Ex Parte Fellenstein et al

Board of Patent Appeals and Interferences

Jul 27, 2010

10626194 (B.P.A.I. Jul. 27, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
________________

Ex parte CRAIG WILLIAM FELLENSTEIN,
CARL PHILLIP GUSLER, RICK ALLEN HEMILTON II,
and JAMES WESLEY SEAMAN
________________

Appeal 2009-006595
Application 10/626,194
Technology Center 2400
________________

Before JAMES D. THOMAS, ST. JOHN COURTENAY III, and
JAMES R. HUGHES, Administrative Patent Judges.

THOMAS, 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.
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STATEMENT OF THE CASE

This is an appeal under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 1 through 27. We have jurisdiction under 35 U.S.C.
§ 6(b).
We vacate the rejection under 35 U.S.C. § 103 before us and institute
a new ground of rejection within the provisions of 37 C. F. R. § 41.50(b).

Invention

An apparatus and method for facilitating communication
through a messaging system by identifying times when a user
of the system is most likely to be available for a messaging
session. The apparatus comprises an event monitor, a database,
a usage processor, and a usage indicator. The event monitor
detects messaging system events and records information about
these events in the database. The usage processor retrieves the
recorded information from the database and uses the
information to compile[s] statistical usage data for a given user.
The usage indicator then displays the statistical usage data in a
summary format to an end user. In the preferred embodiment,
the event monitor, usage processor, and usage indicators are all
implemented as computer instructions. These three
components may be executed independently of each other, or
they may be integrated into a single computer program.
Similarly, each component may operate independently or be
integrated into an existing messaging system.

(Spec. 14, ll.4-14, Figs.3 & 5.)

Representative Claim
21. A method of identifying optimal times for an end
user to contact a target user of a messaging system, comprising
detecting messaging system events, recording the messaging

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system events in a database, compiling statistical usage data
from the messaging system events, and displaying the target
user’s statistical usage data on an output device; wherein the
statistical usage data is adapted to allow the end user to
determine a best time to contact the target user for a messaging
session by providing a plurality of data regarding the target
user’s times for signing in and signing out, the target user’s
average time signed on each day, and the target user's messages
sent and received.

Prior Art and Examiner’s Rejection
The Examiner relies on the following references as evidence of
unpatentability:

Monza US 2004/0081183 A1 Apr. 29, 2004
(filed May 15, 2003)

Matsliach US 6,879,994 B1 Apr. 12, 2005
(filed Jan. 4, 2000)

Tamir US 6,957,390 B2 Oct. 18, 2005
(filed Nov. 30, 2000)

All claims on appeal, claims 1 through 27, stand rejected under 35
U.S.C. § 103. As evidence of obviousness, the Examiner relies upon
Matsliach in view of the Monza and Tamir.

ANALYSIS

We vacate the prior art rejection encompassing all claims on appeal
because we conclude that all claims on appeal, claims 1 through 27, are
“barred at the threshold by § 101.” In re Comiskey, 554 F.3d 967, 973 (Fed.
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Cir. 2009) (citing Diamond v. Diehr, 450 U.S. 175, 188 (1981)). Therefore,
the following new ground of rejection is set forth in this Opinion within the
provisions of 37 C.F.R. § 41.50(b).

NEW REJECTION UNDER 35 U.S.C. § 101
PRINCIPLES OF LAW
Statutory Subject Matter
The subject matter of claims permitted within 35 U.S.C. § 101 must
be a machine, a manufacture, a process, or a composition of matter.
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 claim 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); accord In re Ferguson, 558 F.3d 1359 (Fed. Cir.
2009). This latter case held that claims directed to a “paradigm” are
nonstatutory under 35 U.S.C. § 101 as representing an abstract idea. Thus, a
“signal” cannot be patentable subject matter because it is not within any of
the four categories. In re Nuijten, 500 F.3d at 1357. Laws of nature,
abstract ideas, and natural phenomena are excluded from patent protection.
Diamond v. Diehr, 450 U.S. at 185. A claim that recites no more than
software, logic or a data structure (i.e., an abstraction) does not fall within
any statutory category. In re Warmerdam, 33 F.3d 1354, 1361 (Fed. Cir.
1994). Significantly, “[a]bstract software code is an idea without physical
embodiment.” Microsoft Corp. v. AT&T Corp., 550 U.S. 437, 449 (2007).
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The unpatentability of abstract ideas was reaffirmed by the U.S. Supreme
Court in Bilski v. Kappos, No. 08-964, 2010 WL 2555192 (June 28, 2010).
With this background in mind, all claims on appeal, claims 1 through
27, are rejected under 35 USC § 101 as being directed to nonstatutory
subject matter. Consistent with our earlier-noted invention statement taken
from Appellants’ disclosed abstract, the disclosed and claimed invention is
directed to software per se, abstract ideas, abstract concepts and
methodologies, and the like, including various data structures, software,
software applications, and abstract intellectual processes associated with
them within the claims on appeal.
Appellants’ disclosed abstract itself states that an “apparatus”
comprises an event monitor, a usage processor, and usage indicator which
are stated to be implemented as computer instructions, including as a single
computer program. This analysis is consistent with the subject matter at
Specification page 5 that indicates various identified elements have
expansive rather than defined meanings in the art. Again, the claimed event
monitor, usage processor, and usage indicator are stated at Specification
page 5 to be implemented as computer instructions. The functionalities
associated with these identified terms are illustrated in disclosed figures 3
and 5 in flowchart form. Significantly, the sentence bridging Specification
pages 6 and 7 states that “[t]he present invention is a methodology that can
be embodied in a computer program.”
This brief analysis is clearly applicable to representative independent
method claim 21 on appeal that is reproduced earlier in this opinion. The
body of each independent claim 1, 11, and 21 recites essentially the same
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functional features relating to the previously described event monitor, usage
processor, and usage indicator. Much of the wherein clause at the end of
these claims relates as well to human/user determinations/analyses. As
indicated earlier in our analysis, the claimed apparatus in the preamble of
independent claim 1 on appeal is not hardware but comprises, as defined in
the abstract etc., software entities themselves. A computer program is
directly recited in independent claim 11 and the computer readable storage
medium of this claim presumptively includes transitory signal embodiments.
The medium includes and encompasses signals per se, all of which are
proscribed by the earlier-noted case law. Note also the analysis provided by
Subject Matter of Eligibility of Computer Readable Media, 1351 Off. Gaz.
Pat. Office 212 (Feb. 23, 2010).

CONCLUSION and DECISION

We have pro forma vacated the outstanding rejection over applied
prior art of all claims on appeal, claims 1-27. We have instituted a new
ground of rejection within 37 C.F.R. § 41.50(b). This new rejection of all
claims on appeal is based upon 35 U.S.C. § 101 since these claims are
directed to non-statutory subject matter.
A new ground of rejection is 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 the Appellants, WITHIN
TWO MONTHS FROM THE DATE OF THE DECISION, must exercise

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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 . . . .

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

VACATED
37 C.F.R. § 41.50(b)

llw

DUKE W. YEE
YEE AND ASSOCIATES, P.C.
P.O. BOX 802333
DALLAS, TX 75380