Ex Parte Griffith et al

Board of Patent Appeals and Interferences

Sep 21, 2010

10326386 (B.P.A.I. Sep. 21, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
10/326,386 12/23/2002 Todd Griffith 30346.5 2976
27683 7590 09/21/2010
HAYNES AND BOONE, LLP
IP Section
2323 Victory Avenue
Suite 700
Dallas, TX 75219
EXAMINER
STARKS, WILBERT L
ART UNIT PAPER NUMBER
2129
MAIL DATE DELIVERY MODE
09/21/2010 PAPER
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
________________

Ex parte TODD GRIFFITH and ROBERT ROSS
________________

Appeal 2009-006664
Application 10/326,386
Technology Center 2100
________________

Before JOSEPH L. DIXON, THU A. DANG, and STEPHEN C. SIU,
Administrative Patent Judges.

SIU, 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 2009-006664
Application 10/326,386

2
STATEMENT OF THE CASE
This is an appeal under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 39, 40, 42-51, and 53-60. We have jurisdiction under
35 U.S.C. § 6(b). We reverse.
Invention
The invention relates to computer-based knowledge systems and the
entry of strategic knowledge data items (Spec. 1, ll. 7-9).
Independent claim 39 is illustrative:
39. A knowledge system for solving a problem identified
by a user, the knowledge system comprising:
a display device;
an interactive development environment (“IDE”)
comprising a graphical user interface (“GUI”) presented
on the display device for enabling a user to enter and
modify a collection of knowledge data comprising a
plurality of knowledge data elements defining strategy
for solving the identified problem, wherein the IDE
causes each of the knowledge data elements to be
represented on the display device by an object having at
least one visual characteristic indicative of a type of the
represented knowledge data element and further causes a
relationship between related knowledge data elements to
be graphically represented on the display device by a link
between the objects representing the related knowledge
data elements;
a knowledge engine for converting the collection of
knowledge data to an internal format;
a database for storing the collection of knowledge data;
and
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Application 10/326,386

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means for processing the converted collection of
knowledge data to solution and providing the solution to
a user.
Rejections
Claims 39, 40, 42-51, and 53-60 stand rejected under 35 U.S.C. § 101
as being directed to non-statutory subject matter.
Claims 39, 40, 42-51, and 53-60 stand rejected under 35 U.S.C. § 112,
first paragraph, for failing to disclose a practical application for the claimed
invention.
ISSUE
Appellants submit that the claimed invention “identifies numerous
elements, including, for example, a display device, processing means, an
IDE, database, and knowledge engine, as well as interactions between those
elements, for implementing [a] useful, concrete, and tangible result” (App.
Br. 5).
The Examiner finds that “[i]n their broadest reasonable interpretation,
the claims include computer programs per se (i.e., purely algorithmic
‘objects’ communicating with each other)” (Ans. 5).
Issue: Did the Examiner err in finding that the claimed invention
encompasses non-statutory subject matter?
FINDING OF FACT
The following Finding of Fact (FF) is shown by a preponderance of
the evidence.
The claimed invention includes:
a display device [and] an interactive development
environment (“IDE”) comprising a graphical user
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Application 10/326,386

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interface (“GUI”) presented on the display device . . .
wherein the IDE causes . . . knowledge data elements to
be represented on the display device by an object . . . and
further causes a relationship between related knowledge
data elements to be graphically represented on the
display device by a link between the objects representing
the knowledge data elements
(claim 39).
PRINCIPLES OF LAW
Patentable subject-matter
A claim that recites no more than software, logic, or a data structure
(i.e., an abstraction) does not fall within any statutory category of patentable
subject matter. In re Warmerdam, 33 F.3d 1354, 1361 (Fed. Cir. 1994).
ANALYSIS
Appellants and the Examiner do not agree on whether the subject
matter of the claimed invention is patentable. Based on Appellants’
arguments in the Appeal Brief and on the Examiner’s Answer, we will
decide the appeal of claims 39, 40, 42-51, and 53-60 with respect on the
basis of claim 39 alone. See 37 C.F.R. § 41.37(c)(1)(vii).
The Examiner finds that the claimed invention is not “limited to
practical applications that indicate a specific practical utility” (Ans. 3)
because “Applicant’s claims cover both ‘known and unknown uses’” (id.).
To support this as a basis of rejection, the Examiner relies on Gottschalk v.
Benson, 409 U.S. 63, 68 (1972) (id.). However, the rejected claim in Benson
covered both known and unknown uses of an algorithm (binary-coded
decimal to pure-binary conversion). Id. at 68 and 71-72.
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Application 10/326,386

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Here, the claimed invention uses a display device to output knowledge
data elements (FF). This output entails graphically displaying a relationship
between knowledge data elements (id.). The Examiner has not shown that
this output is insignificant postsolution activity. Thus, we cannot disregard
the display device output limitations. The display device output limitations
preclude a reasonably broad interpretation of the claim language as
encompassing merely an algorithm or software per se. Even if the claim is
broad enough to encompass unknown uses of the invention, this is
insufficient to demonstrate that the claimed invention comprises patent
ineligible subject matter.
For at least these reasons, we find that Appellants have demonstrated
error in the Examiner’s 35 U.S.C. § 101 rejection of claims 39, 40, 42-51,
and 53-60. The Examiner’s 35 U.S.C. § 112, first paragraph, rejection
introduces no additional issues for consideration since it was based upon the
above rejection “as a matter of law” (Ans. 10-11), and thus falls therewith.
CONCLUSIONS OF LAW
Based on the finding of fact and analysis above, we find that the
Examiner erred in finding that the claimed invention encompasses non-
statutory subject matter.
DECISION
We reverse the Examiner’s decision rejecting claims 39, 40, 42-51,
and 53-60 under 35 U.S.C. § 101.
We reverse the Examiner’s decision rejecting claims 39, 40, 42-51,
and 53-60 under 35 U.S.C. § 112, first paragraph.

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Application 10/326,386

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REVERSED

saw

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IP Section
2323 Victory Avenue
Suite 700
Dallas, TX 75219