTUAL FINDINGS
We rely on the Examiner’s factual findings stated in the Answer
(Answer 3-4). The Examiner cited claims 13 and 14 of Hatscher as
describing the claim step “receiving an indication from one or more invitees
that the invitee wishes to join the community”. Answer 4. Claims 13 and 14
of Hatscher read as follows:
13. The method of claim 11 further comprising notifying people
about the existence of a community including that they [have] been
identified as potential member[s] of the community.

14. The method of claim 11 further comprising notifying a member
of the community in response to an updated list of members indicating
potential new members to the community.

ANALYSIS
Process claims 1-7
The Appellants argue that Hatscher does not describe the step of
“receiving an indication from one or more invitees that the invitee wishes to
join the community” (claim 1). We agree. The Hatscher disclosure relied
upon (see supra) describes notifying people but does not expressly describe
their response to the notification. While it is possible that the notified
people may indicate that they wish to join the community, it is equally
possible that they may not. It does not necessarily follow that when one
notifies people that one would “receiv[e] an indication from one or more
invitees that the invitee wishes to join the community.” Accordingly,
Hatscher does not inherently describe the claim step at issue. “Inherency,
however, may not be established by probabilities or possibilities. The mere
fact that a certain thing may result from a given set of circumstances is not
sufficient.” Hansgirg v. Kemmer, 102 F.2d 212, 214 (CCPA 1939), quoted
Appeal 2009-012192
Application 10/731,823
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in Continental Can Co. USA v. Monsanto Co., 948 F.2d 1264, 1269 (Fed.
Cir. 1991). It is well settled that in order for the examiner to establish a
prima facie case of anticipation, each and every element of the claimed
invention, arranged as required by the claim, must be found in a single prior
art reference, either expressly or under the principles of inherency. See
generally, In re Schreiber, 128 F.3d 1473, 1477 (Fed. Cir. 1997). Since that
has not been done here, the rejection is reversed.

Computer-readable storage medium claims 8-14 and system claims 15-20
The Examiner’s reasoning focuses entirely on the steps of the claimed
process. However, claims 8-14 are not process claims. System claims 15-
20, for example, are apparatus claims. “[A]pparatus claims cover what a
device is, not what a device does.” Hewlett-Packard Co. v. Bausch & Lomb
Inc., 909 F.2d 1464, 1468 (Fed. Cir. 1990). Accordingly, a prima facie case
of anticipation has not been made out in the first instance for the subject
matter of these claims.

NEW GROUND
We will enter a new ground of rejection of claims 1-7 under 35 U.S.C.
§ 101 because they claim an abstract idea.

PRINCIPLES OF LAW
The law in the area of patent-eligible subject matter for process claims
has recently been clarified by the Supreme Court in Bilski v. Kappos, 130
S. Ct. 3218, No. 08-964, 2010 WL 2555192 (U.S. June 28, 2010). The
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Application 10/731,823
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Court held that the term “process” as used in § 101, does not categorically
exclude business methods. Id. at *9.
The Court is unaware of any argument that the “ordinary,
contemporary, common meaning,” Diehr, supra, at 182, of “method”
excludes business methods. Nor is it clear how far a prohibition on
business patents would reach, and whether it would exclude
technologies for conducting a business more efficiently.
“At the same time, some business method patents raise special problems in
terms of vagueness and suspect validity.” Id. (citing eBay Inc. v.
MercExchange, L.L.C., 547 U.S. 388, 397 (2006)) (Kennedy, J., concurring).
In searching for a limiting principle, this Court’s precedents on the
unpatentibility of abstract ideas provide useful tools. See infra 12-15.
Indeed, if the Court of Appeals were to succeed in defining a narrower
category or class of patent applications that claim to instruct how
business should be conducted, and then rule that the category is
unpatentable because, for instance, it represents an attempt to patent
abstract ideas, this conclusion might well be in accord with
controlling precedent.
Id.
DISCUSSION
Claims 1-7 are drawn to business methods. Taking claim 1 as
representative, the broadest reasonable construction of the claimed process
in light of the Specification as it would be interpreted by one of ordinary
skill in the art is that it provides a series of instructions that do no more than
receive one type of information2, evaluate the information, invite, and

2 The “type” of information the claimed process uses limit the claimed
subject matter only in terms of the content of the information. They are
properly characterized as nonfunctional descriptive material. In the context
of prior art rejections, a distinction over the prior art based on nonfunctional

Appeal 2009-012192
Application 10/731,823
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receive another type of invitation from an invitee. In effect, the process
claimed explains a method for identifying persons to invite and who wish to
join a community; i.e., “a collaborative computing environment community”
(claim 1).
Accordingly, as claimed, the process provides nothing more than
vague instructions in how to identify persons to invite and who wish to join
a community. That is, the claimed process proposes following a simple
formula for identifying a person likely to join a community: receive
information, evaluate, invite, and the invitee indicates if he/she wishes to
join.
We now turn to the question of whether the claimed process subject
matter is patent-eligible under 35 U.S.C. § 101. Various factors must be
considered and weighed when analyzing claims as a whole before reaching a
conclusion on patent subject matter eligibility.

descriptive material is patentably inconsequential. See In re Ngai, 367 F.3d
1336, 1339 (Fed. Cir. 2004) where, in the context of a prior art rejection, the
court held that attaching instructions to an otherwise known product did not
render the product patentable over the prior art. See also In re Gulack, 703
F.2d 1381, 1385 (Fed. Cir. 1983) (when descriptive material is not
functionally related to the substrate, the descriptive material will not
distinguish the invention from the prior art in terms of patentability) and Ex
parte Mathias, 84 USPQ2d 1276 (BPAI 2005) (non-precedential) (Federal
Circuit Appeal No. 2006-1103; WL 2433879, affirmed without written
opinion Aug. 19, 2006) (patentable weight need not be given to descriptive
material absent a new and unobvious functional relationship between the
descriptive material and the substrate). We see no reason why recitations of
nonfunctional descriptive material should not be similarly treated as
inconsequential in the process of determining whether claimed subject
matter is statutory under 35 U.S.C. § 101.

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The factors relevant in this case are the lack of recitations in the
claims to a machine or transformation and that the claims are mere
statements of a general concept.
There is no recitation in the claims of a machine, expressly or
inherently.
There is no recitation of a transformation, expressly or inherently.
As we have reasonably broadly construed it, the subject matter of
claim 1 is made up of mere statements of the general concept of identifying
and inviting a person to join a community and receiving a positive
indication. The vague instructions listed in the claim are disembodied and
do no more than instruct how business should be conducted; that is, to invite
a person to join a community and receive a positive indication. The claim
covers any use of the concept of identifying and inviting a person to join a
community and receiving a positive indication, known and unknown. The
instructions could be performed by any machine, existing or future-devised.
Furthermore, the process as claimed could be accomplished by human
activity alone, including through mental processes. In the words of
Gottschalk v. Benson, 409 U.S. 63, 72 (1972), the claimed processes “would
wholly pre-empt the [identifying and inviting a person to join a community
and receiving a positive indication] and in practical effect would be a patent
on the [concept] itself.”
For the foregoing reasons, based upon consideration of all of the
relevant factors with respect to claims 1-7 as a whole, claims 1-7 are held to
claim an abstract idea and are therefore rejected as ineligible subject matter
under 35 U.S.C. § 101.

Appeal 2009-012192
Application 10/731,823
8
DECISION
The Examiner erred in rejecting claims 1-20 under 35 U.S.C. § 102(e)
as anticipated by Hatscher therefore we reverse the Examiner’s 35 U.S.C.
§ 102(e) rejection.
We also enter a new ground of rejection of claims 1-7 under 35 U.S.C.
§ 101 because they claim an abstract idea.

Since we have entered a new rejection, our decision is not a final
agency action. 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 the 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 proceedings (37 C.F.R. § 1.197 (b)) 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 37 C.F.R. § 41.52 by the Board upon the same record …
Appeal 2009-012192
Application 10/731,823
9

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).

REVERSED; 37 C.F.R. § 41.50(b)

mev

CAREY, RODRIGUEZ, GREENBERG & PAUL, LLP
STEVEN M. GREENBERG
950 PENINSULA CORPORATE CIRCLE
SUITE 2022
BOCA RATON FL 33487