Ex Parte Estrada et al

Board of Patent Appeals and Interferences

Sep 4, 2009

09473098 (B.P.A.I. Sep. 4, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte JULIO ESTRADA, MIGUEL A. ESTRADA,
and MAURICE B. SHORE
____________

Appeal 2008-005958
Application 09/473,098
Technology Center 2400
____________

Decided: September 4, 2009
____________

Before JAMES D. THOMAS, JOSEPH L. DIXON,
and STEPHEN C. SIU, Administrative Patent Judges.
THOMAS, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
This is an appeal under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 1-7, 9, 10, 13, and 15. We have jurisdiction under
35 U.S.C. § 6(b).
Appeal 2008-005958
Application 09/473,098

2
We vacate the rejection of all claims on appeal under 35 U.S.C.
§ 103 and, within the provisions of 37 C.F.R. 41.50(b), institute a new
ground of rejection of all claims on appeal under 35 U.S.C. § 101.

INVENTION
The invention provides for maintaining a collaboration space
including a place comprising a plurality of rooms linked by pointers. A
member directory for the place identifies users authorized to enter the place.
Each room in the place includes one or more pages and a member’s object
for identifying members authorized to access a room, and for each member a
level of authorization. (Spec. 18, ll. 2-9).

ILLUSTRATIVE CLAIM
Below is reproduced independent claim 3:
3. A collaboration space created as a web site by a user
at a browser, comprising:

a place comprising a plurality of rooms in a hierarchical structure
linked by forward and backward pointers;

a member directory for said place identifying users authorized to enter
said place;

each said room comprising one or more pages, and for each said room
a members object for identifying a subset of members of said place
authorized to access said room and for each member a level of authorization,
Appeal 2008-005958
Application 09/473,098

3
each member of said subset of members being a user authorized in said
member directory to enter said place;

said rooms including a parent room and a child room, and said
pointers comprising forward and backward pointers for enabling the security
of each said room to be independently managed, said forward pointers
including indicia identifying said child room, indicia specifying the address
location of the database forming said child room, and a readers field for
providing access control list control on said forward pointer, said readers
field for identifying those members of said subset of members of said place
authorized to access a parent room that are also authorized to access a child
room; and

said collaboration space comprising a hierarchy of rooms, each room
being a place in collaboration space including a member directory; said
member directory, said members object, and said readers field selectively
providing increased, decreased, and maintained access to a child place in
collaboration space, with access at any level of authority to a child place
enabled only for those authorized to access a corresponding parent place,
and whether a link to a child place will be enabled for a specific user in its
corresponding parent place.

PRIOR ART AND EXAMINER’S REJECTIONS
The Examiner relies on the following references as evidence of
unpatentability:
Cutler US 5,129,083 Jul. 7, 1992
Salas US 6,233,600 B1 May 15, 2001
(filed Jul. 15, 1997)

Maurille US 6,484,196 B1 Nov. 19, 2002
(filed Mar. 20, 1998)
Appeal 2008-005958
Application 09/473,098

4
Claims 1-7, 9, 10, 13, and 15, constituting all claims on appeal, stand
rejected under 35 U.S.C. § 103. As evidence of obviousness, the Examiner
relies upon Salas in view of Maurille, further in view of Cutler.

ANALYSIS
At the outset, we vacate the Examiner’s rejection of all claims on
appeal under 35 U.S.C. § 103. We do so because we conclude that the
claims are “barred at the threshold by § 101.” In re Comiskey, 554 F.3d 967,
973 (citing Diamond v. Diehr, 450 U.S. 175, 188)(1981). Therefore, we
reject all claims on appeal, claims 1-7, 9, 10, 13, and 15 as being directed to
non-statutory subject matter.
The United States Supreme Court has held that a claim is not a patent-
eligible “process” if it claims “laws of nature, natural phenomena, [or]
abstract ideas.” Diamond v. Diehr, 450 U.S. 175, 185 (1981) (citing Parker
v. Flook, 437 U.S. 584, 589 (1978) and Gottschalk v. Benson, 409 U.S. 63,
67 (1972)). The subject matter of the present claims on appeal is clearly not
a machine, a manufacture, a process, or a composition of matter permitted
within 35 U.S.C. § 101. Moreover, our reviewing court has stated that “[t]he
four categories [of § 101] together describe the exclusive reach of patentable
subject matter. If the claim covers material not found in any of the four
statutory categories, that claims falls outside the plainly expressed scope of
§ 101 even if the subject matter is otherwise new and useful.” In re Nuijten,
500 F.3d 1346, 1354 (Fed. Cir. 2007), reh’g en banc denied, 515 F.3d 1361
Appeal 2008-005958
Application 09/473,098

5
(Fed. Cir. 2008), cert. denied, __ U.S.__, 127 S. Ct. 70 (2008). Accord In re
Ferguson, 2009 WL 565074, (Fed. Cir. 2009). This latter case held that
claims directed to a “paradigm” are non-statutory under 35 U.S.C. § 101 as
representing an abstract idea.
All claims on appeal, in particular beginning with each independent
claim 1, 3, 9, 10, 13, and 15, variously recite a collaboration space, a place,
rooms, an access control list or ACL, pointers, data objects, data hierarchies,
directories and the like, each of which directly relates to abstract ideas or
abstract intellectual concepts. These terms also relate to mere data
constructs. Some of these terms are merely virtual data constructs of real-
world elements or things, none of which are positively recited.
To the extent recited in each claim on appeal, the claimed browser is a
software application as indicated at Specification page 6, line 9, and not a
physical structure or location. The so-called collaboration space created by
a browser “as a web site” is a data construct of a software entity where the
web site so created is not a physical place. These considerations particularly
apply to independent claims 1 and 3 on appeal.
On their face, method claims 9 and 10 purport to be statutory subject
matter as a “process” within 35 U.S.C. § 101. The earlier-noted
considerations apply equally well to these claims. The Supreme Court’s
“machine-or-transformation test, properly applied, is the governing test for
determining patent eligibility of a process under § 101.” In re Bilski, 545
F.3d 943, 956 (Fed. Cir. 2008) (en banc). “A claimed process is surely
Appeal 2008-005958
Application 09/473,098

6
patent-eligible under § 101 if: (1) it is tied to a particular machine or
apparatus, or (2) it transforms a particular article into a different state or
thing.” Id. at 954. The present versions of method independent claims 9 and
10 on appeal do not meet these requirements.
Lastly, we turn to the subject matter of independent claims 13 and 15
on appeal. The preambular recitation of a “computer program product”
recites by its own terms a software product per se, not necessarily a machine
or a tangible article of manufacture. The claimed “a computer readable
medium” in the body of claim 15 does not require that a computer actually,
in a present tense, read any medium. Moreover, the medium is not recited to
be a tangible medium such as to embody a tangible article of manufacture.
In fact, this claim recites in the body the plurality of first and second etc.
program instructions which are directed to abstract software code per se,
which is considered an intangible, an idea without physical embodiment.
Correspondingly, the functionalities recited in the body of
independent claim 13 are consistent with the reasoning we have advanced
earlier. The preambular recitation of tangibly embodying a program of
instructions does not necessarily require any tangible medium but only that
the instructions themselves may be physically detectable. There is no
recitation of any machine that actually executes the instructions or, in the
present tense sense, performs the method steps. A reader’s inference from
the subject matter of independent claims 13 and 15 that may permit or
otherwise be viewed as requiring the use of the machine is subjective and
Appeal 2008-005958
Application 09/473,098

7
passive, and does not necessarily indicate that statutory subject matter is
actually recited. Indeed, such inferences require the reader to read into the
claims what is not recited in them, including reading into the claims subject
matter from the Specification as filed.

CONCLUSION AND DECISON
We have vacated the outstanding rejection of claims 1-7, 9, 10, 13,
and 15 under 35 U.S.C. § 103. Within the provisions of 37 C.F.R. 41.50(b),
we have rejected these claims as being directed to non-statutory subject
matter within 35 U.S.C. § 101.
In addition to vacating the Examiner’s rejection of one or more
claims, this decision contains a new ground of rejection pursuant to
37 C.F.R. § 41.50(b). 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 Appellant, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new ground 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. . . .

Appeal 2008-005958
Application 09/473,098

8
(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same record. . . .

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).

VACATED
37 C.F.R. § 41.50(b)

rwk

HOLLAND & KNIGHT
10 ST. JAMES AVENUE
BOSTON, MA 02116-3889