Ex Parte Gusler et al

Patent Trial and Appeal Board

Oct 23, 2012

09935396 (P.T.A.B. Oct. 23, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte CARL P. GUSLER, RICK A. HAMILTON II, and
PETER S. WEATHERBY
____________

Appeal 2010-010056
Application 09/935,396
Technology Center 2400
____________

Before DENISE M. POTHIER, BRUCE R. WINSOR, and JOHN A.
EVANS, Administrative Patent Judges.

EVANS, Administrative Patent Judge

DECISION ON APPEAL

This is an appeal under 35 U.S.C. § 134(a) involving claims to
methods for automated project accountability. The Examiner has rejected
the claims variously as obvious, indefinite, and directed to non-statutory
subject matter. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART and enter a new ground of rejection under
37 C.F.R. § 41.50(b).

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STATEMENT OF THE CASE
The claimed invention “provides a method for automated project
accountability comprising, determining at least one decision maker of a
project preparation, determining a readiness category for the decision maker,
and providing a readiness category rating for the readiness category.”
(Abstract).
Claims 1-22 are on appeal. Exemplary claim 1reads as follows, with a
disputed limitation italicized:
1. A method for automated project accountability comprising:
determining at least one decision maker of a project
preparation;
electronic forum determining a readiness category for
the decision maker;
providing a readiness category rating for the readiness
category;
determining a decision process for the readiness category
and readiness category rating;
conducting a project assessment as a function of the
decision process; and
determining a project readiness as a function of the
project assessments.

The Examiner relies on the following reference documents as
evidence of unpatentability:
Frye US 2001/0032105 A1 Oct. 18, 2001
(filed Jan. 2, 2001)
Helzerman US 6,901,372 B1 May 31, 2005
(filed Apr. 5, 2000)
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Gauger US 2007/0288292 A1 Dec. 13, 2007
(filed Oct. 24, 2001
claiming priority to
Provisional App. No.
60/242,853, filed Oct.
24, 2000)

The claims stand rejected as follows:
1. Claims 9-15 are rejected under 35 U.S.C. § 112, ¶2, as being
indefinite. (Ans. 3-6). 1
2. Claims 1-8 are rejected under 35 U.S.C. § 101 as directed to non-
statutory subject matter. (Ans. 6).
3. Claims 1-8 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Frye, Helzerman, and Gauger. (Ans. 7-10).
4. Claims 9-22 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Frye and Helzerman. (Ans. 10-12).

REJECTIONS UNDER 35 U.S.C. § 101
Issue
Claims 1-8 stand rejected under 35 U.S.C. § 101 as directed to non-

1 Rather than repeat the Examiner’s positions and Appellants’ arguments in
their entirety, we refer to the following documents for their respective
details: the Appeal Brief (App. Br.) filed May 27, 2009, the Examiner’s
Answer (Ans.) mailed May 5, 2010, and the Reply Brief (Reply Br.) filed
June 24, 2010.

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statutory subject matter. (Ans. 6). The Examiner finds that claims 1-8
“recite purely mental steps and must be tied to another statutory class (the
thing or product) to which is tied, for example by identifying the apparatus
that accomplishes the method steps . . . .” (Ans. 6). Appellants argue that
claim 1 has been amended to recite an “electronic forum determining a
readiness category for the decision maker.” Appellants argue that the
“collaborative mechanism could be an electronic forum (([sic] for discussion
over [a] long period of time,) or could be a “chat” or instant messaging
technology (for focused, short period “real time” discussion.)” (App. Br. 11)
(citing Spec. 6:28-30). Appellants further argue that a person of ordinary
skill in the art would have known:
that the electronic forum is a computer mediated apparatus that
includes at least two computers, e.g., as shown in Figure 1 as
communication devices 109, network server 136, network server 137,
and/or application server 165. Accordingly, Claim 1 recites a
particular machine, thus satisfying the criterion set forth in In re
Bilski.

(App. Br. 11).
Analysis
Patent-eligible subject matter within 35 U.S.C. § 101 is limited to
machines, manufactures, processes, and compositions of matter. Claims
covering material beyond these four statutory categories fall 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). The
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unpatentability of abstract ideas was recently reaffirmed by the U.S.
Supreme Court in Bilski v. Kappos, 130 S.Ct. 3218, 3222 (2010). One
cannot circumvent the principles articulated by the Court through the use of
clever claim drafting tactics involving the nominal addition of generic
servers, computers, or networks. See Cybersource Corp. v. Retail Decisions,
Inc., 654 F.3d 1366, 1374-75 (Fed. Cir. 2011) (noting a § 101 analysis looks
to the underlying invention for patent-eligibility purposes regardless of the
statutory category the claim’s language is written to invoke literally). Thus,
even where a claim appears to apply an idea or concept in combination with
a nominal claim to generic structure(s), one must ensure that it does not in
reality seek patent that idea in the abstract. Cf. Diamond v. Diehr, 450 U.S.
175, 191 (1981).
The steps recited in the methods of claims 1-8 involve only “well-
understood, routine, conventional activity previously engaged in by
researchers in the field” (See Mayo Collaborative Services v. Prometheus
Laboratories, Inc., 132 S.Ct. 1289 (2012). For example, the first step of the
method of claim 1 involves “determining at least one decision maker.”
However, the claimed “determining” is not limited to a computer, nor is it
constrained by any particular algorithm or metric. Additionally, the recited
“electronic forum” in the disclosure is not limited to an actual computer (see
App. Br. 6 (citing to Spec. 6:23-30)) and, as broadly as recited, includes no
more than a mechanism or software -- not an actual computer.
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Moreover, even assuming that the recited “electronic forum” requires
a computer and thus literally fits into a statutory category under § 101, the
underlying invention for claim 1 is a process for modifying an existing
business unit (see Spec. 1:6-7) and not to a specific computer. See
Cybersource, 654 F.3d at 1374-75. Also, simply reciting the “electronic
forum” for performing a step in the algorithm does not turn any
purportedly-recited computer in claim 1 into a special-purpose machine. See
id. (citations omitted). Nor are claims 1-8 limited so as to not encompass
substantially all practical applications of the mathematical algorithm even in
one field of use. See Ex parte Gutta, 93 USPQ2d 1025, 1031 (BPAI 2009)
(precedential) (holding that system claim 14 was non-statutory under
§ 101despite reciting a memory and processor).
In view of the foregoing, we sustain the rejection of claims 1-8 as
directed to non-statutory subject matter under 35 U.S.C. § 101.

REJECTIONS UNDER 35 U.S.C. § 103(a)
Issue
The Examiner has rejected claims 1-8 under 35 U.S.C. § 103(a) as
obvious over Frye, Helzerman, and Gauger. The Examiner has rejected
claims 9-22 under 35 U.S.C. § 103(a) as obvious over Frye and Helzerman.
The Examiner concedes that Frye does not teach the claim 1 recitation
“determining a readiness category for the decision maker.” However, the
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Examiner finds Helzerman teaches this limitation at column 4, ll. 41-64.
(Ans. 7). Appellants contend that:
Helzerman picks technologies that are either “best in class” or
that are “state of-the-art”. In contrast, claims 1, 9, and 16 recite,
“determining a readiness category for the decision maker”. In
particular, claims 1, 9, and 16 recite that the readiness category
is for the decision maker, rather than for the project itself. Thus,
actual progress of the project is not addressed in this particular
claim limitation, and the readiness category is for the decision
maker. Moreover, the Examiner does not use Gauger to cure
the absence of Frye or Helzerman to teach this claimed feature.

(App. Br. 14).
The issue with respect to this rejection is whether the cited art teaches
the disputed limitation.
Analysis
The Examiner interprets “determining a readiness category of project
for the decision maker” as determining the readiness category of project for
the decision maker’s use. (Ans. 14). The Examiner is “required to give all
‘claims their broadest reasonable construction’ particularly with respect to
. . . [the] use of the open-ended term ‘comprising.’” In re Suitco Surface,
Inc., 603 F.3d 1255, 1260 (Fed. Cir. 2010) (citation omitted). However,
“[t]he broadest construction rubric coupled with the term ‘comprising’ does
not give the PTO an unfettered license to interpret claims to embrace
anything remotely related to the claimed invention. Rather, claims should
always be read in light of the specification and teachings in the underlying
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patent.” Id. (citation omitted). Appellants contend that “claims 1, 9, and 16
recite that the readiness category is for the decision maker, rather than for
the project itself. Thus, actual progress of the project is not addressed in this
particular claim limitation, and the readiness category is for the decision
maker.” (App. Br. 14). Appellants’ asserted distinction is supported by the
disclosure of the Specification:
One aspect of the invention provides a method for automated
project accountability comprising, determining at least one
decision maker of a project preparation, determining a readiness
category for the decision maker, and providing a readiness
category rating for the readiness category.

(Spec. 2:15-18; see also Spec. 5:30-6:2).
We thus find that Helzerman does not teach the disputed limitation.
Moreover, Gauger is not relied upon to teach this limitation. Rather, Gauger
is relied upon to teach an electronic forum. (Ans. 8). We therefore decline
to affirm the rejection of claims 1, 9, and 16 under 35 U.S.C. § 103(a).
Claims 2, 10, and 17 depend respectively from claims 1, 9, and 10. (App.
Br. 14). Claims 3-8, 11-15, and 18-22 depend directly or indirectly from
claims 1, 9, and 16, respectively. (App Br. 23). These dependent claims
incorporate by reference the disputed limitations of claims 1, 9, and 16,
which distinguish over the cited art, as discussed above. We, therefore,
decline to sustain the rejection of claims 1-22 under 35 U.S.C. § 103(a).

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REJECTIONS UNDER 35 U.S.C. § 112, ¶ 2
Issue
Claims 9-15 are rejected under 35 U.S.C. § 112, ¶2, as being
indefinite. This rejection was designated as a new ground. (Ans. 3-6). The
Examiner finds that the claims recite various means plus function
limitations. The Examiner finds that various “portions of the specification
and drawings may appear to describe the corresponding structure for
performing the claimed function.” (Ans. 4-5). But, the Examiner continues,
“the specification and drawings do not disclose sufficient corresponding
structure, material or acts for performing the claimed function.” (Ans. 5).
For example, the Examiner finds that no “algorithm is disclosed showing the
basis for determining a decision maker.” (Ans. 5). Appellants allege
Specification support for specific algorithms to discharge each claimed
means limitation. (See generally Reply Br.).

Analysis
Where, as here, the claims involve a system with means-plus-function
limitations, the courts have “consistently required that the structure disclosed
in the specification [corresponding to the means-plus-functions limitations]
be more than simply a general purpose computer or microprocessor.”
Aristocrat Techs. Austl. Pty Ltd. v. Int’l Game Tech., 521 F.3d 1328, 1333
(Fed. Cir. 2008). The Specification must “disclose an algorithm for
performing the claimed function.” Net MoneyIN, Inc. v. VeriSign, Inc., 545
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F.3d 1359, 1367 (Fed. Cir. 2008). The Specification can express the
algorithm “in any understandable terms including as a mathematical
formula, in prose, or as a flow chart, or in any other manner that provides
sufficient structure.” Finisar Corp. v. DirecTV Grp., Inc., 523 F.3d 1323,
1340 (Fed. Cir. 2008) (internal citation omitted). Simply disclosing software,
however, “without providing some detail about the means to accomplish the
function[,] is not enough.” Id. at 1340–41 (citation omitted).
Appellants’ Specification provides a flow-chart with boxes labeled
corresponding to the functions arguably performed by the claimed means.
For example, the passages cited by Appellants as disclosing the structure of
the “means for determining a decision process for the readiness category and
readiness category rating” (App. Br. 6-7, citing Spec. 7:11-18; Reply Br. 7,
citing Spec, 7:5-12) describe receiving input from a user but do not describe
a structure (i.e., computer with an adequately detailed algorithm) that
performs the recited function of the means.
Moreover, with reference to the “means for determining a decision
process for the readiness category and readiness category rating,”
Appellants’ Specification discloses: “[i]n one embodiment of the invention,
the project decision maker may select, edit, create and approve the various
readiness categories.” (Reply Br. 7)(citing Spec. 7:5-6). Thus, Appellants
admit that the project decision maker, a human, performs acts that
correspond to the structure of the claimed “means.”

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Where, as here, our inquiry reveals that no embodiment discloses a
structure, other than a human, which corresponds to the claimed means, the
claim is invalid for failure to satisfy the definiteness requirement of § 112, ¶
2. Cardiac Pacemakers, Inc. v. St. Jude Medical, Inc., 296 F.3d 1106, 1114
(Fed. Cir. 2002)(citing Budde v. Harley-Davidson, Inc., 250 F.3d 1369,
1376 (Fed. Cir. 2001); In re Dossel, 115 F.3d 942, 945 (Fed. Cir. 1997)).
Additionally, Appellants also state that the disclosure describes a
“means for determining a readiness category for the [project] decision
maker” at the Specification on page 2, lines 19-28. (Reply Br. 5-6)2.
However, this only describes the project decision maker assigning the
readiness category for each contributing decision maker and a senior
member providing additional authority to a decision maker. But how the
determination is carried out using an algorithm or programming or how this
“determining” function is clearly associated with any structure discussed in
the disclosure has not been sufficiently described by Appellants.
We, therefore, sustain the rejection of claim 9 and of claims 10-15
which depend from claim 9.
We, therefore, agree with the Examiner that the Specification and
drawings do not disclose sufficient corresponding structure, material or acts
for performing the claimed function. We will therefore, sustain the rejection
of claims 9-15 as indefinite under 35 U.S.C. § 112, ¶2.

2 We assume the reference to page 2 represents a typographical error. We
find the cited text at Specification page 7.
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NEW GROUNDS OF REJECTION UNDER 37 C.F.R. § 41.50(b)
Pursuant to our authority under 37 C.F.R. § 41.50(b) we reject claims
16-22 under 35 U.S.C. § 101 as directed to non-statutory subject matter.
Claim 16 recites “[a] computer readable medium storing a computer
program[.]”
The United States Patent and Trademark Office (USPTO) is obliged
to give claims their broadest reasonable interpretation consistent with the
specification during proceedings before the USPTO. See In re Zletz, 893
F.2d 319 (Fed. Cir. 1989)(during patent examination the pending claims
must be interpreted as broadly as their terms reasonably allow). Where, as
here, the Specification is silent, the broadest reasonable interpretation of a
claim drawn to a computer readable medium covers forms of non-transitory
tangible media and transitory propagating signals per se in view of the
ordinary and customary meaning of computer readable media. See MPEP
§ 2111.01. When the broadest reasonable interpretation of a claim covers a
signal, per se, the claim must be rejected under 35 U.S.C. § 101 as covering
non-statutory subject matter. See In re Nuijten, 500 F.3d 1346, 1356-57
(Fed. Cir. 2007) (transitory embodiments are not directed to statutory subject
matter). The office has suggested that “a claim drawn to a computer
readable medium that covers both transitory and non-transitory
embodiments may be amended to narrow the claim to cover only statutory
embodiments to avoid a rejection under 35 U.S.C. §101 by adding the
limitation ‘non-transitory’ to the claim.” Kappos DJ, Subject Matter
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Eligibility of Computer Readable Media, 1351 Off. Gaz. Pat. Office 212
(Feb. 23, 2012).

SUMMARY
We AFFIRM the rejection of claims 1-8 as directed to non-statutory
subject matter under 35 U.S.C. § 101.
We REVERSE the rejection of claims 1-22 as obvious under
35 U.S.C. § 103(a).
We AFFIRM the rejection of claims 9-15 as indefinite under
35 U.S.C. § 112, second paragraph.
Pursuant to 37 C.F.R. § 41.50(b), we newly reject claims 16-22 under
35 U.S.C. §101 as directed to non-statutory subject matter.
Rule 37 C.F.R. § 41.50(b) states that “[a] new ground of rejection
pursuant to this paragraph shall not be considered final for judicial review.”
Furthermore, 37 C.F.R. § 41.50(b) also provides that Appellant, 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 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, 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. . . .
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No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED-IN-PART
37 C.F.R. § 41.50(b)

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