Ex Parte Guy et al

Board of Patent Appeals and Interferences

Feb 26, 2010

09965405 (B.P.A.I. Feb. 26, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE 1
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BEFORE THE BOARD OF PATENT APPEALS 4
AND INTERFERENCES 5
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Ex parte TAMI L. GUY, JEFFREY L. BRIGGS, and ANNE L. MASON 8
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Appeal 2009-007254 11
Application 09/965,405 12
Technology Center 3700 13
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Decided: February 25, 2010 16
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Before: MURRIEL E. CRAWFORD, HUBERT C. LORIN, and BIBHU R. 20
MOHANTY, Administrative Patent Judges. 21
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CRAWFORD, Administrative Patent Judge. 23
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DECISION ON APPEAL26
Appeal 2009-007254
Application 09/965,405

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STATEMENT OF THE CASE 1
Appellants appeal under 35 U.S.C. § 134 (2002) from a final rejection 2
of claims 1 to 13, 15, 17, and 18. We have jurisdiction under 35 U.S.C. 3
§ 6(b) (2002). 4
Appellants invented a method of doing business (Spec. 1). 5
Claim 1 under appeal reads as follows: 6
1. A method for a first organization to do 7
business comprising: 8
entering into a contractual relationship with 9
a second organization; 10
authorizing said second organization to take 11
an order from a customer, said order comprising at 12
least one of: 13
products not produced by said first 14
organization, and services not provided by said 15
first organization; 16
receiving payment directly from said 17
customer as a payment for said order taken by said 18
second organization; 19
requiring an organization other than said 20
first organization to ship products not produced by 21
said first organization to said customer; 22
requiring an organization other than said 23
first organization to provide services to said 24
customer. 25
The Examiner rejected claims 1 to 6 and 8 to 12 under 35 U.S.C. § 26
103(a) as being unpatentable over Sharp in view of Curie. 27
The Examiner rejected claim 7 under 35 U.S.C. § 103(a) as being 28
unpatentable over Sharp in view of Curie and Hogan. 29
The Examiner rejected claims 13 and 15 under 35 U.S.C. § 103(a) as 30
being unpatentable over Sharp in view of Carpenter. 31
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The Examiner rejected claim 17 under 35 U.S.C. § 103(a) as being 1
unpatentable over Sharp in view of Work. 2
The Examiner rejected claim 18 under 35 U.S.C. § 103(a) as being 3
unpatentable over Sharp in view of Bremers. 4
The prior art relied upon by the Examiner in rejecting the claims on 5
appeal is: 6
Hogan US 2001/0002464 A1 May 31, 2001 7
Work US 2002/0007302 A1 Jan. 17, 2002 8
Carpenter US 6,868,401 B1 Mar. 15, 2005 9
Bremers US 6,901,380 B1 May 31, 2005 10
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ISSUE 12
Do claims 1 to 13, 15, 17, and 18 recite patentable subject matter in 13
accordance with 35 U.S.C. § 101? 14
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FINDINGS OF FACT 16
Claims 1 to 7, 9, 11, 13, 15, 17 and 18 recite a series of steps 17
involving entering into a contractual relationship for products and services 18
between a first and second organization. These claims do not recite a 19
machine or any step that transforms an article. 20
Claims 8, 10, and 12 depend on claims 1 or 11 and include the step of 21
tracking receipt of payment by a computer. 22
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PRINCIPLES OF LAW 24
Section 101 of the Title 35 of the United States Code states: 25
Whoever invents or discovers any new and useful 26
process, machine, manufacture, or composition of 27
matter, or any new and useful improvement 28
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thereof, may obtain a patent therefor, subject to the 1
conditions and requirements of this title. 2
An applicant may show that a process claim satisfies § 101 either by 3
showing that his claim is tied to a particular machine, or by showing that his 4
claim transforms an article into a different state of thing. In re Bilski, 545 5
F3d 943, 961 (Fed. Cir. 2008), cert. granted, 129 S. Ct. 2735 (2009); see 6
also Gottschalk v. Benson, 409 U.S. 63, 70 (1972). The use of a specific 7
machine or transformation of an article must impose meaningful limits on 8
the claim's scope to impart patent-eligibility. Bilski, 545 F.3d at 961-62 9
(citing Benson, 409 U.S. at 71-72). 10
11
ANALYSIS 12
New rejection under 35 U.S.C. § 101 13
Pursuant to 37 C.F.R. § 41.50(b) (2009) we enter a new rejection of 14
claims 1 to 13, 15, 17, and 18 under 35 U.S.C. § 101 as being directed to 15
patent-ineligible subject matter. 16
Claims 1 to 7, 9 to 11, 13, 15, and 17 recite steps that are not tied to a 17
particular machine and do not transform an article to a different state and 18
therefore an not patentable subject matter. 19
Claims 8, 12, and 18 recite in various forms the step of tracking 20
receipt of payment by a computer. This recitation of a computer is not a 21
recitation of a particular machine but rather is a recitation of no more than a 22
general purpose computer programmed in an unspecified manner to 23
implement the tracking step. In addition, the recitation of a computer does 24
not impose meaningful limits on the claims’ scope. 25
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Prior art rejections 1
Claims 1 to 13, 15, 17, and 18 are rejected under 35 U.S.C. §§ 102 2
and 103 as detailed above. As to these prior art rejections, our decision is 3
dispositive with respect to patentability since the claims do not recite patent-4
eligible subject matter under § 101. We therefore do not reach the questions 5
of whether the claims would have been anticipated under § 102 or obvious 6
under § 103. See Diamond v. Diehr, 450 U.S. 175, 188 (1981); In re 7
Comiskey, 554 F.3d 967, 973 (Fed. Cir. 2009) (declining to reach 8
obviousness rejection on appeal after concluding many claims were 9
nonstatutory under § 101); Bilski, 545 F.3d at 950-51 n.1 (noting that § 101 10
is a threshold requirement and that the Examiner may reject claims solely on 11
that basis); In re Rice, 132 F.2d 140, 141 (CCPA 1942) (finding it 12
unnecessary to reach rejection based on prior art after concluding claims 13
were directed to nonstatutory subject matter). 14
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CONCLUSION OF LAW/DECISION 16
We do not reach the prior art rejections of the appealed claims. 17
We have entered a new rejection of all the pending claims under 35 18
U.S.C. § 101. 19
This decision contains a new ground of rejection pursuant to 37 20
C.F.R. § 41.50(b) (effective September 13, 2004, 69 Fed. Reg. 49960 21
(August 12, 2004), 1286 Off. Gaz. Pat. Office 21 (September 7, 2004)). 37 22
C.F.R. § 41.50(b) provides "[a] new ground of rejection pursuant to this 23
paragraph shall not be considered final for judicial review." 24
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37 C.F.R. § 41.50(b) also provides that the appellant, WITHIN TWO 1
MONTHS FROM THE DATE OF THE DECISION, must exercise one of 2
the following two options with respect to the new ground of rejection to 3
avoid termination of the appeal as to the rejected claims: 4
(1) Reopen prosecution. Submit an appropriate 5
amendment of the claims so rejected or new evidence relating 6
to the claims so rejected, or both, and have the matter 7
reconsidered by the examiner, in which event the proceeding 8
will be remanded to the examiner. . . . 9
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(2) Request rehearing. Request that the proceeding be 11
reheard under § 41.52 by the Board upon the same record. . . . 12
Should the appellant elect to prosecute further before the examiner 13
pursuant to 37 C.F.R. § 41.50(b)(1), in order to preserve the right to seek 14
review under 35 U.S.C. §§ 141 or 145 with respect to the affirmed rejection, 15
the effective date of the affirmance is deferred until conclusion of the 16
prosecution before the examiner unless, as a mere incident to the limited 17
prosecution, the affirmed rejection is overcome. 18
If the appellant elects prosecution before the examiner and this does 19
not result in allowance of the application, abandonment or a second appeal, 20
this case should be returned to the Board of Patent Appeals and Interferences 21
for final action on the affirmed rejection, including any timely request for 22
rehearing thereof. 23
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No time period for taking any subsequent action in connection with 1
this appeal may be extended under 37 C.F.R. § 1.136(a) (2007). 2
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37 C.F.R. § 41.50(b) 4
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