Ex Parte Forman

Board of Patent Appeals and Interferences

Dec 13, 2010

10365060 (B.P.A.I. Dec. 13, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________
Ex parte GEORGE HENRY FORMAN
____________________
Appeal 2009-013620
Application 10/365,060
Technology Center 3600
____________________

Before HUBERT C. LORIN, JOESPH A. FISCHETTI, and
KEVIN F. TURNER, Administrative Patent Judges.

TURNER, 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 CASE
Appellant seeks our review under 35 U.S.C. § 134 of the Final
Rejection of claims 1-6, 8, 10-14, 16-20, 22-31, 33, and 35-42. We have
jurisdiction under 35 U.S.C. § 6(b).

SUMMARY OF THE DECISION
We AFFIRM-IN-PART. We affirm the rejection of claims 1, 3-6, 8,
10, 11, 33, 38, and 39 under 35 U.S.C. § 102(e) as anticipated by Burton.
We reverse the rejection of claims 2, 12-14, 17-20, 22-31, 35, 40, 41, 42
under 35 U.S.C. § 102(e) as anticipated by Burton. We reverse the rejection
of claims 36 and 37 under 35 U.S.C. § 102(e) as anticipated by Burton, pro
forma.
Pursuant to our authority under 37 C.F.R. § 41.50(b), we enter a
rejection under 35 U.S.C. § 101 of claims 1, 3-6, 8, 10, 11, 38, and 39 as
NEW GROUNDS OF REJECTION. Additionally, we enter a rejection
under 35 U.S.C. § 112, second paragraph of claims 36 and 37 as NEW
GROUNDS OF REJECTION.2

THE INVENTION
Appellant’s claimed invention relates to a method, data storage
medium, and system for reporting the presentation of data on a web page.
Specifically, Appellant’s claimed invention allows for an accurate

2 Our decision will make reference to the Appellant’s Appeal Brief (“App.
Br.,” filed Jul. 22, 2008) and Reply Brief (“Reply Br.,” filed Apr. 20, 2009),
and the Examiner’s Answer (“Ans.,” mailed Feb. 18, 2009).
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determination to be made as to whether a portion of a web page has actually
been viewed or displayed to an end user. (Spec. ¶ [0001].)
Independent claims 1, 27, and 36 which are deemed to be
representative, read as follows:
1. A method of reporting the presentation of data
comprising:
accessing a source of data having a specific
segment; and
reporting, to a remote location, information
regarding whether the specific segment was presented to
a user, wherein reporting the information is in response
to the specific segment being presented to the user.

27. A method of employing a web page provided
by a server in selective data communication with a
network, the server storing computer-readable code
defining a web page having a humanly perceptible
content, the method comprising:
accessing the computer-readable code stored on
the server using a computer coupled to the network, the
computer including a display and a control;
selectively rendering at least a portion of the
humanly perceptible content of the web page on the
display using the computer-readable code, the portion
rendered on the display being in correspondence to a user
input to the control; and
transmitting information regarding the portion
rendered on the display by way of the network using a
reporting function associated with the computer-readable
code, wherein the transmitting is in response to the
selective rendering of the portion on the display.

36. A system for employing a web page
comprising:
means for providing a source of data in selective
communication with a network means, and wherein the
source of data defines a web page, and wherein the
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source of data has a computer readable code associated
with the web page;
means for accessing the source of data by way of
the network means;
means for viewably rendering at least a portion of
the web page in response to the accessing, the viewably
rendered portion of the web page being in
correspondence to a user input to a control means; and
means responsive to viewably rendering the
portion for transmitting information reporting viewably
rendering of the portion of the web page, the information
transmitted to a remote location by way of the computer
readable code and by way of the network means.
(App. Br. 16, 20, 21, Claims Appendix.)
THE REJECTION
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Burton et al. (“Burton”) US 2002/0055878 A1 May 9, 2002

The Examiner rejected claims 1-6, 8, 10-14, 16-20, 22-31, 33, and 35-
42 under 35 U.S.C. § 102(e) as being anticipated by Burton.
Rather than repeat the arguments of the Appellant or the Examiner,
we make reference to the Briefs and the Answer for their respective details.
Only those arguments actually made by the Appellant have been considered
in this decision. Arguments that the Appellant did not make in the Briefs
have not been considered and are deemed to be waived. See 37 C.F.R.
§ 41.37(c)(1)(vii).
ISSUES
Did the Examiner err in finding that Burton anticipates the subject
matter of claims 1-6, 8, 10-14, 16-20, 22-31, 33, and 35-42 under 35 U.S.C.
§ 102(e)?
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Does independent method claim 1 recite statutory subject matter
under §101?
Does Appellant’s Specification disclose an algorithm corresponding
to the functions recited in the means-plus-function limitations of system
claims 36 and 37 which particularly points out and distinctly claims the
subject matter which the Appellant regards as the invention?

FINDINGS OF FACT
The record supports the following findings of fact (FF) by at least a
preponderance of the evidence. In re Caveney, 761 F.2d 671, 674 (Fed. Cir.
1985) (explaining the general evidentiary standard for proceedings before
the Office).
1. Burton is directed to an on-line supply ordering system which is
capable of continuously updating browser display frames. (Abstract.)
2. Burton describes that order information may be output to a supplier
in the form of reports that may be generated in connection with accounting
codes or user attributes using a Push Engine. (¶ [0125].)
3. Burton describes that the Push Engine can provide a continuous
display of order information at various stages of the ordering process to
authorized users (e.g., customer service representatives). (¶ [0125].)
4. Burton describes that prior to the output order information 176 step
which includes the function performed by Push Engine 178, order
information is received from users at step 164. (¶¶ [0123, 0125], see also
Fig. 4.)
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5. Burton further describes that the Push Engine may be used by a
supplier to receive orders to provide warehouse personnel with real-time
displays of orders to improve order fulfillment efficiency. (¶ [0199].)

PRINCIPLES OF LAW
Anticipation
“A claim is anticipated only if each and every element as set forth in
the claim is found, either expressly or inherently described, in a single prior
art reference.” Verdegaal Bros., Inc. v. Union Oil Co. of California, 814
F.2d 628, 631 (Fed. Cir. 1987).

Statutory Subject Matter
The machine-or-transformation test is a useful and important clue, an
investigative tool, for determining whether some claimed inventions are
processes under § 101. See Bilski v. Kappos, 130 S.Ct. 3218, 3227 (2010).
However, the machine-or-transformation test is not the sole test for
deciding whether an invention is a patent-eligible process. Bilski, 130 S.Ct
at 3227. “In searching for a limiting principle, this [the Supreme] Court’s
precedents on the unpatentability of abstract ideas provide useful tools.” Id.
at 3229.
ANALYSIS
Claims 1-6, 8, 10-14, 16-20, 22-31, 33, and 35-42 rejected under 35 U.S.C.
§ 102(e) as anticipated by Burton.
Independent claims 12 and 27
Appellant argues inter alia that Burton fails to disclose the step of
“transmitting information regarding the portion rendered on a display using
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a reporting function associated with the computer-readable code that defines
a web page, where the transmitting is in response to the selective rendering
of the portion on the display,” as recited in independent claim 27. (App. Br.
7.) Independent claim 12 recites similar limitations. (App. Br. 12.) To
reject these limitations, the Examiner found that in Burton, “[s]elective
information is displayed to restaurant suppliers and the push engine provides
real-time displays to warehouse personnel with relevant information to
improve order fulfillment efficiency.” (Ans. 8) (See also FF 5.) We cannot
agree.
While we agree with the Examiner that Burton’s Push Engine does
provide a continuous display of order information (FF 3) to a remote
location (i.e., warehouse personnel), Burton does not disclose that this
information is transmitted in response to the selective rendering of the
portion on the display using a reporting function associated with the
computer-readable code, as recited by Appellant’s independent claim 27 nor
do we find that it would be found under the principles of inherency.
Rather, Burton describes that order information may be output to a
supplier in the form of reports that may be generated in connection with
accounting codes or user attributes which are first received by a user in a
prior step. (FF 2, 5.) Thus, in contrast to Appellant’s claim which transmits
information in response to a selective rendering using a computer-readable
code, Burton merely discloses reporting information to a remote location
unchecked. Therefore, we agree with Appellant’s argument that Burton fails
to disclose each and every limitation as claimed.
Accordingly, we conclude that the Examiner erred in rejecting
independent claims 12 and 27 under 35 U.S.C. § 102(e) as anticipated by
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Burton. As such, we find that the rejection of claims 13, 14, 16-20, 22-26,
28-31, and 38-42, dependent on claims 12 and 27, respectively, was also
made in error for the same reasons discussed supra.

Independent claims 1 and 33
Appellant generally argues that “Burton clearly fails to disclose
reporting, to the remote location, information regarding whether a specific
segment was presented to a user, where reporting the information is in
response to the specific segment being presented to the user,” as recited by
independent claim 1. (App. Br. 11.) Claim 33 recites similar limitations.
(App. Br. 13.) However, in making the argument with respect to claim 1,
Appellant relies on arguments related to features of independent claim 27,
discussed supra, which are not presently recited by either of independent
claims 1 and 33. Accordingly, with respect to claim 1, we find that the
Appellant is arguing unclaimed limitations and thus making arguments not
commensurate with the scope of Appellant’s independent claim 1.
Additionally, with respect to claim 33, Appellant makes no substantive
argument other than to say Burton fails to disclose the transmitting step as
generally recited by Appellant’s independent claim 33. (App. Br. 13.)
Nevertheless, based on the breadth of claims 1 and 33, we find that
Burton discloses the step of reporting or transmitting to a remote location
whether a specific segment was presented or rendered to a user, in response
to the specific segment being presented or rendered to the user, as generally
recited by independent claims 1 and 33. Specifically, Burton describes that
through the Push Engine, order information may be output to a supplier in
connection with accounting codes or user attributes which are first received
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by a user in a prior step. (FF 2, 5.) Thus, in contrast to independent claims
12 and 27 which require computer-readable code, independent claims 1 and
33 do not require this limitation. Therefore, under the broadest reasonable
interpretation, Burton anticipates the subject matter of independent claims 1
and 33.

Dependent claims 2 and 35
Appellant argues that Burton fails to disclose “a computer-readable
code associated with the specific segment is provided, where the computer-
readable code reports the presentation of the specific segment to the remote
location in response to the specific segment being presented to the user,” as
recited by dependent claim 2. (App. Br. 12.) In response, the Examiner
finds that “[c]omputer readable code is required to display web pages, and
on line or off line displays on computers.” (emphasis omitted.) (Ans. 10.)
We cannot agree with the Examiner and find Appellant’s argument to be
compelling. While Burton may disclose a reporting function, as discussed
supra with respect to claim 1, Burton does not disclose that the reporting is
performed by the computer-readable code as claimed by Appellant, nor do
we find this feature to be found under the principles of inherency.
Therefore, for these reasons, and in contrast to independent claim 1, we will
not sustain the Examiner rejection of dependent claim 2.
Additionally, dependent claim 35 recites substantially similar
limitations as to that of dependent claim 2. Although not specifically argued
by Appellant, we will not sustain the rejection of dependent claim 35 for the
same reasons discussed supra with respect to dependent claim 2.

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Dependent claims 3-6, 8, 10, 11, 38, and 39
Appellant does not separately argue claims 3-6, 8, 10, 11, 38, and 39
which depend from claim 1, and so has not shown that the Examiner erred in
rejecting claims 3-6, 8, 10, 11, 35, 38, and 39 under 35 U.S.C. § 102(e) as
anticipated by Burton for the same reasons we found as to claim 1, supra.

Independent claims 36 and 37
The rejection of claims 36 and 37 as being anticipated by Burton are
reversed, pro forma, in light of the rejection of claims 36 and 37 under 35
U.S.C. § 112, second paragraph, as being indefinite. See NEW GROUNDS
infra. As a result, the rejection over prior art must fall, pro forma, as being
necessarily based on a speculative assumption as to the scope of this claim.
See In re Steele, 305 F.2d 859, 862-63 (CCPA 1962). Our decision in this
regard is based solely on the indefiniteness of the subject matter and does
not reflect on the adequacy of the prior art evidence applied in support of the
rejection.

NEW GROUNDS
35 U.S.C. § 101
Does independent method claim 1 recite to statutory subject matter
under §101?

Using our authority under 37 C.F.R. § 41.50(b), we reject independent
method claim 1 under 35 U.S.C. § 101 for failing to recite patentable subject
matter.
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Independent claim 1 is directed to a method of reporting the
presentation of data. The method recites the steps of 1) accessing a source
of data having a specific segment and 2) reporting, to a remote location,
information regarding whether the specific segment was presented to a user,
wherein reporting the information is in response to the specific segment
being presented to the user. (App. Br. 16.)
Taking claim 1 as representative, we find that the claimed process is
not directed to statutory subject matter under §101 since it is neither tied to a
particular machine or apparatus nor does it transform a particular article into
a different state or thing. While this finding is not itself dispositive, claim 1
does nothing more than provide instructions on reporting the presentation of
data to a remote location. The claim reasonably and broadly covers
reporting the presentation of data to a remote location using any means
possible, and thus in effect could cover any method of reporting the
presentation of data to a remote location.
Accordingly, based upon the consideration of the all the relevant
factors with respect to independent claim 1, and its dependent claims 3-6, 8,
10, 11, 38, and 39 as a whole, claims 1, 3-6, 8, 10, 11, 38, and 39 are held to
claim an abstract idea and are therefore rejected as ineligible subject matter
under 35 U.S.C. § 101. Therefore, we will enter a new ground of rejection
of claims 1, 3-6, 8, 10, 11, 38, and 39 under 35 U.S.C. § 101 because they
claim an abstract idea.
35 U.S.C. § 112, second paragraph
Does Appellant’s Specification disclose an algorithm corresponding
to the functions recited in the means-plus-function limitations of system
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claims 36 and 37 which particularly points out and distinctly claims the
subject matter which the Appellant regards as the invention?

Using our authority under 37 C.F.R. § 41.50(b), we reject independent
system claims 36 and 37 under 35 U.S.C. § 112, second paragraph.
Independent claims 36 and 37 both recite multiple means-plus-
function limitations, directed to two claims reciting a “system for employing
a web page.” We will address one means-plus-function limitation with
respect to each independent claim. With respect to independent claim 36,
the exemplary means-plus-function limitation recites: “means responsive to
viewably rendering the portion for transmitting information reporting
viewably rendering of the portion of the web page, the information
transmitted to a remote location by way of the computer readable code and
by way of the network means.” (App. Br. 21.) Similarly, with respect to
claim 37, exemplary means-plus-function limitation recites: “means
responsive to the selective rendering of the portion of the viewable content
for transmitting information reporting the selective rendering of the portion
of the viewable content on the monitor by way of the reporting function and
by way of the network.” (App. Br. 22.)
A claim limitation that includes the term “means” is presumed to be
intended to invoke means-plus-function treatment, i. e., treatment under 35
U.S.C. § 112, sixth paragraph. Rodime PLC v. Seagate Tech., Inc., 174 F.3d
1294, 1302 (Fed. Cir. 1999) (“presumed an applicant advisedly used the
word ‘means’ to invoke the statutory mandates for means-plus-function
clauses.”). Construing means-plus-function claim language in accordance
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with 35 U.S.C. § 112, sixth paragraph, is a two step process. Golight Inc. v.
Wal-Mart Stores Inc., 355 F.3d 1327, 1333-34 (Fed. Cir. 2004).
The first step in construing a means-plus-function claim limitation is
to define the particular function in the means-plus-function limitation. Thus,
the function with respect to the exemplary means limitation of claim 36 is
“responsive to viewably rendering the portion for transmitting information
reporting viewably rendering of the portion of the web page, the information
transmitted to a remote location by way of the computer readable code and
by way of the network means” and similarly with respect to the exemplary
means limitation of claim 37, the function is “responsive to the selective
rendering of the portion of the viewable content for transmitting information
reporting the selective rendering of the portion of the viewable content on
the monitor by way of the reporting function and by way of the network.”
The second step in construing a means-plus-function claim limitation
is to look to the Specification and identify the corresponding structure for
the function recited in the limitation. Given that the claim as a whole is
directed to a system involving a “web page” and the disclosed structure for
the claimed “system” is a computer system (Spec. ¶ [0018]; see also Figs 1
and 2), one of ordinary skill in the art would construe the means-plus-
function limitation as a computer-enabled means-plus-function limitation.
“For computer-implemented means-plus-function claims where the
disclosed structure is a computer programmed to implement an algorithm,
‘the disclosed structure is not the general purpose computer, but rather the
special purpose computer programmed to perform the disclosed algorithm.’”
Finisar Corp. v. DirecTV Group, Inc., 523 F.3d 1323, 1340-41 (Fed. Cir.
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2008) (quoting WMS Gaming, Inc. v. Int'l Game Tech., 184 F.3d 1339, 1349
(Fed. Cir. 1999)).
As such, Appellant cites to p. 5, ¶ [0022] of their Specification to
support the means-plus-function structure of both independent claims 36 and
37. (App. Br. 4.) After reviewing Appellant’s Specification and the
disclosure specifically cited by the Appellant, we have been unable to find
an algorithm corresponding to the function at issue. Instead, Appellant’s
Specification only provides for “the computer code (e.g., an applet)” to
provide these functions of claims 36 and 37. (Spec. ¶ [0022].)
Accordingly, we find that the Specification does not disclose an
algorithm corresponding to the function recited in the means-plus-function
limitation at issue. When there is no description of an algorithm in the
Specification to support a computer-enabled means-plus-function limitation
in a claim, the disclosure will be considered inadequate to explain to one of
ordinary skill in the art what is meant by the claim language. Aristocrat
Techs. Australia Party. Ltd. vs. Int'l Game Tech., 521 F.3d 1328, 1337 (Fed.
Cir. 2008). Therefore, we reject claims 36 and 37 under 35 U.S.C. § 112,
second paragraph, as failing to particularly point out and distinctly claim the
subject matter which the Appellant regard as the invention.

CONCLUSIONS OF LAW
We conclude that the Examiner did not err in finding that Burton
anticipates claims 1, 3-6, 8, 10, 11, 33, 38, and 39 under 35 U.S.C. § 102(e).
However, we find that the Examiner erred in finding that Burton anticipates
claims 2, 12-14, 17-20, 22-31, 35, 40, 41, 42 under 35 U.S.C. § 102(e). The
rejection of claims 36 and 37 under § 102(e) is reversed pro forma.
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We enter new grounds of rejection of claims 1, 3-6, 8, 10, 11, 38, and
39 under 35 U.S.C. § 101.
We enter new grounds of rejection of claims 36 and 37 under 35
U.S.C. § 112, second paragraph, as being indefinite.

DECISION
The decision of the Examiner to reject claims 1-6, 8, 10-14, 16-20, 22-
31, 33, and 35-42 is AFFIRMED-IN-PART.
We enter new grounds of rejection of claims 1, 3-6, 8, 10, 11, 38, and
39 under 35 U.S.C. § 101. Additionally, we enter new grounds of rejection
of claims 36 and 37 under 35 U.S.C. § 112, second paragraph.
In addition to affirming the Examiner’s rejection(s) of one or more
claims, this decision contains new grounds 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 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 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 . . .
(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same record
. . .
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Should Appellant elect to prosecute further before the Examiner
pursuant to 37 C.F.R. § 41.50(b)(l), in order to preserve the right to seek
review under 35 U.S.C. §§ 141 or 145 with respect to the affirmed
rejections, the effective date of the affirmance is deferred until conclusion of
the prosecution before the Examiner unless, as a mere incident to the limited
prosecution, the affirmed rejections are overcome.
If Appellant elect prosecution before the Examiner and this does not
result in allowance of the application, abandonment or a second appeal, this
case should be returned to the Board of Patent Appeals and Interferences for
final action on the affirmed rejections, including any timely request for
rehearing thereof.
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)(l)(iv) (2007).

AFFIRMED-IN-PART; 37 C.F.R. § 41.50(b)

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