Ex Parte Guler et al

Board of Patent Appeals and Interferences

Jun 3, 2010

10443930 (B.P.A.I. Jun. 3, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE 1
___________ 2
3
BEFORE THE BOARD OF PATENT APPEALS 4
AND INTERFERENCES 5
___________ 6
7
Ex parte KEMAL GULER, 8
DIRK BEYER, and 9
CIPRIANO SANTOS 10
___________ 11
12
Appeal 2009-009563 13
Application 10/443,930 14
Technology Center 3600 15
___________ 16
17
Decided: June 3, 2010 18
___________ 19
20
Before HUBERT C. LORIN, ANTON W. FETTING, and 21
JOSEPH A. FISCHETTI, Administrative Patent Judges. 22
FETTING, Administrative Patent Judge. 23
DECISION ON APPEAL 24
25
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STATEMENT OF THE CASE 1
Kemal Guler, Dirk Beyer, and Cipriano Santos (Appellants) seek review 2
under 35 U.S.C. § 134 (2002) of a final rejection of claims 1-23, the only 3
claims pending in the application on appeal. 4
We have jurisdiction over the appeal pursuant to 35 U.S.C. § 6(b) 5
(2002). 6
SUMMARY OF DECISION1 7
We AFFIRM. 8
THE INVENTION 9
The Appellants invented a computer implemented method for automatic 10
contract monitoring (Specification 4:3-4). 11
An understanding of the invention can be derived from a reading of 12
exemplary claims 1-2, which are reproduced below [bracketed matter and 13
some paragraphing added]. 14
1. A computer-implemented method for automatic contract 15
monitoring, said method comprising: 16
[1] receiving an electronic version of a contract comprising 17
at least one term and at least one penalty; 18
[2] monitoring information relevant to enforcement of said 19
term; 20
[3] receiving a transaction related to said contract; and 21

1 Our decision will make reference to the Appellants’ Appeal Brief (“App.
Br.,” filed September 22, 2008) and Reply Brief (“Reply Br.,” filed February
12, 2008), and the Examiner’s Answer (“Ans.,” mailed December 12, 2008),
and Final Rejection (“Final Rej.,” mailed May 22, 2008).
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[4] automatically determining whether said transaction is 1
compliant with said term using said information. 2
3
2. The computer-implemented method as recited in Claim 1 4
further comprising, provided said transaction is not compliant 5
with said term, automatically assessing said penalty. 6
7
THE REJECTIONS 8
The Examiner relies upon the following prior art: 9
Dan et al. US 2003/0115149 A1 Jun. 19, 2003
Claims 1-11 stand rejected under 35 U.S.C. § 101 as being directed 10
towards non-statutory subject matter. 11
Claims 1-23 stand rejected under 35 U.S.C. § 102(e) as anticipated by 12
Dan. 13
14
ISSUES 15
The issue of whether the Examiner erred in rejecting claims 1-11 stand 16
rejected under 35 U.S.C. § 101 as being directed towards non-statutory 17
subject matter turns on whether the method claimed is tied to a machine in 18
order to satisfy the machine-or-transformation threshold test. 19
The issue of whether the Examiner erred in rejecting claims 1-23 stand 20
rejected under 35 U.S.C. § 102(e) as anticipated by Dan turns on whether 21
Dan describes determining whether a transaction is compliant with a 22
contract and assessing a penalty if the transaction is not compliant. 23
24
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FACTS PERTINENT TO THE ISSUES 1
The following enumerated Findings of Fact (FF) are believed to be 2
supported by a preponderance of the evidence. 3
Facts Related to the Prior Art 4
Dan 5
01. Dan is directed computer based methods and systems for 6
constructing, deploying, executing, and monitoring the 7
performance of electronic contract based service applications 8
across multiple entities (Dan ¶ 0008). 9
02. Dan describes a method that begins with the construction of an 10
electronic contract, where the contract includes specifications for 11
configuration by the parties (Dan ¶ 0010). The contract is 12
deployed to one of the parties and includes setting up a contract 13
monitoring and management infrastructure (Dan ¶ 0011). 14
03. After the contract is negotiated, constructed, and deployed to 15
the party providing service, it is executed and monitored at 16
runtime (Dan ¶’s 0013-0014 and 0043). The contract will consist 17
of parameters with specifications of how these parameters will be 18
measured and compared against (Dan ¶ 0044). A violation 19
detection component for detecting whether a violation of at least a 20
portion of the contract occurs and proposing corrective actions in 21
accordance with specifications in the electronic service contract 22
(Dan ¶’s 0015 and 0044). A violation is detected by comparing 23
the agreement parameters measured to the guarantees specified 24
(Dan ¶ 0058). Upon the detection of a violation, actions are 25
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triggered (Dan ¶ 0055). These actions include the payment of a 1
penalty and the payment of a premium (Dan ¶ 0055). One or 2
more of the primary parties is notified if a violation of a portion of 3
the electronic service contract is detected (Dan ¶ 0018). 4
PRINCIPLES OF LAW 5
101 - Bilski 6
The law in the area of patent-eligible subject matter for process claims 7
has recently been clarified by the Federal Circuit in In re Bilski, 545 F.3d 8
943 (Fed. Cir. 2008) (en banc), petition for cert. filed, 77 USLW 3442 (U.S. 9
Jan. 28, 2009) (No. 08-964). 10
The en banc court in Bilski held that “the machine-or-transformation test, 11
properly applied, is the governing test for determining patent eligibility of a 12
process under § 101.” Bilski, 545 F.3d at 956. The court in Bilski further 13
held that “the ‘useful, concrete and tangible result’ inquiry is inadequate [to 14
determine whether a claim is patent-eligible under § 101.]” Bilski, 545 F.3d 15
at 959-60. 16
The court explained the machine-or-transformation test as follows: “A 17
claimed process is surely patent-eligible under § 101 if: (1) it is tied to a 18
particular machine or apparatus, or (2) it transforms a particular article into a 19
different state or thing.” Bilski, 545 F.3d at 954 (citations omitted). The 20
court explained that “the use of a specific machine or transformation of an 21
article must impose meaningful limits on the claim’s scope to impart patent-22
eligibility” and “the involvement of the machine or transformation in the 23
claimed process must not merely be insignificant extra-solution activity.” 24
Bilski, 545 F.3d at 961-62 (citations omitted). 25
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The court declined to decide under the machine implementation branch 1
of the inquiry whether or when recitation of a computer suffices to tie a 2
process claim to a particular machine. Bilski, 545 F.3d at 962. As to the 3
transformation branch of the inquiry, however, the court explained that 4
transformation of a particular article into a different state or thing “must be 5
central to the purpose of the claimed process.” Bilski, 545 F.3d at 962. As to 6
the meaning of “article,” the court explained that chemical or physical 7
transformation of physical objects or substances is patent-eligible under 8
§ 101. Bilski, 545 F.3d at 962. The court also explained that transformation 9
of data is sufficient to render a process patent-eligible if the data represents 10
physical and tangible objects, i.e., transformation of such raw data into a 11
particular visual depiction of a physical object on a display. . Bilski, 545 12
F.3d at 962-63. The court further noted that transformation of data is 13
insufficient to render a process patent-eligible if the data does not specify 14
any particular type or nature of data and does not specify how or where the 15
data was obtained or what the data represented. Bilski, 545 F.3d at 962 16
(citing In re Abele, 684 F.2d 902, 909 (CCPA 1982) (process claim of 17
graphically displaying variances of data from average values is not patent-18
eligible) and In re Meyer, 688 F.2d 789, 792-93 (CCPA 1982) (process 19
claim involving undefined “complex system” and indeterminate “factors” 20
drawn from unspecified “testing” is not patent-eligible)). 21
22
Anticipation 23
"A claim is anticipated only if each and every element as set forth in the 24
claim is found, either expressly or inherently described, in a single prior art 25
reference." Verdegaal Bros. v. Union Oil Co. of California, 814 F.2d 628, 26
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631 (Fed. Cir. 1987). "When a claim covers several structures or 1
compositions, either generically or as alternatives, the claim is deemed 2
anticipated if any of the structures or compositions within the scope of the 3
claim is known in the prior art." Brown v. 3M, 265 F.3d 1349, 1351 (Fed. 4
Cir. 2001). "The identical invention must be shown in as complete detail as 5
is contained in the ... claim." Richardson v. Suzuki Motor Co., 868 F.2d 6
1226, 1236 (Fed. Cir. 1989). The elements must be arranged as required by 7
the claim, but this is not an ipsissimis verbis test, i.e., identity of terminology 8
is not required. In re Bond, 910 F.2d 831, 832 (Fed. Cir. 1990). 9
ANALYSIS 10
Claims 1-11 rejected under 35 U.S.C. § 101 as being directed towards 11
non-statutory subject matter 12
The Examiner found that the method recited in claims 1-11 fail to recite 13
a statutory process and therefore claims 1-11 are directed towards non-14
statutory subject matter (Ans. 2-3). The Appellants contend that claims 1-11 15
recite a “computer-implemented” method, which is tied to a computer, and 16
therefore is directed towards statutory subject matter (Reply Br. 1). 17
We disagree with the Appellants. The machine prong of the Bilski 18
machine-or-transformation threshold test is satisfied by showing that a 19
claimed process is “tied to a particular machine.” Bilski, 545 F.3d at 954. 20
The claimed invention recites “a computer-implemented method” in the 21
preamble and we find that this recitation to be insufficient to satisfy the 22
machine test. The remaining body of the claim fails to recite any further 23
structure and as such the recitation of “a computer-implemented method” in 24
the preamble is merely a nominal recitation of structure. Although this 25
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phrase ties the claimed process to a computer per se, it does not tie the 1
process to any particular computer or any particular machine. By this 2
phrase, the claim covers tying the process to any general-purpose computer, 3
which is not a particular machine. As such, the claims 1-11 fail to satisfy the 4
machine prong of the machine-or-transformation test. Claims 1-11 recite a 5
method for automatic contract monitor that does not transform a physical 6
object into a different state or thing. As such, claims 1-11 also fail to satisfy 7
the transformation prong of the machine-or-transformation test as well. 8
The Examiner did not err in rejecting claims 1-11 under 35 U.S.C. § 101 9
as being directed towards non-statutory subject matter. 10
11
Claims 1-23 rejected under 35 U.S.C. § 102(e) as anticipated by Dan 12
The Appellants first contend that (1) Dan describes receiving a 13
transaction to establish a contract, but fails to describe receiving a 14
transaction relating to an already established contract, as required by 15
limitation [3] of claim 1 and as incorporated by claims 3-12, 14-18, and 20-16
23 (App. Br. 11). The Appellants also specifically argue that Dan configures 17
a service in accordance with the contract, whereas the claimed invention 18
receives a transaction related to the established contract (App. Br. 11). We 19
disagree with the Appellants. 20
As acknowledged by the Appellants, Dan does describe establishing a 21
contract that includes service parameters with specifications on how to 22
monitor the service parameters (FF 02-03). However, Dan further describes 23
that after the contract is established, it is deployed to a service party who 24
performs the monitoring of that contract (FF 03). That is, an already 25
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negotiated and established contract is deployed to service monitoring parties. 1
The monitoring party receives parameters that are compared to guarantees 2
defined in the contract in order to determine whether performance of the 3
contract is compliant with the terms set forth in the contract (FF 03). As 4
such, Dan describes both the establishing of a contract and the monitoring of 5
an established contract by receiving transaction parameters to determine 6
compliance with the contract and therefore describes limitation [3] of claim 7
1. 8
The Appellants further contend that (2) Dan fails to describe limitation 9
[4] of claim 1 (App. Br. 11-12). The Appellants specifically argue that Dan 10
does not use the term “automatically” in the same context as required by 11
limitation [4]. We disagree with the Appellants. 12
Limitation [4] requires automatically determining whether a transaction 13
is compliant with a contract term. Dan describes a violation detection 14
component that measures whether monitored parameters are within the 15
guaranteed contract terms (FF 03). Dan further describes that the 16
monitoring is performed at runtime (FF 03). That is, the monitoring is 17
performed during runtime and thereby detecting violations as they occur. 18
Although Dan does describe automatically configuring software 19
systems, there is no functional difference between automatically detecting 20
violations as required by the claimed invention and capturing violations at 21
runtime as described by Dan. As such, Dan describes automatically 22
determining whether a transaction is compliant with a contract term as 23
required by limitation [4] of claim 1. 24
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The Appellants additionally contend that (3) Dan fails to describe 1
providing the transaction is not compliant with a term, automatically 2
assessing a penalty, as required by claims 2, 13, and 19 (App. Br. 13-14). 3
The Appellants specifically argue that Dan’s description of correcting 4
actions is merely the reporting of contract violations and proposed corrective 5
actions to appropriate management (Reply Br. 2). We disagree with the 6
Appellants. 7
Dan describes a violating detection component that detects violations 8
(FF 03). Upon the detection of a violation, specific actions can be triggered 9
(FF 03). These specific actions include the payment of a penalty and the 10
payment of a premium (FF 03). The payment of a penalty or premium is the 11
same penalty actions triggered by the claim invention. As such, Dan 12
describes the limitations required by claim 2. 13
CONCLUSIONS OF LAW 14
The Examiner did not err in rejecting claims 1-11 under 35 U.S.C. § 101 15
as being directed towards non-statutory subject matter. 16
The Examiner did not err in rejecting claims 1-23 under 35 U.S.C. 17
§ 102(e) as anticipated by Dan. 18
DECISION 19
To summarize, our decision is as follows. 20
• The rejection of claims 1-11 under 35 U.S.C. § 101 as being directed 21
towards non-statutory subject matter is sustained. 22
• The rejection of claims 1-23 under 35 U.S.C. § 102(e) as anticipated 23
by Dan is sustained. 24
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1
No time period for taking any subsequent action in connection with this 2
appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv). 3
4
AFFIRMED 5
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