Ex Parte Haenel

Board of Patent Appeals and Interferences

Jul 29, 2011

10930593 (B.P.A.I. Jul. 29, 2011)

UNITED STATES PATENT AND TRADEMARKOFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
10/930,593 08/31/2004 Walter Haenel N0484.70679US00 9476
23628 7590 08/01/2011
WOLF GREENFIELD & SACKS, P.C.
600 ATLANTIC AVENUE
BOSTON, MA 02210-2206
EXAMINER
HAN, QI
ART UNIT PAPER NUMBER
2626
MAIL DATE DELIVERY MODE
08/01/2011 PAPER
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte WALTER HAENEL
____________

Appeal 2009-006701
Application 10/930,593
Technology Center 2600
____________

Before LANCE LEONARD BARRY, ELENI MANTIS MERCADER,
and CARL W. WHITEHEAD, Jr., Administrative Patent Judges.

MANTIS MERCADER, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from the final rejection of
claims 1-12. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.

INVENTION
Appellant’s claimed invention is directed to generating navigation
information for Voice Portlets accessible via a Portal application by
assigning during runtime global navigation information to any document
containing Portal selection information derived from a navigation structure
model, and assigning during runtime global navigation information to each
Voice Portlet document generated by a Voice Portlet. The documents are
then sent with their assigned navigation information to a Voice Server
System. See Spec. 7.
Claim 1, reproduced below, is representative of the subject matter on
appeal.
1. A Portal Application (9) for a Voice Portal, wherein said Portal
application (9) runs on a Portal server system (8) providing access to Voice
Portlets (20), and a Voice application (4) that runs on a Voice server System
connected via network with said Portal Server System (8) and connected via
a network with phones, wherein said Portal application (9) provides
navigation information to said Voice application for its execution, wherein
said Portal application is characterized by:
a selection document generator (14) that has access to a navigation
structure model (15), and which provides the functionality to create
documents containing portal selection information derived from said
navigation structure model,
a Portal global navigation adder (18) that provides the functionality to
assign during runtime global navigation information to said documents
containing portal selection information generated by said selection document
generator,
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a Voice Portlet global navigation adder (19) that provides the
functionality to assign during runtime global navigation information to a
Voice Portlet document provided by said Voice Portlet (20).

THE REJECTIONS
The Examiner relies upon the following as evidence of
unpatentability:
Chinn US 2002/0010715 A1 Jan. 24, 2002
Lavallee US 2004/0088166 A1 May 6, 2004
The following rejections are before us for review:
Claims 1-8 stand rejected under 35 U.S.C. § 101 as being directed to
non-statutory subject matter.
Claims 1, 4, 6, 8, 9, and 12 stand rejected under 35 U.S.C. § 102(e) as
being anticipated by Lavallee.
Claims 7, 10, and 11 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Lavallee in view of Chinn.
Claims 2 and 3 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Lavallee.
Claim 5 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over by Lavallee in view of admitted prior art.

ISSUES
The issues are:
1. Whether the Examiner erred in finding that Appellant’s portal
application as recited in claim 1 constitutes abstract software code
which does not fall within any of the four statutory categories
under 35 U.S.C. § 101;

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2. Whether the Examiner erred in finding that Lavallee teaches
“runtime” processing as recited in claim 1; and
3. Whether the Examiner erred in finding that Lavallee teaches two
types of documents as required by claim 1.

PRINCIPLES OF LAW
The four categories [of § 101] together describe the exclusive
reach of patentable subject matter. If a claim covers material
not found in any of the four statutory categories, that claim falls
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).
“Abstract software code is an idea without physical embodiment,” i.e.,
an abstraction. Microsoft Corp. v. AT&T Corp., 550 U.S. 437, 449 (2007).
A claim that recites no more than software, logic, or a data structure
(i.e., an abstract idea), with no structural tie or functional interrelationship to
an article of manufacture, machine, process, or composition of matter does
not fall within any statutory category and is not patentable subject matter. In
re Warmerdam, 33 F.3d 1354, 1361 (Fed. Cir. 1994).

ANALYSIS
I. Analysis with respect to the rejection of claims 1-8 under 35
U.S.C. § 101.
Appellant argues that the claimed portal application and claimed voice
portal have been structurally and functionally interrelated with the portal
server system, and thus, the claimed invention is directed to a system (App.
Br. 6-7).
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We reviewed the record in light of Appellant’s arguments, but we do
not agree with Appellant. We agree with the Examiner’s analysis (Ans. 3,
10-11), that the claimed “portal application” is directed to nothing more than
a computer program itself, in light of Appellant’s Specification (see Figs. 1-
2; Spec. ¶¶ [0002], [0011]), of what constitutes “a Portal application” (e.g.,
“IBM Websphere Portal application” (software, i.e., a program)).
Appellant’s portal application as recited in claim 1 constitutes abstract
software code which is an idea without physical embodiment, and which
does not fall within any of the four statutory categories. See Microsoft, 550
U.S. at 449.
We note that Appellant’s reference to the preamble recitation of the
“server system” is unpersuasive because the server system is not positively
recited in the body of the claim nor does the claim rely for completeness on
the preamble. Thus, there is no structural tie or functional interrelationship
to an article of manufacture, machine, process, or composition of matter, and
accordingly, the claim language does not fall within any statutory category
and is not patentable subject matter. See Warmerdam, 33 F.3d at 1361.
Accordingly, we will affirm the Examiner’s rejection of claims 1-8
under 35 U.S.C. § 101.

II. Analysis with respect to the rejection of claims 1, 4, 6, 8, 9, and
12 under 35 U.S.C. § 102(e).
Appellant argues that dynamically compiling a text document to form
a Java servlet is not comparable to assigning global navigation information
during runtime (App. Br. 13).
We are not persuaded by Appellant’s argument. At the outset, we
note that we agree with the Examiner (Ans. 13-14) that Appellant did not
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give an explanation as to why dynamic processing is not comparable to
runtime.
Nonetheless, we agree with the Examiner’s findings and reasoning
that the term “dynamic” (or dynamically), as recited in Lavallee (¶ [0050]),
refers to processing in the computer related art, which is in fact, runtime
processing (Ans. 12). We agree with the Examiner’s example that the voice
commands/menu using a dynamically processed Java servlet (or portlet),
such as using a designated portlet for obtaining sport or weather information
as disclosed by Lavallee (¶ [0043]), indeed constitutes assigning global
navigation information, such as HTTP request and URL/web address, during
runtime (Ans. 12).
Appellant further argues (App. Br. 15) that the Examiner failed to
identify two types of documents as required by claim 1 and only refers to a
single document (i.e., “voice menu”).
We do not agree with Appellant’s argument. We agree with
Examiner’s finding (Ans. 13) that Lavallee discloses not only “voice menu”
(i.e., document containing Portal selection information) (¶¶ [0024], [0049]-
[0050]), but also “voice portlet” (i.e., voice portlet document) (see Fig. 5; ¶¶
[0042]-[0043], [0049]-[0052], [0055]).
We note that while Appellant asserts that claim 8 is different from
claim 1 and was not appropriately addressed by the Examiner, Appellant has
not explained how they are different (see App. Br. 16). The cited limitation
appears to recite the limitations of a voice application similar to the Voice
Portlet global navigation adder as recited in claim 1, to assign during
runtime global navigation information to a Voice portlet document provided
by the Voice portlet. We also note that simply pointing out what a claim
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requires with no attempt to point out how or why the claims patentably
distinguish over the prior art does not amount to a separate argument for
patentability. 37 C.F.R. § 41.37(c)(1)(vii) (2004); see also In re Nielson,
816 F.2d 1567, 1572 (Fed. Cir. 1987).
Accordingly, we will affirm the Examiner’s rejection of claims 1, 4, 6,
8, 9, and 12 under 35 U.S.C. § 102(e).

III. Analysis with respect to the rejections of claims 2, 3, 5, 7, 10,
and 11 under 35 U.S.C. § 103(a).
We will also affirm the rejections of claims 2, 3, 5, 7, 10, and 11 for
the same reasons as articulated supra because no additional arguments of
patentability were presented with respect to these claims.

CONCLUSIONS
The Examiner did not err in finding that
1. Appellant’s portal application as recited in claim 1 constitutes
abstract software code which does not fall within any of the four
statutory categories under 35 U.S.C. § 101;
2. Lavallee teaches “runtime” processing as recited in claim 1; and
3. Lavallee teaches two types of documents as required by claim 1.

ORDER
The decision of the Examiner to reject claims 1-12 is affirmed.

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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

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