Ex Parte Gesek

Board of Patent Appeals and Interferences

Mar 10, 2011

10340692 (B.P.A.I. Mar. 10, 2011)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte GEORG GESEK
____________

Appeal 2009-009424
Application 10/340,692
Technology Center 2100
____________

Before LANCE LEONARD BARRY, HOWARD B. BLANKENSHIP, and
ST. JOHN COURTENAY III, Administrative Patent Judges.

BLANKENSHIP, 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 2009-009424
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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 1-18, which are all the claims in the application. We
have jurisdiction under 35 U.S.C. § 6(b).
We reverse, and enter a new ground of rejection as permitted by 37
C.F.R. § 41.50(b).

Invention
Appellant explains representative claim 13, reproduced infra, as
follows.
According to this aspect of the invention, a detection
function of the terminal detects a user specific preference (for
example, a location) for a service such as an email service, and
the user specific preference is assigned to at least one request
criterion (for example, a start command or a logical link to the
service). An offering function (for example, a menu) of the
terminal offers an operating function for the preference for
calling up the service on a user interface as a function of a
situation dependent parameter (for example, the time that the
email service should be started or the location for retrieving the
email). The offering function detects, as a function of the (one
or more) situation dependent parameters, the respective
preference of the user for the service preferred by the user at the
time of day according to the situation dependent parameter.
The user can then conveniently activate the service.

App. Br. 12-13.

Representative Claims
13. A terminal module for using services at a terminal, at
which services can be called up via a user interface, wherein the
terminal module contains a program code which can be carried
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out by control means of the terminal to perform the following
functions:

detecting at least one user-specific preference for at least
one service,

assigning the at least one user preference to at least one
request criterion for the at least one service,

offering an operating function for the at least one
preference for calling up the at least one service on the user
interface as a function of at least one situation-dependent
parameter and

on activation of the operating function calling up the at
least one service on the user interface using the at least one
request criterion,

wherein the detecting at least one user-specific
preference includes considering past behavior of the user with
respect to the at least one service.

17. The terminal module according to claim 13, wherein
the terminal module is stored in a diskette, a CD-ROM, a
Digital Versatile Disc, a hard disk drive, a RAM, a memory
card, or a flash memory.

Examiner’s Rejections
Claims 1-7, 9, 10, and 12-18 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over Alon (WO 01/20475 A1) and Kondou (US
6,434,479 B1).
Claims 8 and 11 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Alon, Kondou, and Hanmann (US 7,024,491 B1).

Appeal 2009-009424
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PRINCIPLES OF LAW
“Abstract software code is an idea without physical embodiment.”
Microsoft Corp. v. AT&T Corp., 550 U.S. 437, 449 (2007).
Software per se or a computer program per se does not fall within a
statutory class (not a process, machine, manufacture, or composition of
matter). “The four categories [of § 101] together describe the exclusive
reach of patentable subject matter. If a 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, 1356-57 (Fed. Cir. 2007).

DICUSSION
The Standing Rejections
The § 103(a) rejection over Alon and Kondou submits that Alon
teaches all the subject matter of representative claim 13 except for the failure
“to specifically teach offering an operating function as a function of at least
one situation-dependent parameter.” Ans. 4. The rejection turns to Kondou
(col. 2, ll. 31-57) for the teaching of “offering an operating function as a
function of at least one situation-dependent parameter.” Ans. 4. The
rejection concludes that it would have been obvious to modify the method
and apparatus of Alon to include offering an operation function of at least
one situation-dependent parameter, as taught by Kondou, “in order for the
operating function to be of at least one situation-dependent parameter.” Id.
“One would have been motivated to make such a combination in order to
obtain information dependent on the situational parameters of the terminal
device.” Id.
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Appellant responds that Alon and Kondou cannot be logically
combined as proposed by the rejection. App. Br. 15. According to
Appellant, Kondou may teach that a user retrieves service information
relating to, for example, gas stations and restaurants, but does not teach or
suggest offering an operating function for the at least one preference for
calling up the at least one service on the user interface as a function of at
least one situation-dependent parameter, as claimed. Reply Br. 6.
We observe that the claim 13 antecedent for “the at least one service”
in the “offering” of “an operating function” is set forth in the first portion of
the claim, in the “detecting at least one user-specific preference for at least
one service.” The rejection first refers, generally, to page 6, line 23 through
page 7, line 7 in Alon for the teaching of “detecting” the user-specific
preference for the service. Ans. 3. However, the Examiner points to other
material in Alon and becomes specific in the “Response to Argument”
section of the Answer. “Alon teaches detecting a user-specific preference, is
where [sic] the user picks a category on his/her account (Figure 4), where
the user picks for example item 6, ‘favorites.’ To view the user’s favorite’s
[sic] category filled with the user’s favorite websites, is the ‘at least one
service.’” Ans. 11.
The “Response to Argument” section of the Answer also becomes
specific with respect to Kondou. According to the rejection, the “offering an
operating function” for calling up the at least one service is taught by
Kondou in the following manner.
The user selects to retrieve information from an icon, for
example, gas stations, restaurants, drive-ins, etc (column 6 lines
1-25) and when the user selects the icon he/she wants to get
information based on his/her specific preference, the system
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calls up the “at least one service” of, for example, finding the
location of a restaurant in the area using a “situation dependent
parameter” such as current location (column 2 lines 31-57), on
the GPS system (which is an acceptable “situation dependent
parameter’ as described in the appellant’s specification page 3,
as “information on the current location,” which is what a GPS
gives).

Ans. 12.
While we agree with the Examiner that Kondou may be deemed to
teach “offering an operating function” as a function of “at least one
situation-dependent parameter,” we agree with Appellant to the extent that
the rejection fails to show how the teaching of a “favorites” category
containing the user’s favorite websites (Alon) may be logically combined
with the teachings of Kondou. The rejection appears to contemplate using
the GPS location information as taught by Kondou with the stored favorite
websites as taught by Alon. The rejection offers no convincing rationale,
however, in support of why a user’s favorite websites stored on a terminal
device might be offered to be called up as a service as a function of GPS
location information. The articulated reason for the combination, “in order
for the operating function to be of at least one situation-dependent
parameter” (Ans. 4), seems to be based on what is claimed rather than on
what would have been obvious to one of ordinary skill in the art. A
factfinder should be aware of the distortion caused by hindsight bias. KSR
Int’l v. Teleflex Inc., 550 U.S. 398, 418 (2007). “[R]ejections on
obviousness grounds cannot be sustained by mere conclusory statements;
instead, there must be some articulated reasoning with some rational
underpinning to support the legal conclusion of obviousness.” Id. at 418
(quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)).
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Because the § 103(a) rejection against independent claims 1, 12, 14,
and 16 suffers the same deficiency as that applied against claim 13, we
cannot sustain the prior art rejection of any claim on appeal.

New Ground of Rejection -- 37 C.F.R. § 41.50(b)
We reject claims 13 and 16 under 35 U.S.C. § 101 as being directed to
non-statutory subject matter.
Claim 13 recites a “terminal module” that “contains a program code.”
Claim 17 further limits the “terminal module” as being stored in “a diskette,
a CD-ROM, a Digital Versatile Disc, a hard disk drive, a RAM, a memory
card, or a flash memory.” Claim 16 recites a “server module” that “contains
a program code,” with claim 18 further limiting the “server module” of
claim 16 as being stored in one of the types of storage media that are listed
in claim 17.
The claimed “terminal module” and “server module” of respective
claims 13 and 16 are not limited to a machine or apparatus, nor limited to
being stored in a tangible, non-transitory medium. If, for example, the
“terminal module” of claim 13 were some hardware apparatus, that hardware
apparatus would not be capable of storage in “a CD-ROM” as required by
claim 17. We conclude that the “terminal module” may be a software
module, rather than an apparatus. We further conclude that the “modules”
represent abstract software code, or software per se. If the software
“modules” of claim 13 and claim 16 were limited to, for example, being
stored in a CD-ROM, the tangible CD-ROM storage medium would not be
capable of being stored in another tangible storage medium (such as a flash
memory).
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Each of claims 13 and 16 covers material not found in any of the four
statutory categories, thus falling outside the plainly expressed scope of
§ 101.

DECISION
The rejections of claims 1-18 under 35 U.S.C. § 103(a) are reversed.
In a new ground of rejection, we have rejected claims 13 and 16 under
35 U.S.C. § 101 as being directed to non-statutory subject matter.
This decision contains a new ground of rejection pursuant to 37
C.F.R. § 41.50(b) (2010). 37 C.F.R. § 41.50(b) provides “[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 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. . . .

(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). See 37 C.F.R.
§ 41.50(f).

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REVERSED -- 37 C.F.R. § 41.50(b)

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