Ex Parte Guffanti

Patent Trial and Appeal Board

Mar 26, 2013

10528321 (P.T.A.B. Mar. 26, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte STEPHEN GUFFANTI
____________

Appeal 2011-006714
Application 10/528,321
Technology Center 3700
____________

Before GAY ANN SPAHN, BARRY L. GROSSMAN, and
JILL D. HILL, Administrative Patent Judges.

HILL, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Stephen Guffanti (Appellant) seeks our review under 35 U.S.C. § 134
of the Examiner’s decision rejecting claims 15-201. App. Br. 32.

1 Claims 1-14, though pending and rejected, are not appealed. Appellant is
only appealing the rejections of claims 15-20. App. Br. 2.
2 All references to “App. Br.” herein are to the Supplemental Appeal Brief
filed August 13, 2010.
Appeal 2011-006714
Application 10/528,321

2

Appellant’s representative presented argument at oral hearing on March 12,
2013. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
THE INVENTION
Appellant’s claimed invention relates to “systems and methods in
which words are represented using ordinary spelling, and adjacently
positioned clarifying symbols that consist primarily or entirely of the letters
of a standard alphabet are used to assist in sounding out the words.” Spec. 3.
Claim 15 (the sole independent claim) is representative of the subject matter
on appeal and is reproduced below.
15. A method of teaching phonetic reading, comprising:
presenting to a student an alphabet of phonetic symbols
consisting of underlined and non-underlined letters selected
from the group consisting of a, b, c, d, e, f, g, h, i, j, k, l, m, n, o,
p, q, r, s, t, u, v, w, x, y, z;
presenting to the student a word with an ordinary
spelling; and
revising at least part of the word to include at least one of
the phonetic symbols.

THE EVIDENCE
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Guffanti et al., Rocket Phonics, http://www.rocketphonics.com
(August 15, 2001) (hereafter “Rocket Phonics”).

THE REJECTIONS
Appellant seeks review of the following rejections:
Claims 15-20 are rejected under 35 U.S.C. § 101 as directed to a non-
statutory subject matter. Ans. 4-5.
Claims 15-20 are rejected under 35 U.S.C. § 102(b) as anticipated by
Rocket Phonics. Ans. 6-8.3

ANALYSIS
Non-Statutory Subject Matter
Appellant argues claims 15-20 as a group and we select independent
claim 15 as the representative claim. See App. Br. 7-8; see also 37 C.F.R.
§ 41.37(c)(1)(vii) (2011). Claims 16-20 stand or fall with claim 15.
The Examiner finds that claims 15-20 are not directed to statutory
subject matter under 35 U.S.C. § 101. Ans. 10. The Examiner indicates,
with respect to method claims 15-20, that “in order for a claimed process to
be considered statutory[,] it must be directed to more than an abstract idea,”
and “[e]vidence that the process is not an abstract idea [(and is thus eligible
for patenting)] can be found if the process is: (1) tied to a particular machine
or apparatus, or (2) transforms a particular article into a different state or
thing.” Ans. 5. The Examiner further indicates that even when the process
is tied to specific machine or apparatus, “[t]he use of a specific machine or
transformation of an article must impose meaningful limits on the claim’s
scope to impart patent eligibility,” “the involvement of the machine or
transformation in the claimed process must not merely be insignificant extra-
solution activity,” and “the transformation must be central to the purpose of
the claimed process.” Id.

3 The Examiner’s rejection under § 102(b) as unpatentable over Rocket
Phonics is based on a copyright date of August 15, 2001. Final Rej. 4 and
Ans. 3. The Examiner’s Answer lists the Rocket Phonics rejection as being
under § 102(a) (Ans. 6); however, the Examiner later clarifies that the
rejection is being maintained under § 102(b) (Ans. 14).
Appellant argues that method claims 15-20 satisfy the machine-or-
transformation test. App. Br. 7. Appellant notes that “[t]he Federal Circuit
has . . . stated that an ‘article’ is a physical object or substance, or a
representation of a physical object. Id. (citing In re Ferguson, 558 F.3d
1359, 1364 (Fed. Cir. 2009)). Appellant also notes that “[i]n cases where the
article is a representation of a physical object, the underlying physical object
need not . . . undergo a physical transformation in order for the process claim
to qualify as patentable subject matter.” Id. (citing In re Bilski, 545 F.3d
943, 963 (Fed. Cir. 2008)). To the extent Appellant may be arguing that the
claimed “word” is a representation of a physical object that need not
undergo a physical transformation for the claim to qualify as statutory
subject matter under section 101, Appellant has not provided persuasive
arguments in support thereof and we therefore disagree.
Appellant notes that claim 15 recites “presenting to the student a word
with an ordinary spelling” and “revising at least part of the word to include
at least one of the phonetic symbols.” Id. Appellant points out that page 9
of “[t]he Specification teaches that this word is presented on one of several
types of training material: training books[;] teach[er]/parent guides[;] and
games, which are all physical objects.” Id. Appellant argues that “[t]his
training material is then transformed by the addition of phonetic symbols to
the word that is written on the training material,” because “[t]he training
material necessarily needs to undergo a physical transformation for the
words written on the material to be revised by the student.” Id.
We disagree. Page 9 of Appellant’s Specification does not disclose a
revision or transformation, but rather discloses that many or even all words
include prompts, the position of the initial teaching alphabet or ITA
designations adjacent to the letters that they clarify, a brief description of
Figure 19, various embodiments that can employ the Rocket Phonics
concepts, and that
[a] preferred method involves teaching phonetic reading
using an initial teaching alphabet mostly or entirely consisting
of the letters of the English alphabet, in which single ones of
the letters represent corresponding short vowel sounds, and
even more preferably in which combinations of the letters
represent long vowel sounds[,] display a line of words with
ordinary spelling, in which some of letters in the words are
accompanied by adjacent clarifying ones of the letters. In
another aspect, preferred methods include displaying a line of
words with ordinary spelling, and using symbols of the initial
teaching alphabet to accompany some of the letters of the
words. The words can be advantageously arranged in sentences
of at least five words, and the symbols of the ITA can
advantageously be placed below selected letters of at least some
of the words as aids in pronunciation of the selected words.
Spec. 9-10.
Appellant argues transformation of a training material, and we note
that the claims do not recite a training material. The claims recite revising a
word. Appellant tries to link from the claimed “word” to the argued
“training material” with the disclosure on page 9 of the Specification. We
decline to import the training material limitation from the Specification into
the claims. Further, importing the training material into the claims would
not render the claim patentable under § 101. Appellant’s Specification
simply fails to disclose any type of revision or transformation of an article
that changes that article to a different state or thing. There is no disclosure
of words on the training material being revised by the student, or the training
material being transformed by the addition of phonetic symbols to the word
on the training material at any time after the training material has been
printed. Indeed, the step of “revising at least part of the word to include at
least one of the phonetic symbols” is not physically being done by the
student once the word and word with phonetic symbols are printed on the
page in the training material.
Appellant notes “[t]he Supreme Court held that ‘[t]he machine-or-
transformation test is not the sole test for deciding whether an invention is a
patent-eligible process.’” Id. (citing Bilski v. Kappos, 561 U.S. ___ , 130
S.Ct. 3218, 3227 (2010)). Appellant also notes the Supreme Court held that
“execution of a physical process, controlled by a computer program,” has
been held patentable. App. Br. 8 (citing Diamond v. Diehr, 450 U.S. 175,
185 (1981)). Appellant argues that “a physical transformation is performed
by the claims,” and analogizes the claimed word revision to execution of a
physical process controlled by a computer program, stating that “a physical
process, controlled by a student, is being performed; namely, the
transformation of one word to another word by adding phonetic symbols to a
training material.” Id.
The Examiner responds that the outstanding 35 U.S.C. § 101 rejection
“is not solely based on the machine-or-transformation test; rather, the
machine-or-transformation test is utilized as one of the investigative tools
for determining patentability,” and that “Appellant's comparison of the
execution of a physical process controlled by a computer program with
the current invention is extensively unrelated.” Ans. 11-12. The Examiner
explains that “[a] physical process that is controlled by a computer may
undergo some changes depending on the type of program.” Ans. 12. The
Examiner continues “[f]or instance, a program that is designed to cut or
shape physical objects (such as wood or steel) will shape or cut the physical
objects when the program is executed on a machine (i.e., when the program
is integrated with the machine).” Id. The Examiner finds that Appellant’s
claimed invention provides no such transformation:
First of all, as currently claimed, the alphabets and
symbols are not presented as physical objects; rather, the
alphabets and the symbols are presented as elements written or
painted on a surface where there are no functional relationships
between the letters or symbols and the substrate (i.e. these are
nonfunctional printed or descriptive matters).
Secondly, the alphabets along with their symbols
presented or displayed to the student will remain as they are
(i.e. they do not change) no matter what the student does. This
is because, as already indicated above, these are merely
elements painted on a surface; and therefore, in the current case,
there is no such machine or process that transforms a physical
object.
Ans. 12-13.
We agree with the Examiner that there is no machine or
transformation recited in claims 15-20. Despite claim 15’s recitation of
“revising,” we conclude that the student is not physically performing
revising because once the training manual is printed with both the word
and/or the word with phonetic symbols on a page no physical act of
“revising” is taking place and therefore, the claim does not recite any sort of
transformation. More particularly, we conclude that the claims do not recite,
and Appellant’s Specification does not support, the transformation of a word
by revising that word by adding phonetic symbols once the word and/or the
word with phonetic symbols are printed in a training material. According to
the teachings set forth in Appellant’s Specification, if such a “revision” ever
occurs, it occurs before the word and/or the word with phonetic symbols are
printed in the training material. Because claims 15-20 are tied to neither a
particular machine or apparatus, nor transform a particular article into a
different state or thing, we sustain the Examiner’s rejection of claims 15-20
under 35 U.S.C. § 101 as directed to non-statutory subject matter.
Anticipation based on Rocket Phonics
Our affirmance of the rejection of claims 15-20 on one ground
specified by the Examiner, namely, under § 101 as directed to non-statutory
subject matter, constitutes a general affirmance of the decision of the
Examiner on those claims. 37 C.F.R. § 41.50(a). We do not reach the
rejection of claims 15-20 under § 102(b) as anticipated by Rocket Phonics
separately, since the rejection under § 101 is dispositive as to all of the
claims involved in the appeal.

DECISION
We affirm the rejection of claims 15-20 under 35 U.S.C. § 101 as
directed to unpatentable subject matter.
We do not reach the merits of the rejection of claims 15-20 under 35
U.S.C. § 102(b) as anticipated by Rocket Phonics.

AFFIRMED

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