Ex Parte Guler et al

Board of Patent Appeals and Interferences

Mar 10, 2010

10683985 (B.P.A.I. Mar. 10, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte KEMAL GULER,
REN WU, and
FRANCOIS RENE PAUL BOULANGER
___________

Appeal 2009-005883
Application 10/683,985
Technology Center 3600
____________

Decided: March 10, 2010
____________

Before HUBERT C. LORIN, JOSEPH A. FISCHETTI, and
BIBHU R. MOHANTY, Administrative Patent Judges.

LORIN, Administrative Patent Judge.

DECISION ON APPEAL
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STATEMENT OF THE CASE
Kemal Guler, et al. (Appellants) seek our review under 35 U.S.C. §
134 (2002) of the final rejection of claims 11-14, 16-21, and 23-36. We
have jurisdiction under 35 U.S.C. § 6(b) (2002). Claims 1-10, 15, and 22
have been canceled.

SUMMARY OF DECISION
We AFFIRM-IN-PART and enter a new ground of rejection pursuant
to 37 C.F.R. 41.50(b). 1

THE INVENTION
This invention is a system and method for controlling feedback in an
auction by customizing feedback rules not earlier then entry of auction rules
into an auction program by an end-user. Specification [0003].
Claim 17, reproduced below, is illustrative of the subject matter on
appeal.
17. A computer system, comprising:
a processor operable to execute instructions of an
auction program;
a network interface coupled to said processor;
wherein the auction program is operable to provide
data to client computers over the network interface
for generation of an auction interface, wherein the
auction interface permits an end-user of an online

1 Our decision will make reference to the Appellants’ Appeal Brief (“App.
Br.,” filed Jan. 19, 2008) and Reply Brief (“Reply Br.,” filed Jun. 30, 2008),
and the Examiner’s Answer (“Answer,” mailed May 1, 2008).

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auction to customize feedback of the online
auction by selecting a feedback rule, and wherein
the feedback rule is from the group consisting of
feedback timing, personalized feedback, and
feedback based on rank.

THE REJECTIONS
The Examiner relies upon the following as evidence of
unpatentability:
Abeshouse
Chambers
US 2002/0099643 A1
US 2005/0055299 A1
Jul. 25, 2002
Mar. 10, 2005

The following rejections are before us for review:
1. Claims 11, 14, 16, and 23-36 are rejected under 35 U.S.C.
§102(b) as being anticipated by Abeshouse.
2. Claims 12-13 and 17-21 are rejected under 35 U.S.C. §103(a)
as being unpatentable over Abeshouse and Chambers.

ISSUES
The first issue is whether claims 11, 14, 16, and 23-36 are anticipated
under 35 U.S.C. § 102(b) by Abeshouse. Specifically, the first major issue
is whether Abeshouse describes a method that when executed allows
selection of a feedback rule for an online auction contemporaneously with an
end-user initiating the online auction. The second major issue is whether
Abeshouse describes a means for executing program and instructions
operable to execute instruction of an auction program, where the auction
program provides an auction interface, which permits an end-user to select
feedback from a pre-defined list of feedback rules.
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The second issue is whether claims 12-13 and 17-21 are unpatentable
over Abeshouse and Chambers. The major issue is whether one of ordinary
skill in the art would have been led by Abeshouse and Chambers to a
computer system having a processor that is operable to execute an auction
program that provides an interface that permits an end-user of an online
auction to customize feedback of the online auction by selecting a feedback
rule.

FINDINGS OF FACT
We find that the following enumerated findings of fact (FF) are
supported by at least a preponderance of the evidence. Ethicon, Inc. v.
Quigg, 849 F.2d 1422, 1427 (Fed. Cir. 1988) (explaining the general
evidentiary standard for proceedings before the Office).
Claim Construction
1. The Specification does not contain an express definition of
“selection.”
2. A definition of “selection” is “[t]he act of selecting or the fact of
being selected.” See Webster’s II New Riverside University
Dictionary 1057 (1984).
3. A definition of “select” is “[t]o pick out form among several:
CHOOSE.” See Webster’s II New Riverside University Dictionary
1057 (1984).
The scope and content of the prior art
Abeshouse
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4. Abeshouse describes a system having a computer processor that
runs a reverse auction, where suppliers supply bids to a purchaser
of goods or services. Abeshouse [0055].
5. Abeshouse describes using user interfaces. Abeshouse [0089]
6. Abeshouse describes using an auction coordinator, obtaining data
from a purchaser, to administer the auction setup and preparation,
including sending a Request for Quotation to the suppliers.
Abeshouse [0017], [0018], and [0022].
7. Abeshouse describes using differential market feedback
technology that includes a variety of differential market feedback
rules that “are used to define when a bidder can view market
feedback.” Abeshouse [0089]. See also Abeshouse [0081]-[0082].
8. Abeshouse states:
By combining feedback rules and feedback types,
an auction 56 may utilize a differential market
feedback format uniquely suited to the
requirements of each auction 56, wherein the
differential market feedback technology
dynamically adjusts the feedback visible to each
bidder 30 depending on their position in the
auction 56 and other factors.
Abeshouse [0083].
Chambers
9. Chambers describes a system for an auction for bidding by
insurance carriers on a request for proposals (RFP) for insurance
coverage. Chambers [0033].
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10. Chambers describes an insurance broker or client creating the RFP
with an insurance engine. Chambers [0038] and [0046].
11. Chambers describes that the clients and brokers have access to the
insurance engine using a web page or similar interface. Chambers
[0050].
12. Chambers describes that the RFP can be created using product
templates, which list possible options that a broker “may then
simply selection an existing option.” Chambers [0060] and [0063].
13. Chambers describes that, in the RFP process, the broker completes
and selects desired insurance products via an interface provided by
the insurance engine. Chambers [0074].
14. Chambers describes that, in the RFP auction process, the broker
can “select” carriers to participate from a list. Chambers [0078].
15. Chambers also describes that, in the RFP auction process, the
broker can specify rules for the bidding and award process,
including rules regarding the scope of information disclosure
during the bidding process. Chambers [0079]-[0080].
16. Chambers describes that after the RFP is completed, “[t]he date
and time of the RFP distribution can be immediate or at a later
time specified by the broker.” Chambers [0081].
17. Chambers states “[w]hile bids can preferably be received any time
after the deliver of the RFP, it is anticipated that the majority of
bids will start being received after the reply date has passed.”
Chambers [0086].
Any differences between the claimed subject matter and the prior art
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18. Abeshouse is silent as to how or when the feedback rules were
selected and is silent as to whether the computer program has
instructions that when executed allows for someone or something
to pick a feedback rule from among many feedback rules.
19. Abeshouse does not describe an interface where feedback rules can
be selected by an end-user.
20. Chambers is silent as to allowing the end user to change selection
of feedback rules for the online auction during the online auction.
The level of skill in the art
21. Neither the Examiner nor the Appellants have addressed the level
of ordinary skill in the pertinent art of online auctions. We will
therefore consider the cited prior art as representative of the level
of ordinary skill in the art. See Okajima v. Bourdeau, 261 F.3d
1350, 1355 (Fed. Cir. 2001) (“[T]he absence of specific findings
on the level of skill in the art does not give rise to reversible error
‘where the prior art itself reflects an appropriate level and a need
for testimony is not shown’”) (Quoting Litton Indus. Prods., Inc. v.
Solid State Sys. Corp., 755 F.2d 158, 163 (Fed. Cir. 1985)).
Secondary considerations
22. There is no evidence on record of secondary considerations of non-
obviousness for our consideration.

PRINCIPLES OF LAW
Claim Construction
During examination of a patent application, a pending claim is given
the broadest reasonable construction consistent with the specification and
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should be read in light of the specification as it would be interpreted by one
of ordinary skill in the art. In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359,
1364 (Fed. Cir. 2004).
[W]e look to the specification to see if it provides
a definition for claim terms, but otherwise apply a
broad interpretation. As this court has discussed,
this methodology produces claims with only
justifiable breadth. In re Yamamoto, 740 F.2d
1569, 1571 (Fed. Cir. 1984). Further, as applicants
may amend claims to narrow their scope, a broad
construction during prosecution creates no
unfairness to the applicant or patentee. Am. Acad.,
367 F.3d at 1364.
In re ICON Health and Fitness, Inc., 496 F.3d 1374, 1379 (Fed. Cir. 2007).
Limitations appearing in the specification but not recited in the claim are not
read into the claim. E-Pass Techs., Inc. v. 3Com Corp., 343 F.3d 1364,
1369 (Fed. Cir. 2003).
Anticipation
“A claim is anticipated only if each and every element as set forth in
the claim is found, either expressly or inherently described, in a single prior
art reference.” Verdegaal Bros., Inc. v. Union Oil Co. of Cal., 814 F.2d 628,
631 (Fed. Cir. 1987).
Obviousness
Section 103 forbids issuance of a patent
when ‘the differences between the subject matter
sought to be patented and the prior art are such that
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the subject matter as a whole would have been
obvious at the time the invention was made to a
person having ordinary skill in the art to which
said subject matter pertains.
KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007). The question of
obviousness is resolved on the basis of underlying factual determinations
including (1) the scope and content of the prior art, (2) any differences
between the claimed subject matter and the prior art, and (3) the level of skill
in the art. Graham v. John Deere Co., 383 U.S. 1, 17-18 (1966). See also
KSR, 550 U.S. at 407 (“While the sequence of these questions might be
reordered in any particular case, the [Graham] factors continue to define the
inquiry that controls.”) The Court in Graham further noted that evidence of
secondary considerations “might be utilized to give light to the
circumstances surrounding the origin of the subject matter sought to be
patented.” 383 U.S. at 17-18.

ANALYSIS
The rejection of claims 11, 14, 16, and 23-36 under §102(b) as anticipated
by Abeshouse.
Claims 11, 14, and 16
The Appellants argue that Abeshouse does not describe “computer-
executable instructions that when executed implement a method allowing
selection of a feedback rule for an online auction contemporaneously with an
end-user initiating the online auction.” App. Br. 8-11 and Reply Br. 2-4.
The Appellants seem to argue that this requires the instructions to provide
“functionality for allowing any person or entity to select a feedback rule for
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an online auction contemporaneously with the end-user initiating the online
auction.” Reply Br. 2. See also App. Br. 9-10. The Appellants argue that
there is “no indication in Abeshouse as to how feedback policies are actually
put into effect” (App. Br. 11) and assert that “it appears in Abeshouse that
the kinds of feedback that are provided during the auction are hard-coded or
hard-wired into the system” (App. Br. 10).
The Examiner responds that claim 11 does not require that the end-
user selects the rule and that “the rule can be selected in any way by any
entity, including automatically based on predetermined conditions” and
continues to assert that paragraphs [0089], [0173], and [0174] along with the
portions cited in the rejection describe this limitation. Answer 6-7. Further,
the Examiner disagrees with Appellants’ assertion that Abeshouse feedback
polices are hard-coded or hard-wired into the system and argues that, even if
the polices are hard-coded, this still meet the claims. Answer 7.
Anticipation is determined by first construing the claims and then
comparing the properly construed claims to the prior art. In re Cruciferous
Sprout Litigation, 301 F.3d 1343, 1346 (Fed. Cir. 2002).
Claim 11 recite computer readable medium contain executable
instructions. When executed, the instructions implement a method that
comprises a step of allowing selection of a feedback rule for an online
auction contemporaneously with an end-user initiating the online auction.
We note that the Specification does not contain an express definition of
“selection.” FF 1. Giving “selection” the broadest reasonable meaning in
light of the Specification, we find that “selection” means the act of picking
from among many. FF 2-3. Therefore, we construe the claims to require a
computer readable medium that contain an instruction that when executed
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allows for someone or something to pick a feedback rule from among many
feedback rules. The “allowing to pick” happening contemporaneously with
an end-user initiating the online auction. The instructions have a structure so
that the step of “allowing selection” occurs when the instructions are
executed and not a structure that implements a selection that is already
made, as the Examiner seems to argue that the claims require (See Answer
6-7.)
“Anticipation requires disclosure of each and every claim limitation in
a single prior art reference, either explicitly or inherently.” In re Omeprazole
Patent Litig., 483 F.3d 1364, 1371 (Fed. Cir. 2007).
To serve as an anticipation when the reference is silent about
the asserted inherent characteristic, such gap in the reference
may be filled with recourse to extrinsic evidence. Such
evidence must make clear that the missing descriptive matter is
necessarily present in the thing described in the reference, and
that it would be so recognized by persons of ordinary skill.
Continental Can Co. USA, Inc. v. Monsanto Co. , 948 F.2d 1264, 1268-69
(Fed.Cir. 1991).
We find that Abeshouse does describe a system having a computer
that is executing instructions that implement an online auction that includes
feedback rules. FF 4 and 7. Abeshouse does describe that the feedback
rules are selected for each auction. FF 8. However, Abeshouse is silent as
to how or when the feedback rules were selected and is silent as to whether
the computer program has instructions that when executed allows for
someone or something to pick a feedback rule from among many feedback
rules. FF 18. We find that it is not inherent that the Abeshouse computer
program has instruction that when executed allows for someone or
something to pick a feedback rule from among many feedback rules. As the
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Appellants argue, it is possible that the selection could have been previously
made and hard-coded into the program. App. Br. 11.
Therefore, we find that the Appellants have overcome the prima facie
showing of anticipation, and we reverse the rejection of claim 11 and claims
14 and 16, dependent thereon, under 35 U.S.C. §102(b) as anticipated by
Abeshouse.

Claims 23 and 24
The Appellants argue claims 23 and 24 as a group. App. Br. 12-16.
We select claim 23 as the representative claim for this group, and the
remaining claim 24 stands or falls with claim 23. 37 C.F.R.
§ 41.37(c)(1)(vii) (2009).
Claim 23 recites,
a means for executing programs and instructions operable to
execute instructions of an auction program . . . where the
auction program is operable to provides data to the client
computer system over the means for communicating operable
to generate an auction interface, and wherein the auction
interface permits an end-user of an online auction to select a
feedback from a pre-defined list of feedback rules for the online
auction.
The Appellants argue that Abeshouse does not describe an auction
program providing data to a client computer system for generating an
auction interface. App. Br. 12-16 and Reply Br. 4-7. However, we note that
the claim is drawn to a system that has a means for executing programs and
instruction operable to execute instructions of an auction program, where the
auction program is further defined in the claim. This limitation is in means-
plus-function format. The function is executing programs and executing
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instructions. The program and instructions are capable of operating to
execute the instructions of the claimed auction program. This limitation is
drawn to the structure of means of executing programs and instructions.
A claim limitation that includes the term “means” is presumed to be
intended to invoke means-plus-function treatment, i.e., treatment under 35
U.S.C. §112, 6th paragraph. Rodime PLC v. Seagate Tech., Inc., 174 F.3d
1294, 1302 (Fed. Cir. 1999). When the presumption has not been rebutted,
means-plus-function claim language must be construed in accordance with
35 U.S.C. §112, paragraph 6, by “look[ing] to the specification and
interpret[ing] that language in light of the corresponding structure, material,
or acts described therein, and equivalents thereof, to the extent that the
specification provides such disclosure.” In re Donaldson Co., Inc., 16 F.3d
1189, 1193 (Fed. Cir. 1994).
The Appellants state that this limitation corresponds to the CPU 104 in
the Specification, but notably does not state that Auction Program 111 stored
in memory 106 corresponds to this limitation. App. Br. 4-5. In the
rejection, the Examiner finds that Abeshouse has a processor. Answer 5.
See also FF 4. The Appellants do not argue that the processor of Abeshouse
in not an equivalent to CPU 104 of the Specification. App. Br. 12-16 and
Reply Br. 4-7. Accordingly, we find that the Appellants have not overcome
the prima facie showing of anticipation, and we sustain the rejection of
claims 23, and claim 24, dependent thereon, under 35 U.S.C. 102(b) as
anticipated by Abeshouse.

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Claims 25-36
The Appellants argue that Abeshouse does not describe an “interface
means for providing a user interface through which an end-user may input
details for an auction, including feedback rules regarding information
provided to bidders about status of the auction.” See Claim 25.
A claim limitation that includes the term “means” is presumed to be
intended to invoke means-plus-function treatment, i.e., treatment under 35
U.S.C. §112, 6th paragraph. Rodime PLC v. Seagate Tech., Inc., 174 F.3d
1294, 1302 (Fed. Cir. 1999). When the presumption has not been rebutted,
means-plus-function claim language must be construed in accordance with
35 U.S.C. §112, paragraph 6, by “look[ing] to the specification and
interpret[ing] that language in light of the corresponding structure, material,
or acts described therein, and equivalents thereof, to the extent that the
specification provides such disclosure.” In re Donaldson Co., Inc., 16 F.3d
1189, 1193 (Fed. Cir. 1994).
The Appellants state that this limitation corresponds to the end-user
interface instructions 112 that perform the claimed function. App. Br. 5.
For the same reasons as discussed above with regards to claim 11, we find
that Abeshouse does not expressly or inherently describe the end-user
interface instructions 112 or an equivalent.
Accordingly, we find that the Appellants have overcome the prima
facie showing of obviousness, and we reverse the rejection of claim 25, and
claims 26-35, dependent thereon, under 35 U.S.C. §102(b) as being
anticipated by Abeshouse.

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The rejection of claims 12-13 and 17-21 under §103(a) as being
unpatentable over Abeshouse and Chambers.
Claim 12
In the arguments, the Appellants grouped claim 12 together with
independent claim 11 and address whether Abeshouse anticipates a
limitation of claim 11. App. Br. 8-12 and Reply Br. 2-4. However, claim 11
was rejected under §102(b) as being anticipated by Abeshouse, while claim
12 was rejected under §103(a) as unpatentable over Abeshouse and
Chambers. The Appellants do not address whether claim 12 is not obvious
over the combination of Abeshouse and Chambers. Accordingly, we find
that the Appellants have not overcome the prima facie showing of
obviousness, and we sustain the rejection of claim 12 under 35 U.S.C.
§ 103(a) as being unpatentable over Abeshouse and Chambers. We note that
we have entered a new grounds of rejection on claim 11 under §103(a) as
being unpatentable over Abeshouse and Chambers below.

Claim 13
Claim 13 depends from claim 11 and recites “the method further
comprising allowing the end user to change selection of feedback rules for
the online auction during the online auction.” The Appellants argue
Abeshouse does not teach allowing the end-user to change selection of
feedback rules for the online auction during the online auction. App. Br. 26-
27. The Appellants further assert that the Examiner has not cited to any
portion of Chambers to teach this limitation. Reply Br. 15.
The Examiner responds that claim 13 was rejected under §103(a)
based on a combination of Abeshouse and Chambers and that the Appellants
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only address Abeshouse. Answer 14. The Examiner admits that the
limitation is not present in Abeshouse. Answer 14. However, the Examiner
does not, in their response or rejection, point to the particular portion of
Chambers that teach these limitations. Answer 5 and 14. Chambers
describes selecting auction rules prior to the auction. FF 11-16.
We find that neither Abeshouse nor Chambers teaches allowing the
end user to change selection of feedback rules for the online auction during
the online auction. FF 20. Further, the Examiner does not provide any other
explanation as to why one of ordinary skill in the art would have found the
limitation obvious. Accordingly, we find that the Appellants have overcome
the prima facie showing of obviousness and, we reverse the rejection of
claim 13 under 35 U.S.C. § 103(a) as being unpatentable over Abeshouse
and Chambers.

Claim 17-21
The Appellants argue claims 17-21 as a group. App. Br. 24-26. We
select claim 17 as the representative claim for this group, and the remaining
claims 18-21 stand or fall with claim 17. 37 C.F.R. § 41.37(c)(1)(vii)
(2009).
The Appellants argue that the combination of Abeshouse and
Chambers discloses or suggest “an auction interface permitting an end-user
of an online auction to customize feedback of the online auction by selecting
a feedback rule from the group consisting of feedback timing, personalized
feedback, and feedback based on rank.” App. Br. 24-25 and Reply Br. 12-
14. The Appellants argue that, while Abeshouse does show various
interfaces, none of the interfaces includes permitting an end-user to select a
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feedback rule (App. Br. 25) and that, while Chambers allows user to modify
certain information, Chambers “does not say anything at all about an auction
interface permitting an end-user of an online auction to customize feedback
of the online auction by selecting from a group.” App. Br. 26. Therefore,
the Appellants argue that no permissible combination of Abeshouse and
Chambers would have rendered claim 17 obvious. App. Br. 26.
The Examiner responds that it is the combination of Abeshouse and
Chambers that teaches this limitation. Answer 13-14. We note that in the
rejection, the Examiner combined Abeshouse and Chambers to teach this
limitation. Answer 5.
We find that the combination of Abeshouse and Chambers teaches
this limitation. The Supreme Court emphasized that “the principles laid
down in Graham reaffirmed the ‘functional approach’ of Hotchkiss, 11
How. 248.” KSR, 550 U.S. at 415. (citing Graham, 383 U.S. at 12 (emphasis
added)), and reaffirmed principles based on its precedent that “[t]he
combination of familiar elements according to known methods is likely to be
obvious when it does no more than yield predictable results.” KSR, 550 U.S.
at 416. The operative question in this “functional approach” is “whether the
improvement is more than the predictable use of prior art elements according
to their established functions.” KSR, 550 U.S. at 415.
Abeshouse describes a system having a computer that is executing
instructions that implement an online auction that includes feedback rules
and Abeshouse describes that the feedback rules are selected for each
auction. FF 7-8. Further, Abeshouse describes users using interfaces. FF 5.
However, Abeshouse is silent as to whether the auction program provides an
interface that allows for an end-user to make the selection of the feedback
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rule from a group of feedback rules. However, Chambers also describes a
computer executing instructions that implement a similar online auction. FF
9-17. Chambers describes using interfaces that present a creator of the
auction with a selection of choice. FF 11.
Given these teachings, one of ordinary skill in the art would permit an
end-user to select a feedback rule from among the feedback rules in
Abeshouse by providing a selection of choices on an interface. The result is
a processor that is operable to execute instruction that provide the interface
with the selection. This is no more than the predictable use of prior art
elements according to their established functions
Accordingly, we find that the Appellants have not overcome the prima
facie showing of obviousness, and we sustain the rejection of claims 17-21
under 35 U.S.C. §103(a) as being unpatentable over Abeshouse and
Chambers.

NEW GROUND OF REJECTION
Pursuant to 37 CFR § 41.50(b), we enter a new grounds of rejection
on claim 11 and 25 under 35 U.S.C. § 103(a) as being unpatentable over
Abeshouse and Chambers and on claims 11-14 and 16 under 35 U.S.C.
§ 101 as being directed to non-statutory subject matter.
Claims 11 and 25 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Abeshouse and Chambers.
We take claim 25 as representative. As discussed above with regard
to the rejection of claim 25 under §102(b), we find that Abeshouse does not
inherently describe an interface means for providing a user interface through
which an end-user may input details for an auction, including feedback rules
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regarding information provided to bidders about status of the auction.
However, for the same reasons as discussed with regard to the rejection of
claim 17 above, we find that this limitation is obvious. Accordingly, we
reject claims 11, 23, and 25 under 35 U.S.C. § 103(a) as being unpatentable
over Abeshouse and Chambers.
Claims 11-14 and 16 are rejected under 35 U.S.C. § 101 as being
directed to non-statutory subject matter.
Taking claim 11 as representative, claim 11 recites “a computer
readable medium containing executable instructions.” We note that the
Specification is silent as the meaning of “computer readable medium.”
Giving claim 11 the broadest reasonable construction, we find that claim 11
encompasses forms of the executable instructions being embodied on a
transitory propagating signal per se. 2 A signal does not fit within at least
one of the four statutory subject matter categories under 35 U.S.C. §101. In
re Nuijten, 500 F.3d 1346, 1357 (Fed. Cir. 2007).
Accordingly, we reject claims 11-14 and 16 under 35 U.S.C. § 101 as
being directed to non-statutory subject matter.

CONCLUSIONS OF LAW
We conclude that the Appellants have not overcome the prima facie
showing of anticipation as to the rejection of claims 23 and 24 or the prima
facie showing of obviousness as to the rejection of claims 12 and 17-21.

2 See U.S. Patent & Trademark Office, Subject Matter Eligibility of
Computer Readable Media, Jan. 26, 2010, available at
http://www.uspto.gov/patents/law/notices/101_crm_20100127.pdf.
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We conclude that the Appellants have overcome the prima facie
showing of anticipation as to the rejection of claims 11, 13, 14, 16, and 25-
36.
We enter a new ground of rejection under 35 U.S.C. § 103(a) on
claims 11 and 25.
We enter a new ground of rejection under 35 U.S.C. §101 on claims
11-14 and 16.

DECISION
The decision of the Examiner to reject claims 12, 23, 24, and 17-21 is
affirmed and to reject claims 11, 13, and 25-36 is reversed.
We enter a new ground of rejection under 35 U.S.C. § 103(a) on
claims 11 and 25.
We enter a new ground of rejection under 35 U.S.C. §101 on claims
11-14 and 16.
This decision contains new grounds of rejection pursuant to
37 C.F.R. § 41.50(b) (effective September 13, 2004, 69 Fed. Reg. 49960
(August 12, 2004), 1286 Off. Gaz. Pat. Office 21 (September 7, 2004)). 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 Appellants, 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,
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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 . . . .

AFFIRMED-IN-PART; 37 C.F.R. § 41.50(b)

mev

HEWLETT-PACKARD COMPANY
INTELLECTUAL PROPERTY ADMINISTRATION
3404 E. HARMONY ROAD
MAIL STOP 35
FORT COLLINS CO 80528