Ex Parte Goodwin et al

Board of Patent Appeals and Interferences

Mar 15, 2010

10341588 (B.P.A.I. Mar. 15, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
________________

Ex parte JAMES P. GOODWIN, CARL J. KRAENZEL,
ANDREW L. SCHIRMER, JEFF REAGEN, and DAVID L. NEWBOLD
________________

Appeal 2009-010675
Application 10/341,588
Technology Center 2100
________________

Decided: March 15, 2010
________________

Before JAMES D. THOMAS, THU A. DANG, and STEPHEN C. SIU,
Administrative Patent Judges.

THOMAS, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2009-010675
Application 10/341,588

2
I. STATEMENT OF THE CASE
This is an appeal under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 1-19. We have jurisdiction under 35 U.S.C. § 6(b).1
We vacate all of the rejections before us under 35 U.S.C. § 103 and
we institute a new ground of rejection within the provisions of 37 C.F.R. §
41.50(b).

II. INVENTION
In general, the claimed invention relates to a
knowledge system that automatically provides
information to users based on predetermined affinities
between the users and topical categories. This may
include periodically monitoring information stored within
a data repository and notifying a given user of new or
changed information within the data repository that is
topically related to one or more topical categories with
which the given user has an established affinity. Such
functionality enables the user to keep abreast of the most
recent information related to topical categories that have
some significance to her.

(App. Br. 2-3).

III. ILLUSTRATIVE CLAIM
1. A knowledge processing system comprising:

a monitoring module that periodically monitors contents
of documents stored in one or more data repositories;

1 Attendance at the requested Oral Hearing set for March 11, 2010 was
waived in a facsimile communication received on January 25, 2010.
Appeal 2009-010675
Application 10/341,588

3
a determining module that determines one or more
matches between (i) the contents of the documents stored in the
one or more data repositories monitored by the monitoring
module and (ii) an affinity of a user, wherein the determining
module automatically determines the one or more matches
between the contents of the documents and the affinity of the
user by comparing the contents of the documents to the affinity
while the monitoring module monitors the contents of the
documents;

a gathering module that gathers the one or more
documents with contents that match the affinity of the user
from the one or more data repositories based on the
determination of the one or more documents with contents that
match the affinity of the user by the determining module; and

a notification module that notifies the user that the one or
more documents with contents matching the user's affinity have
been gathered by the gathering module.

IV. PRIOR ART AND EXAMINER’S REJECTIONS
The Examiner relies on the following references as evidence of
unpatentability:
Gilmour 6,154,783 Nov. 28, 2000
Krysiak 2002/0078003 A1 Jun. 20, 2002
(filed Dec. 15, 2000)
Abe 6,883,001 B2 Apr. 19, 2005
(filed Jan. 16, 2001)

All claims on appeal, claims 1-19, stand rejected under 35 U.S.C. §
103. In a first stated rejection, the Examiner relies upon Gilmour alone as to
claims 1, 4-7, 10-13, and 16-18. In a second stated rejection as to claims 2,
8, and 14, the Examiner additionally relies upon Abe. Lastly, in a third
Appeal 2009-010675
Application 10/341,588

4
stated rejection of claims 3, 9, 15, and 19, the Examiner relies upon Gilmour
in view of Krysiak.

V. FINDING OF FACT
Appellants’ disclosed Figures 1 and 1A illustrate a software-based
system that utilizes a spider component 104 that invokes various spider
processes or threads that explore for sources of data. These sources of data
may include repositories 102 which are disclosed to be software
and/database functionalities themselves.
With respect to flowchart Figure 1C, the paragraph bridging
Specification pages 23 and 24 describes this figure in this manner:
According to one embodiment of the invention illustrated
in FIG. 1 C, in an operation 184, a user may specify one or
more repositories 102 from which information for knowledge
processing should be gathered. In an operation 185, spider
component 104 monitors information content in the one or
more user specified repositories. In a decision operation 186,
spider component 104 may determine whether the information
content in the user specified repositories matches or otherwise
corresponds to one or more user affinities. If there is no match
or other correspondence, in an operation 187, spider component
104 ignores the information content. If there is a match or
correspondence, in an operation 188, spider component 104
gathers the matching information content. In some
embodiments, the match or correspondence determination may
be performed by various known character matching algorithms.
In other embodiments, the match or correspondence
determination may be performed by various known text
matching algorithms. In one embodiment, spider component
104 may determine a context match for the matching
information to the one or more user affinities before gathering
the matching information (not otherwise illustrated). In an
operation 189, spider component 104 may then notify the user
that the information content matching or relevant to the one or
Appeal 2009-010675
Application 10/341,588

5
more user affinities has been accessed. In an operation 190, the
user may approve or disapprove the presentation of the
information content by spider component. If approved, in an
operation 191, spider component 104 may present the
information. If disapproved, in an operation 195, the
information content may be stored for future presentation.

VI. ANALYSIS
We vacate the rejections under 35 U.S.C. § 103 because we conclude
that claims 1-19 are “barred at the threshold by § 101.” In re Comiskey, 554
F.3d 967, 973 (Fed. 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).

VII. 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), reh’g en banc denied, 515 F.3d 1361 (Fed. Cir.
2008), cert. denied, 127 S. Ct. 70 (2008). 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
Appeal 2009-010675
Application 10/341,588

6
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 188. 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).

ANALYSIS
With this background in mind, claims 1-19 are rejected under 35
U.S.C. § 101.
Consistent with our earlier-noted invention statement from
Appellants’ Brief, the disclosed and claimed invention is directed to the
spider program functionality 104 in Figures 1 and 1A. The claimed modules
of independent claim 1 comprising a monitoring module, a determining
module, a gathering module, and a notification module are software function
modules that broadly track the functional flow chart in Figure 1C consistent
with our Finding of Fact statement noted earlier. The same modules provide
the claimed means within the software-based system within independent
claim 13. The functional recitations comprising the various steps in method
independent claim 7 are consistent with the functions provided by the
respective software modules of independent claim 1 as well.
Thus, the subject matter of independent claims 1, 7, and 13 on appeal
directly recite software (modules) per se which are not consistent with the
earlier-noted case law of permitted statutory categories of invention within
35 U.S.C. § 101. The claims then comprise abstract ideas in the form of
Appeal 2009-010675
Application 10/341,588

7
software, logic, data structures that fall outside of the statutory categories of
invention.

IX. CONCLUSIONS AND DECISION
We have pro forma reversed the three outstanding rejections under 35
U.S.C. § 103 that encompass all claims on appeal, claims 1-19. We have
instituted a new ground of rejection within 37 C.F.R. § 41.50(b). This new
rejection of all claims on appeal, claims 1-19, 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
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 ….

REVERSED
37 C.F.R. § 41.50(b)

Appeal 2009-010675
Application 10/341,588

8

nhl

PILLSBURY WINTHROP SHAW PITTMAN, LLP
c/o SUSAN TRADER
1650 TYSONS BOULEVARD
P.O. BOX 10500
MCLEAN, VA 22102