Ex Parte GesekDownload PDFBoard of Patent Appeals and InterferencesMar 10, 201110340692 (B.P.A.I. Mar. 10, 2011) Copy Citation 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 Application 10/340,692 2 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 Appeal 2009-009424 Application 10/340,692 3 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 Application 10/340,692 4 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. Appeal 2009-009424 Application 10/340,692 5 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 Appeal 2009-009424 Application 10/340,692 6 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)). Appeal 2009-009424 Application 10/340,692 7 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). Appeal 2009-009424 Application 10/340,692 8 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). Appeal 2009-009424 Application 10/340,692 9 REVERSED -- 37 C.F.R. § 41.50(b) msc SUGHRUE MION, PLLC 2100 PENNSYLVANIA AVENUE, N.W. SUITE 800 WASHINGTON DC 20037 Copy with citationCopy as parenthetical citation