Ex Parte Gutta et al

Board of Patent Appeals and Interferences

Aug 7, 2009

10014192 (B.P.A.I. Aug. 7, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte SRINIVAS GUTTA and KAUSHAL KURAPATI
____________

Appeal 2008-4366
Application 10/014,192
Technology Center 2400
____________

Decided: August 10, 2009
____________

Before MICHAEL R. FLEMING, Chief Administrative Patent Judge,
ALLEN R. MACDONALD, Vice Chief Administrative Patent Judge, and
KENNETH W. HAIRSTON, SCOTT R. BOALICK, and JOHN A.
JEFFERY, Administrative Patent Judges.

PER CURIAM.

DECISION ON APPEAL

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SUMMARY OF THE DECISION
We affirm-in-part and enter new grounds of rejection under 37 C.F.R.
§ 41.50(b). We affirm the Examiner’s rejection under 35 U.S.C. § 101 of
(1) method claims 1, 3-9, 11-13, and 21-23; (2) system claims 14 and 16-18;
and (3) article of manufacture claim 19.
Although we find that claims 14 and 19 are on their face directed to
the “machine” or “manufacture” category of patent-eligible subject matter in
Section 101, we conclude that claim 14, its dependent claims 16-18, and
claim 19 are nonetheless nonstatutory. We reach our conclusion that claims
14-19 are nonstatutory based on the following two-part inquiry to determine
whether the scope of the claimed invention encompasses one of the
judicially-created exceptions:
For a claimed machine (or article of manufacture)1 involving a
mathematical algorithm,

(1) Is the claim limited to a tangible practical application, in
which the mathematical algorithm is applied, that results in a
real-world2 use3 (e.g., “not a mere field-of-use label having no
significance”)?4

1 Notwithstanding the court’s statement in In re Nuijten, 500 F.3d 1346,
1356 n.7 (Fed. Cir. 2007) (“We have never held that a manufacture is ever
required to produce any result.”), if an applicant chooses to claim the
manufacture in terms of applying a mathematical algorithm (e.g.,
Appellants’ claim 19), then this two-part inquiry applies to determine if the
claim is directed to eligible subject matter under § 101.
2 “Real-world” is not sufficient alone to establish patent-eligible subject
matter absent tangibility. See In re Nuijten, 500 F.3d at 1356.
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(2) Is the claim limited so as to not encompass substantially all
practical applications of the mathematical algorithm5 either “in
all fields” of use of the algorithm or even in “only one field?”6

If the machine (or article of manufacture) claim fails either
prong of the two-part inquiry, then the claim is not directed to
patent eligible subject matter.

We designate our rationale for rejecting claims 14 and 16-19
under § 101 as a new ground of rejection.
In addition to this new ground of rejection, we reverse the Examiner’s
rejection of claim 20 under 35 U.S.C. § 101, and enter a new ground of
rejection for system claim 20 under 35 U.S.C. § 112, second paragraph on
the same basis set forth in Aristocrat Techs. Austl. Pty Ltd. v. Int’l Game
Tech., 521 F.3d 1328 (Fed. Cir. 2008).

3 See Gottschalk v. Benson, 409 U.S. 63, 68 (1972) (noting that the claim at
issue was “so abstract and sweeping as to cover both known and unknown
uses . . . .”).
4 See In re Alappat, 33 F.3d 1526, 1544 (Fed. Cir. 1994) (en banc) (noting
that the claim’s recitation of “a rasterizer for creating a smooth waveform is
not a mere field-of-use label having no significance.”).
5 Benson, 409 U.S. at 71-72.
6 See In re Bilski, 545 F.3d 943, 957 (Fed. Cir. 2008) (en banc), cert.
granted, 77 U.S.L.W. 3442, 3653, 3656 (U.S. June 1, 2009) (No. 08-964)
(citing Diamond v. Diehr, 450 U.S. 175, 193 n.14 (1981)) (“[I]neligibility
under § 101 ‘cannot be circumvented by attempting to limit the use of the
formula to a particular technological environment.’”).
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We do not reach the question of whether the Examiner’s rejection of
claims 1, 3-7, 9, 11, 12, 14, 16, 17, and 19-23 under 35 U.S.C. § 102(b) as
being anticipated by Chislenko is in error.
We also do not reach the question of whether the Examiner’s rejection
of claims 8, 13, and 18 under 35 U.S.C. § 103(a) as being unpatentable over
Chislenko and Keyes is in error.
The new grounds of rejection in this decision are pursuant to our
authority under 37 C.F.R. § 41.50(b). The rule is permissive and merely
provides the Board the option of making a new ground of rejection. Manual
of Patent Examining Procedure (MPEP) § 1213.02 (8th ed., rev. 3 Aug.
2005). Making a new ground of rejection is therefore an exercise of
discretion made solely at the option of the panel and is not a mandatory
requirement. See id. Thus, in the opinion that follows, we have chosen to
enter only selected new grounds of rejection.

STATEMENT OF THE CASE 7
Appellants appeal the Examiner’s rejection of claims 1, 3-9, 11-14,
and 16-23 under 35 U.S.C. § 134(a). Claims 2, 10, and 15 are canceled.
App. Br. 2. We have jurisdiction under 35 U.S.C. § 6(b).

7 Throughout this opinion, we refer to: (1) the Appeal Brief filed August 6,
2007 (“the Appeal Brief”); (2) the Examiner’s Answer mailed October 31,
2007 (“the Answer”); and (3) the Reply Brief filed December 31, 2007 (“the
Reply Brief”).
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Appellants’ Invention
Appellants invented a method, system, and article of manufacture for
identifying a mean item from a group of items. The method and system
separate the items into clusters, computes the variance of the cluster, and
selects a mean item. The article of manufacture’s code embodied on
computer readable medium also performs these steps.8
Independent claims 1, 14, 19, and 20 are reproduced below:
1. A method for identifying one or more mean items for a
plurality of items, J, each of the items having a symbolic value
of a symbolic attribute, the method comprising:

computing a variance of the symbolic values of the
plurality of items relative to the symbolic value of each of the
items; and

selecting at least one mean item that has the symbolic
value that minimizes the variance.

14. A system for identifying one or more mean items for a
plurality of items, J, each of the items having at least one
symbolic attribute having a symbolic value, the system
comprising:
a memory for storing computer readable code; and
a processor operatively coupled to the memory, the
processor configured to:
compute a variance of the symbolic values of the
plurality of items relative to each of the items; and

8 See generally Spec. 4:4-10 and 13:4–14:8.
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select the at least one mean item having a symbolic
value that minimizes the variance.
19. An article of manufacture for identifying one or more mean
items for a plurality of items, J, each of the items having at least
one symbolic attribute having a symbolic value, comprising:
a computer readable medium having computer readable
[program] code embodied thereon, the computer readable
program code comprising:9
a step to compute a variance of the symbolic values of
the plurality of items relative to the symbolic value of each of
the items; and
a step to select at least one item that has the symbolic
value that minimizes the variance.
20. A system for identifying one or more mean items for a
plurality of items, J, each of the items having at least one
symbolic attribute having a symbolic value, the system
comprising:
means for computing a variance of the symbolic values
of the plurality of items relative to the symbolic value of each
of the items; and
means for selecting at least one item that has the
symbolic value that minimizes the variance.

9 We find that the phrase “computer readable code” in this paragraph
is merely a typographical error in light of the term “computer readable
program code” also recited in this paragraph.
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(1) The Examiner rejected claims 1, 3-9, 11-14, and 16-23 under
35 U.S.C. § 101 as being directed to nonstatutory subject matter. Ans. 3.
(2) The Examiner rejected claims 1, 3-7, 9, 11, 12, 14, 16, 17,
and 19-23 under 35 U.S.C. § 102(b) as being anticipated by Chislenko.
Ans. 4-7.
(3) The Examiner rejected claims 8, 13, and 18 under 35 U.S.C.
§ 103(a) as being unpatentable over Chislenko and Keyes. Ans. 7-8.

I. THE NONSTATUTORY SUBJECT MATTER REJECTION
The Examiner rejected claims 1, 3-9, 11-14, and 16-23 under 35
U.S.C. § 101 as being directed to patent-ineligible subject matter. We group
the claims as follows:
(1) method claims 1, 3-9, 11-13, and 21-23;
(2) system claims 14 and 16-18;
(3) article of manufacture claim 19; and
(4) “means-plus-function” system claim 20.

A. Claims 1, 3-9, 11-13, and 21-23
The Examiner finds that representative independent claim 110 recites a
mathematical algorithm that falls into one of the judicially-created

10 Appellants have not argued independent claim 9 separately from
independent claim 1 (App. Br. 7-8; Reply Br. 2-3). Dependent claims 3-8,
11-13, and 21-23 have also not been argued with any particularity. See id.
Accordingly, we group these claims together and select independent claim 1
as representative. 37 C.F.R. § 41.37(c)(1)(vii).
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exceptions to patentable subject matter under § 101. Ans. 3. The Examiner
also finds that the claim preempts substantially every practical application of
the algorithm. Id.
Appellants assert that claim 1 does not cover every application and
recites “specific limitations for characterizing the group, including
computing an intra-group variance relative to a symbolic value of each item
in the group, and identifying a stereotypical member (mean item) of the
group based on the intra-group variance associated with each member.”
App. Br. 8.

ISSUE
Have the Appellants shown that the Examiner erred in finding the
method recited in claim 1 is not patent-eligible subject matter under § 101?

FINDINGS OF FACT
The record supports the following findings of fact (FF) by a
preponderance of the evidence:
1. Claim 1 recites a “method for identifying one or more
mean items for a plurality of items, J.” (Claim 1, l. 1).
2. Each claimed item has a symbolic value of a symbolic
attribute. (Claim 1, l. 2).
3. The method of claim 1 comprises two steps.
4. The claimed method includes the step of computing (e.g.,
520) a variance (e.g., Var(J)), of the symbolic values (e.g., xi) of the
plurality of items relative to the symbolic value of each of the items in
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the group or cluster. The variance can be calculated using an
equation. (Spec. 13:15-20 and 23-26; Fig. 5).
5. The claimed method also includes the step of selecting
(e.g., 530) a mean item that has the symbolic value (e.g., xu) that
minimizes the variance. (Spec. 13:9, 10, 26, and 27; Fig. 5).

PRINCIPLES OF LAW
Section 101 of the Title 35 of the United States Code states:
Whoever invents or discovers any new and useful process, machine,
manufacture, or composition of matter, or any new and useful
improvement thereof, may obtain a patent therefor, subject to the
conditions and requirements of this title.

35 U.S.C. § 101 (2002).
“[A]n applicant may show that a process claim satisfies § 101 either
by showing that his claim is tied to a particular machine, or by showing that
his claim transforms an article” into a different state or thing. Bilski, 545
F.3d at 961; see also Benson, 409 U.S. at 70.

ANALYSIS
Claim 1 recites a method for identifying a mean item for a group of
items (FF 1) and is not directed to a machine, manufacture, or composition
of matter as set forth in 35 U.S.C. § 101. Our analysis for claim 1 will
therefore focus on whether the claim recites a patent-eligible process under
§ 101. A process claim satisfies § 101 if it: (1) is tied to a particular
machine, or (2) transforms an article into a different state or thing. Bilski,
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545 F.3d at 961. Accordingly, we apply each prong of this machine-or-
transformation test to claim 1.

Bilski – Machine Prong
Claim 1 is not limited to any machine—let alone a particular machine.
See FF 1, 2, 4, and 5. “[A] machine is a concrete thing, consisting of parts,
or of certain devices and combination of devices. This includes every
mechanical device or combination of mechanical powers and devices to
perform some function and produce a certain effect or result.” In re
Ferguson, 558 F.3d 1359, 1364 (Fed. Cir. 2009) (quoting In re Nuijten, 500
F.3d 1346, 1355 (Fed. Cir. 2007) (internal quotation marks omitted), reh’g
denied en banc, 515 F.3d 1361 (Fed. Cir. 2008), and cert. denied, 129 S. Ct.
70 (2008)). Claim 1 computes a variance and selects a mean item (FF 4 and
5) without tying these steps to any concrete parts, devices, or combinations
of devices. In fact, one can compute the variance and select the mean item
in one’s mind. Such mental steps are patentably excluded under § 101. See
Benson, 409 U.S at 67; see also In re Comiskey, 554 F.3d 967, 979 (Fed.
Cir. 2009) (“[M]ental processes -- or processes of human thinking --
standing alone are not patentable even if they have practical application.”)
Thus, while we agree with Appellants that the method of claim 1 does not
recite a law of nature (App. Br. 7; Reply Br. 2), we do not find claim 1
recites any machine, let alone a particular machine, under this prong of the
machine-or-transformation test.

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Bilski – Transformation Prong
Claim 1 recites a method for identifying a mean item of plural items.
FF 1. The claimed items are not limited to either a particular item or a
physical item. Rather, each item has a symbolic value of symbolic attribute.
FF 2. These symbolic values are neither physical objects nor do they
represent physical objects. These symbolic values are nothing more than
abstract ideas. The variance and mean item are calculated from these
abstract ideas (i.e., symbolic values) and may be determined using a
mathematical formula. FF 4 and 5. Since the variance and mean are derived
from abstract ideas (i.e., symbolic values), neither the variance nor the mean
are physical objects or represent physical objects. Overall, the variance and
mean are abstract ideas defined by the items’ symbolic values (FF 2-5), and
we therefore find claim 1 does not recite an article to transform.
The steps of computing a variance of the items’ symbolic values and
selecting a mean item (FF 4 and 5) in claim 1 also do not transform an
article into a different state or thing. These steps compute the variance and
select a mean item without operating on or transforming any underlying
physical object that the data represents. In essence, the steps of claim 1
broadly recite a non-transformative process that fails to recite an article.
Lastly, the claimed method is not both (a) limited to a practical
application of a fundamental principle to transform specific data, and
(b) limited to a visual depiction that represents specific physical objects or
substances. See Bilski, 545 F.3d at 962-63 (discussing the transformation of
In re Abele, 684 F.2d 902 (CCPA 1982)).
For the foregoing reasons, claim 1 is not a patent-eligible “process”
under § 101. Accordingly, we will sustain the rejection of representative
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independent method claim 1 under § 101, and method claims 3-9, 11-13, and
21-23 which fall with claim 1.

B. Claims 14 and 16-18
The Examiner also finds the scope of system claims 14 and 16-18
encompasses the judicially-created mathematical algorithm exception to
patent-eligible subject matter under 35 U.S.C. § 101 and preempts
substantially all practical applications. Ans. 3. While we agree with the
Examiner's conclusion that claims 14 and 16-18 are nonstatutory under 35
U.S.C. § 101, we reach our conclusion based on a different rationale.
Therefore, we designate a new ground of rejection for claims 14 and 16-18.

NEW GROUND OF REJECTION UNDER 37 C.F.R. § 41.50(b)
Under 37 C.F.R. § 41.50(b), we enter the following new ground of
rejection for claims 14 and 16-18 under § 101.

ADDITIONAL FINDINGS OF FACT
The record supports the following additional findings of fact (FF) by a
preponderance of the evidence:
6. Independent 14 recites a “system for identifying one or
more mean items for a plurality of items, J.” (Claim 14, l. 1).
7. Each claimed item has a symbolic value of a symbolic
attribute. (Claim 14, ll. 1 and 2).
8. The claimed system includes a memory for storing
computer readable code and a processor operatively coupled to the
memory. (Claim 14, ll. 4 and 5).
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9. Memory (e.g., 120) can be RAM and/or ROM.
(Spec. 7:8; Fig. 1).
10. The processor (e.g., 115) is described as a central
processing unit (CPU) of a personal computer. (Spec. 7:7-8; Fig. 1).
10A. Claim 14 further recites “the processor configured
to: compute a variance of the symbolic values of the plurality of
items relative to each of the items”. (Claim 14, ll. 5-7).
11. According to the Specification, the claimed processor is
configured to compute (e.g., step 520 of mean computation routine
500) a variance (e.g., Var(J)), of the symbolic values (e.g., xi) of the
plurality of items relative to each of the items. (Spec. 13:15-26; Fig.
5).
11A. The claimed computation in FF 11 is described in
the Specification as:
( )2
Ji μi
xxVar(J) ∑∈ −=
where J is a cluster of television programs, xi is a symbolic
feature value for show i, and xµ is a feature value from one of
the television programs in J such that it minimizes Var(J).
(Spec. 13:15, 17-20, 24, and 25).
11B. Independent claim 14 further recites “the processor
configured to: . . . select the at least one mean item having a
symbolic value that minimizes the variance.” (Claim 14, ll. 8
and 9).
11C. According to the Specification, the claimed processor is
also configured to select (e.g., step 530 of mean computation routine
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500) a mean item that has a symbolic value (e.g., xu) that minimizes
the variance. (Spec. 13:9, 10, 26, and 27; Fig. 5).

ANALYSIS
(1) Introduction
Under § 101, four categories of subject matter are eligible for patent
protection: (1) processes; (2) machines; (3) manufactures; and (4)
compositions of matter. 35 U.S.C. § 101. While the scope of patentable
subject matter encompassed by § 101 is “extremely broad” and intended to
“include anything under the sun that is made by man,” it is by no means
unlimited. Comiskey, 554 F.3d at 977 (quoting Diamond v. Chakrabarty,
447 U.S. 303, 309 (1980)) (internal quotation marks omitted). Thus, while
we find that claim 14 is directed to the “machine” category in Section 101,
this does not end the patent-eligibility analysis. See Ferguson, 558 F.3d at
1363.
Despite the apparent sweep of Section 101, the Supreme Court has
held that certain categories of subject matter are not entitled to patent
protection. Benson, 409 U.S. at 67. In the most recent case addressing
Section 101, the Supreme Court explained that there are three categories of
subject matter for which one may not obtain patent protection. These
judicially-created exceptions are “laws of nature, natural phenomena, and
abstract ideas.” Diehr, 450 U.S. at 185. The Federal Circuit has further
recognized that the Court’s precedent suggests “the ‘mathematical
algorithm’ exception [, an example of the abstract idea judicial exception,]
applies to true apparatus claims.” Alappat, 33 F.3d at 1542. Thus, the
mathematical exception analysis used in “Benson . . . applies equally
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whether an invention is claimed as an apparatus or process, because the form
of the claim is often an exercise in drafting.” Id. (quoting In re Johnson, 589
F.2d 1070, 1077 (CCPA 1978) (internal quotation marks omitted)).
If a claimed machine (or article of manufacture)11 involves a
mathematical algorithm, then we must determine whether the scope of the
claimed invention encompasses one of the judicially-created exceptions.
This determination of claim scope requires that we make two inquiries:
(1) Is the claim limited to a tangible practical application, in which the
mathematical algorithm is applied, that results in a real-world12 use13
(e.g., “not a mere field-of-use label having no significance”)?14
(2) Is the claim limited so as to not encompass substantially all
practical applications of the mathematical algorithm 15 either “in all
fields” of use of the algorithm or even in “only one field?”16

11 Notwithstanding the court’s statement in Nuijten, 500 F.3d at 1356 n.7
(“We have never held that a manufacture is ever required to produce any
result.”), if an applicant chooses to claim the manufacture in terms of
applying a mathematical algorithm (e.g., Appellants’ claim 19), then this
two-part inquiry applies to determine if the claim is directed to eligible
subject matter under § 101.
12“Real-world” is not sufficient alone to establish patent-eligible subject
matter absent tangibility. See Nuijten, 500 F.3d at 1356.
13 See Benson, 409 U.S. at 68 (noting that the claim at issue was “so abstract
and sweeping as to cover both known and unknown uses . . . .”).
14 See Alappat, 33 F.3d at 1544 (noting that the claim’s recitation of “a
rasterizer for creating a smooth waveform is not a mere field-of-use label
having no significance.”).
15 Benson, 409 U.S. at 71-72.
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If the machine (or article of manufacture) claim involves a mathematical
algorithm and fails either prong of our two-part inquiry, then the claim is not
directed to patent-eligible subject matter under § 101.
To illustrate this analysis more fully, we review the holdings of
Flook,17 Benson, Diehr, Abele, and Meyer.18

(2) Flook
The Court in Flook determined that the method claims at issue
involved a mathematical algorithm and did not recite a patent-eligible
invention. Flook, 437 U.S. at 594. The Flook Court found that the claims
“cover a broad range of potential uses . . . .” Id. at 586; see also Diehr, 450
U.S. at 192 n.14. Thus, the claims did not recite a mathematical algorithm
applied to a tangible practical application that resulted in a real-world use.
Rather, the claims merely “covered all uses of the formula in processes
‘comprising the catalytic chemical conversion of hydrocarbons.’” See id.
As such, the recitation to “the catalytic chemical conversion of
hydrocarbons” was no more than a technological field-of-use label. See
Alappat, 33 F.3d at 1544.
The Flook Court also found that the claims “did not cover every
conceivable application of the formula.” Diehr, 450 U.S. at 192 n.14. But

16 See Bilski, 545 F.3d at 957 (citing Diehr, 450 U.S. at 193 n.14)
(“[I]neligibility under § 101 ‘cannot be circumvented by attempting to limit
the use of the formula to a particular technological environment.’”).
17 Parker v. Flook, 437 U.S. 584 (1978).
18 In re Meyer, 688 F.2d 789 (CCPA 1982).
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since the claims encompassed substantially all practical applications of the
mathematical algorithm in fields related to catalytic chemical conversion of
hydrocarbons, the claims were patent ineligible. Id. The Court “rejected in
Flook the argument that because all possible uses of the mathematical
formula were not pre-empted, the claim should be eligible for patent
protection.” Id. Thus, the claims were not limited so as to avoid
encompassing substantially all practical applications of the mathematical
algorithm in a field of use.

(3) Benson
In Benson, the Court held that claims involving a mathematical
algorithm and directed to a method for converting binary-coded-decimal
(BCD) numerals into pure binary numerals for use with a computer were
nonstatutory under § 101. In reaching this conclusion, the Court found:
Here the ‘process’ claim is so abstract and sweeping as to cover
both known and unknown uses of the BCD to pure binary
conversion. The end use may (1) vary from the operation of a
train to verification of drivers' licenses to researching the law
books for precedents and (2) be performed through any existing
machinery or future-devised machinery or without any
apparatus.
Benson, 409 U.S. at 68. Nonetheless, the claims were not limited to any of
these possible end uses. Thus, the claims did not recite a tangible practical
application, in which a mathematical algorithm was applied, that resulted in
a real-world use.
The Court further noted that “[t]he mathematical formula involved
here has no substantial practical application except in connection with a
digital computer, which means that if the judgment below is affirmed, the
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patent would wholly pre-empt the mathematical formula and in practical
effect would be a patent on the algorithm itself.” Id. at 71-72. Moreover,
the Court found the claimed process had no other use except with a
computer. Id. Thus, the claims in Benson encompassed substantially all
practical applications of the mathematical algorithm.

(4) Diehr
In Diehr, the claimed invention involved a mathematical algorithm
and was directed to a process for curing synthetic rubber. The Court held
that a physical and chemical process for molding precision synthetic rubber
products was statutory subject matter under § 101. Diehr, 450 U.S. at 192.
In contrast to the facts in Flook, the Court held:
[W]hen a claim containing a mathematical formula implements
or applies that formula in a structure or process which, when
considered as a whole, is performing a function which the
patent laws were designed to protect . . ., then the claim
satisfies the requirements of 101. . . . [W]e do not view
respondents’ claims as an attempt to patent a mathematical
formula, but rather to be drawn to an industrial process for the
molding of rubber products . . . .

Diehr, 450 U.S. at 192-93. Thus, the claim: (1) recited a mathematical
algorithm applied to a tangible practical application that resulted in a real-
world use, namely a particular physical industrial process for curing
synthetic rubber, and (2) did not encompass substantially all practical
applications of the mathematical algorithm.
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(5) Abele and Meyer
The Court of Customs and Patent Appeals, the Federal Circuit’s
predecessor court, held unpatentable and the Federal Circuit recently
reaffirmed a “broad independent claim reciting a process of graphically
displaying variances of data from average values.” Bilski, 545 F.3d at 962
(citing Abele, 684 F.2d at 909). Also, the Court of Customs and Patent
Appeals held unpatentable and the Federal Circuit recently reaffirmed a
“process claim involving undefined ‘complex system’ and indeterminate
‘factors’ drawn from unspecified ‘testing’ not patent-eligible.” Bilski, 545
F.3d at 962 (citing Meyer, 688 F.2d at 792-93). Thus, a claim must be
limited to a tangible practical application, in which the mathematical
algorithm is applied, that results in a real-world use and be limited so as to
not encompass substantially all practical applications of the mathematical
algorithm.

(6) Discussion of Claim 14
Appellants’ claim 14 recites a machine for identifying a mean item of
plural items. Claim 14 recites a system used to identify a mean item for a
plurality of items, each item having a symbolic attribute having a symbolic
value. FF 6 and 7. Claim 14 also recites a processor configured to: compute
a variance of the symbolic values of the plurality of items relative to each of
the items; and select the at least one mean item having a symbolic value that
minimizes the variance. FF 10A and 11B. The Specification describes this
computation as a mathematical formula. FF 11A. Thus, claim 14 recites a
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mathematical algorithm, and we must determine if the judicial exception
applies.
We must determine if claim 14 recites a practical application of the
mathematical algorithm. The claimed “items” and their corresponding
symbolic values of symbolic attributes are not limited to either a particular
or physical item or article. These exemplary items and their corresponding
symbolic values represent nothing more than abstract ideas and are not
physical objects or representative of physical objects.19 Other than claim
14’s recital of a memory and a processor (FF 8) for computing a
mathematical algorithm, we conclude that claim 14 fails to recite any
tangible practical application in which the mathematical algorithm is applied
that result in a real-world use. Rather, the claimed “identifying one or more
mean items” is akin to the “broad range of potential uses” found in Flook.
See Diehr, 450 U.S. at 192 n.14.
As a separate and independent inquiry, we will also determine if claim
14 is limited so as to not encompass substantially all practical applications of
the mathematical algorithm either in all fields of use of the algorithm or only
one field. Claim 14 recites a memory and a processor. FF 8. The memory
and processor clearly introduce structure into the claim. However, other
than providing examples of the memory as RAM and/or ROM (FF 9) and
the processor as a CPU for a personal computer (FF 10), the Specification

19 Claim 14 encompasses exemplary items (e.g., television programs) but is
not limited to any particular form of “item” either explicitly or implicitly.
Similarly, the claim’s symbolic values are not limited to representing
channel or title values. See FF 3.
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provides no more details about these devices and furthermore, the claim is
not so limited to even these disclosed examples. According to the
Specification, the claimed processor is configured to compute a variance of
the symbolic values of the items relative to each of the items (FF 11) and to
select the mean item having a symbolic value that minimizes the variance
(FF 11C). The processor’s ability to compute the variance involves
calculating, using a mathematical formula (FF 4 and 11A) that includes the
symbolic values or abstract ideas as variables. Additionally, the processor’s
ability to select a mean item from the symbolic value involves minimizing
the variance (FF 11B and C) or an abstract idea. Based on the above
discussion, claim 14 encompasses substantially all practical applications.
That is we are unable to identify any other practical application outside of
the broadly defined claim. The recited system’s memory and processor (FF
8-10)—like Benson’s re-entrant shift register20—in effect encompasses
substantially all means. See Benson, 409 U.S. at 65. Thus, claim 14
forecloses others from using substantially all practical applications of the
algorithm in substantially all fields of use.

20 Notably, claim 8 in Benson recited a reentrant shift register for storing
binary coded decimal (BCD) signals in connection with the recited method
that converted BCD signals to binary form. See Benson, 409 U.S. at 73-74
(listing claim 8 which recites, in pertinent part, “[t]he method of converting
signals from binary coded decimal form into binary which comprises the
steps of . . . storing the binary coded decimal signals in a reentrant shift
register”) (emphasis added). Nevertheless, the Court found this claim to be
unpatentable under § 101. Id. at 71-72.
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Furthermore, the “configured to” limitations of the processor in
claim 14 (FF 10A, 11, 11B, and 11C) are not tied to the system’s memory
and, in effect, merely recite the processor’s ability to compute a variance and
select a mean item (i.e., both abstract ideas). See FF 2-5 and 10A-11C. The
scope of the claim also includes using a mathematical formula to determine
the variance. See FF 4 and 11A. Thus, by substantially encompassing all
practical applications of the mathematical algorithm, the breadth of the claim
wholly preempts the disclosed mathematical formula and, in essence, claims
the algorithm itself. See Benson, 409 U.S. at 71-72. Furthermore, any other
application of claim 14 is drawn to mere abstractions. See FF 6, 7, 11, and
11C. Claim 14 therefore does not recite statutory subject matter and is not
directed to an eligible “machine” or “manufacture” under § 101.
Dependent claims 16-18 fail to cure the deficiencies of independent
claim 14 and are rejected for the same reasons.
For the foregoing reasons, we conclude that claims 14 and 16-18 are
nonstatutory under 35 U.S.C. § 101.

C. Claim 19
The Examiner rejected claim 19 under 35 U.S.C. § 101 as being
directed to a patent-ineligible disembodied computer program. Ans. 3.
Appellants argue that claim 19 recites an article of manufacture having a
code embodied on a computer readable medium and is not a disembodied
program. App. Br. 8.

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ISSUE
Have Appellants shown that the Examiner erred in rejecting claim 19
by finding that the recited article of manufacture that includes a computer-
readable medium with code embodied on the medium does not constitute
statutory subject matter under § 101?

ADDITIONAL FINDINGS OF FACT
The record supports the additional following findings of fact (FF) by a
preponderance of the evidence.
12. Claim 19 recites an article of manufacture for identifying
a mean item for a number of items, each item having a symbolic value
of a symbolic attribute. (Claim 19, ll. 1-3).
13. Claim 19 includes computer readable program code
embodied on a computer readable medium. (Claim 19, ll. 4 and 5).
14. The claimed computer readable program code comprises
(a) a step to compute a variance of the symbolic values of the plurality
of items relative to the symbolic value of each of the items (e.g., 520),
and (b) a step to select a mean item that has the symbolic value that
minimizes the variance (e.g., 530). (Claim 19, ll. 4-9; Spec. 13:9, 10,
15-20, and 23-27; Fig. 5).
15. The Specification provides a non-limiting example of a
computer readable medium as “memory 120, such as RAM and/or
ROM.” (Spec. 7:8; Fig. 1).

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PRINCIPLES OF LAW
Even if a claim fits within one or more of the statutory categories
under 35 U.S.C. § 101, the claim may not be patent-eligible. Ferguson, 558
F.3d at 1363.
“A ‘manufacture’ (in its verb form) is defined as the production of
articles for use from raw or prepared materials by giving to these materials
new forms, qualities, properties, or combinations, whether by hand-labor or
by machinery.” Nuijten, 500 F.3d at 1356 (citations and internal quotation
marks omitted). “An ‘article’ is a particular substance or commodity. . . .”
Id. (internal quotation marks omitted).

ANALYSIS
Claim 19 recites an article of manufacture for identifying a mean item
of plural items. FF 12. The claimed article of manufacture includes
computer-readable code embodied on a computer-readable medium (FF 13),
and the code comprises a computation and selection step (FF 14). The
Specification indicates that the computer-readable code is stored on
computer-readable medium, such memory 120 that can be RAM and/or
ROM. FF 15. Both RAM and ROM include hardware components of
memory.
As these hardware components are tangible things, we find that the
recited computer-readable medium of claim 19 fully comports with the
definition of a “machine,” namely “a concrete thing, consisting of parts, or
of certain devices and combination of devices . . . . [that] includes every
mechanical device or combination of mechanical powers and devices to
perform some function and produce a certain effect or result.” Ferguson,
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558 F.3d at 1364 (internal quotation marks omitted). We also find that the
computer-readable medium of claim 19 fits within the “manufacture”
category under § 101. See 35 U.S.C. § 101. “A ‘manufacture’ (in its verb
form) is defined as the production of articles for use from raw or prepared
materials by giving to these materials new forms, qualities, properties, or
combinations, whether by hand-labor or by machinery,” Nuijten, 500 F.3d
at 1356 (citations and internal quotation marks omitted), and “[a]n ‘article’
is a particular substance or commodity. . . .” Id. The computer readable
media disclosed in the Specification (e.g., RAM and/or ROM (FF 15)) are
memory elements, chips, or produced articles for use from materials that are
given new forms, qualities, or properties by machinery.
Nevertheless, although claim 19 is directed to a machine or an article
of manufacture, that alone is not sufficient to determine if the claim recites
statutory subject matter. See Ferguson, 558 F.3d at 1363. Accordingly, we
must apply the two separate and independent inquiries discussed previously.
First, the “step to compute” of claim 19 (FF 15) involves the same
mathematical algorithm found in claim 14 (FF 10A-11A), and the “step to
select” of claim 19 (FF 14) is identical to the select function perform in
claim 14 (FF 11B and 11C).
Since the steps recited in claim 19 are identical to the functions found
in claim 14, we refer to our previous discussion of claim 14 and conclude
that claim 19 similarly fails to recite the application of a mathematical
algorithm to a tangible practical application that results in a real-world use.
Second, using the same rationale applied to claim 14, claim 19 encompasses
substantially all practical applications of the mathematical algorithm (e.g.,
computer applications) in substantially all fields of use. Therefore, our
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statutory subject matter analysis of combination claim 14 is equally
applicable to sub-combination claim 19. We therefore conclude that the
article of manufacture or machine recited in claim 19 is not patent-eligible
under § 101.
For the foregoing reasons, Appellants have not persuaded us of error
in the Examiner’s rejection of claim 19 under § 101. Therefore, we will
sustain the Examiner’s rejection of that claim in light of our rationale noted
above which we designate as a new ground of rejection.

D. Claim 20
i. 35 U.S.C. § 101
For the reasons discussed below, we will not reach the merits of the
rejection of claim 20 under 35 U.S.C. § 101. Rather, we reverse this
rejection as a matter of form and enter a new ground of rejection infra.

ii. New Ground of Rejection - 35 U.S.C. § 112, Second Paragraph
We enter a new ground of rejection under 37 C.F.R. §41.50(b) for
claim 20. Claim 20 is rejected under 35 U.S.C. § 112, second paragraph, as
being indefinite.

ADDITIONAL FINDINGS OF FACT
The record supports the additional following findings of fact (FF) by a
preponderance of the evidence.
16. Claim 20 recites a system for identifying a mean item for
a number of items, each item having a symbolic value of a symbolic
attribute. (Claim 20, ll. 1 and 2).
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17. Claim 20 includes: (a) a means for computing a variance
of the symbolic values of the plurality of items relative to the
symbolic value of each of the items (e.g., 520) and (b) a means for
selecting a mean item that has the symbolic value that minimizes the
variance (e.g., 530). (Claim 20, ll. 4-7; Spec. 13:9, 10, 15-20, and 23-
27; Fig. 5).

PRINCIPLES OF LAW
When a claim uses “means for” language, there is a presumption that
the claim invokes 35 U.S.C. § 112, ¶ 6. See Biomedino L.L.C. v. Waters
Techs. Corp., 490 F.3d 946, 950 (Fed. Cir. 2007). Such means-plus-
function limitations cover corresponding structure described in the
specification and its equivalents. In re Donaldson, 16 F.3d 1189, 1195 (Fed.
Cir. 1994) (en banc). However, “[a]n element of a claim described as means
for performing a function, if read literally, would encompass any means for
performing the function . . . . But section 112 para. 6 operates to cut back on
the types of means which could literally satisfy the claim language.”
Johnson v. IVAC Corp., 885 F.2d 1574, 1580 (Fed. Cir. 1989) (emphasis in
original) (citations omitted).
The test for definiteness under 35 U.S.C. § 112, second paragraph is
whether “those skilled in the art would understand what is claimed when the
claim is read in light of the specification.” Orthokinetics, Inc. v. Safety
Travel Chairs, 806 F.2d 1565, 1576 (Fed. Cir. 1986) (citations omitted). In
the context of a means-plus-function limitation, if one skilled in the art
would be able to identify the structure, material, or acts for performing the
claimed function, then the requirements of 35 U.S.C. § 112, second
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paragraph are satisfied. See Atmel Corp. v. Info. Storage Devices, Inc., 198
F.3d 1374, 1381 (Fed. Cir. 1999); see also In re Dossel, 115 F.3d 942, 946-
47 (Fed. Cir. 1997). If there is insufficient disclosure of the structure,
material, or acts for performing the claimed function, however, a rejection
under 35 U.S.C. § 112, second paragraph is appropriate. See Donaldson, 16
F.3d at 1195; Biomedino, 490 F.3d at 952.

ANALYSIS
We note that neither Appellants nor the Examiner indicates whether
the “means for” language in claim 20 invokes 35 U.S.C. § 112, ¶ 6.
Nevertheless, we find that § 112, ¶ 6 has been invoked with respect to claim
20 for the limitations, “means for computing a variance of the symbolic
values of the plurality of items relative to the symbolic value of each of the
items” and “means for selecting at least one item that has the symbolic value
that minimizes the variance.” See FF 17. That is, each of these limitations
uses the phrase, “means for,” which is modified by functional language (e.g.,
computing or selecting) and each of the “means for” phrases is not modified
by sufficient structure to perform the recited function.
Claim 20 recites a system with two means: (1) a means for computing
a variance of the symbolic values of a plurality of items relative to the
symbolic value of each item and a means, and (2) a means for selecting an
item that has a symbolic value that minimizes the variance. FF 16 and 17.
The corresponding structure for the means for computing the variance
involves a processor (e.g., 115) in conjunction with memory (e.g., 120) that
performs the mean computation routine 500 (FF 4 and 9, 10, 11, 11A, and
11C). The mean computing routine or algorithm 500 includes computing
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the variance of the symbolic values of the items (see FF 4, 11, 11A, and 17)
and selecting the item that has the symbolic value that minimizes the
variance (see FF 5, 11C, and 17). Additionally, as explained above in
connection with claim 14, the combined processor and memory are
tantamount to a general-purpose computer. However, as set forth in
Aristocrat, 521 F.3d at 1333, the corresponding structure of the means-plus-
function limitation in a claim must be more than simply a general-purpose
computer or microprocessor to avoid pure functional claiming.
“Because general purpose computers can be programmed to perform
very different tasks in very different ways, simply disclosing a computer as
the structure designated to perform a particular function does not limit the
scope of the claim to ‘the corresponding structure, material, or acts’ that
perform the function, as required by section 112 paragraph 6.” Aristocrat,
521 F.3d at 1333. Moreover, “[f]or computer-implemented means-plus-
function claims where the disclosed structure is a computer programmed to
implement an algorithm, the disclosed structure is not the general purpose
computer, but rather the special purpose computer programmed to perform
the disclosed algorithm.” Finisar Corp. v. The DirectTV Group, 523 F.3d
1323, 1340 (Fed. Cir. 2008) (citations and internal quotation marks omitted).
As such, the application must disclose “enough of an algorithm to provide
the necessary structure under § 112, ¶ 6” or a disclosure that can be
expressed in any understandable terms (e.g., a mathematical formula, in
prose, or as a flowchart). Id. But “[s]imply reciting ‘software’ without
providing some detail about the means to accomplish the function is not
enough.” Id. at 1341-42.
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In this case and as discussed previously, the structure described in the
Specification that corresponds to the means-plus-function limitations in
claim 20 is nothing more than a general-purpose computer that computes a
variance and selects an item that minimizes the variance. See FF 9, 10, 11,
11C, and 17. Thus, the Specification does not provide adequate
corresponding structure or limit the scope of the claim to corresponding
structure that performs the function as required by § 112, sixth paragraph.
Additionally, while the Specification describes a formula for calculating a
variance of symbolic values (FF 4 and 11C), there are few details of the
algorithm or process for selecting the item that minimizes the variance. See
FF 5, 11C, and 17.
Because we cannot determine the metes and bounds of claim 20 due
to these defects, the claim is indefinite. Additionally, we will not reach the
merits of whether claim 20 is patent-eligible under 35 U.S.C. § 101 since we
cannot determine the scope of claim 20.

II. THE PRIOR ART REJECTIONS
Claims 1, 3-7, 9, 11, 12, 14, 16, 17, and 19-23 are rejected under 35
U.S.C. § 102(b) as being anticipated by Chislenko. Ans. 4-7. Claims 8, 13,
and 18 are rejected under 35 U.S.C. § 103(a) as being unpatentable over
Chislenko and Keyes. Ans. 7-8.
As to these prior art rejections, our decision is dispositive with respect
to patentability since (1) claims 1, 3-9, 11-14, 16-19, and 21-23 on appeal do
not recite patent-eligible subject matter under § 101, and (2) we cannot
determine the scope of claim 20. We therefore need not reach the question
of whether claims 1, 3-7, 9, 11, 12, 14, 16, 17, and 19-23 would have been
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anticipated under § 102 and claims 8, 13, and 18 would have been obvious
under § 103. See Diehr, 450 U.S. at 188; Comiskey, 554 F.3d at 973
(declining to reach obviousness rejection on appeal after concluding many
claims were nonstatutory under § 101); Bilski, 545 F.3d at 951 n.1 (noting
that § 101 is a threshold requirement and that Examiner may reject claims
solely on that basis); In re Rice, 132 F.2d 140, 141 (CCPA 1942) (finding it
unnecessary to reach rejection based on prior art after concluding claims
were directed to nonstatutory subject matter). See also In re Steele, 305 F.2d
859, 862 (CCPA 1962) (supporting not presenting an art rejection when
considerable speculation into the scope of the claim is required).

CONCLUSIONS OF LAW
(1) Appellants have not shown that the Examiner erred in rejecting
claims 1, 3-9, 11-14, 16-19, and 21-23 as being directed to nonstatutory
subject matter under 35 U.S.C. § 101.
(2) We reverse the rejection of claim 20 under 35 U.S.C. § 101 and
enter a new ground of rejection for claim 20 under 35 U.S.C. § 112, second
paragraph.

ORDER
The decision of the Examiner to reject claims 1, 3-9, 11-14, 16-19,
and 21-23 as being directed to patent-ineligible subject matter is affirmed.
We reverse the rejection of claim 20 under 35 U.S.C. § 101.
We enter new grounds of rejection under 37 C.F.R. § 41.50(b) for
claims 14 and 16-20.
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This decision contains new grounds of rejection pursuant to 37 C.F.R.
§ 41.50(b). This section provides that “[a] new ground of rejection… 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 grounds of rejection to
avoid termination of the appeal as to the rejected claims:
(1) 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 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)

ELD

PHILIPS INTELLECTUAL PROPERTY & STANDARDS
P.O. BOX 3001
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