Ex Parte Hartman

Board of Patent Appeals and Interferences

Apr 18, 2011

11046390 (B.P.A.I. Apr. 18, 2011)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte PHILIP THOMAS HARTMAN
____________________

Appeal 2009-008021
Application 11/046,390
Technology Center 2100
____________________

Before CAROLYN D. THOMAS, DEBRA K. STEPHENS, and
JAMES R. HUGHES, Administrative Patent Judges.

STEPHENS, Administrative Patent Judge.

DECISION ON APPEAL

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Appellant appeals under 35 U.S.C. § 134(a) (2002) from a final
rejection of claims 10-13. Claims 1-9 and 14-20 have been canceled. We
have jurisdiction under 35 U.S.C. § 6(b) (2010).
We AFFIRM. We enter a new ground of rejection under 35 U.S.C.
§ 101 for claims 11 and 13.

Introduction
According to Appellant, the invention is a system and method for
establishing a web-based network including an enterprise locking service for
coordinating applications to ensure only one user modifies a database record
at any given time. (Abstract). A universal database locking system that is
able to lock any database, no matter which database software vendor is
supplying/maintaining the databases and to monitor and evaluate use of
database locks to provide status information of the databases. (Spec. 2, ¶
[0006] and Spec. 3,¶ [0007]).

STATEMENT OF CASE
Exemplary Claim
Claim 10 is an exemplary claim and is reproduced below:
10. A service comprising:

establishing a network of databases available to a first
user on an on-demand basis;

receiving a request from the first user to provide
exclusive access to one or more records of the databases, the
exclusive access being controlled by a database records lock
that is exclusive for and identifies the first user;
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subsequently determining if each of the one or more
database records is already locked by a second user; and

in response to determining that one or more of the
database records are not locked by the second user, locking
those unlocked database records with the first user’s database
lock.

Prior Art
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Wikström US 5,913,213 June 15, 1999
Williams US 2003/0004924 A1 Jan. 2, 2003

REJECTIONS
Claims 10 and 12 stand rejected under 35 U.S.C. § 101 as being
drawn to non-statutory subject matter. (Ans. 3-4).
Claims 10 and 12 stand rejected under 35 U.S.C. § 102(b) as being
anticipated by Williams. (Ans. 4-6).
Claims 11 and 13 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Williams and Wikström. (Ans. 7-9).

GROUPING OF CLAIMS
(1) Appellant argues the 35 U.S.C. § 101 rejection of independent
claims 10 and 12 collectively. Dependent claims 11 and 13 inherit the fate
of parents 10 and 12 in this rejection. (App. Br. 4-5). We select
independent claim 10 as the representative claim. We will, therefore, treat
claims 11-13 as standing or falling with representative claim 10.
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(2) Appellant argues the 35 U.S.C. § 102(b) rejection of independent
claims 10 and 12 as well as the 35 U.S.C. § 103(a) rejection of dependent
claims 11 and 13 with respect to the same arguments. (Id. at 5-6).
We accept Appellant’s grouping of the claims. See 37 C.F.R.
§ 41.37(c)(1)(vii).

ISSUE 1
35 U.S.C. § 101 claims 10 and 12
Appellant argues their invention recites statutory subject matter
because the claimed invention determines if “each of the one or more
database records is already locked by a second user” and if not, then
“locking the database by using the first user’s database lock” thus giving a
tangible result to the claims. (App. Br. 4). Regarding the Examiner’s
rejection of the recitation of “a service comprising” in the preamble of the
claims, Appellant states that “‘service’ is a well known noun . . . [t]hus, the
term ‘service’ is simply a well known term for ‘work performed for
another.’ (See, e.g., Webster’s New World College Dictionary, Fourth
Edition.)” and is therefore, contrary to the Examiner’s allegation, achieves a
tangible result and is proper functional descriptive material. (Id. at 4-5).
Moreover, Appellant argues 35 U.S.C. § 101 does not require that “the
claims provide multiple tangible results or that the claims be read in a
manner which deliberately excludes a stated tangible result in order to
support a 101 rejection.” (Reply Br. 3-4).
In response, the Examiner maintains that no tangible result is achieved
which is equivalent to non-statutory subject matter under 35 U.S.C § 101.
Further the Examiner reasons that the recitation of “A service comprising” in
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the preamble of the claims 10 and 12 constitutes “non-functional descriptive
material and an abstract idea that is not stored on an appropriate computer
readable medium” and therefore, does not constitute statutory subject matter
under 35 U.S.C. § 101. (Ans. 10-11).
Issue 1: Is the invention as recited in claims 10 and 12 directed to
statutory subject matter under 35 U.S.C § 101?

FINDINGS OF FACT (FF)
Appellant’s Invention
1) “[I]t is understood that the present invention may be implemented
by a system having means in the form of hardware, software, or a
combination of software and hardware as described herein or their
equivalent.” (Spec. 15,¶ [0056]).

ANALYSIS
Appellant’s independent claims 10 and 12 each recite “a service”
(App. Br. 7, claims 10 and 12). Appellant defines “service” as “a well
known term for ‘work performed for another.’” (App. Br. 4). Additionally,
Appellant’s Specification describes the present invention as being realized in
software. (FF 1).
Under 35 U.S.C. § 101, four categories of subject matter are eligible
for patent protection: (1) processes; (2) machines; (3) manufactures; and (4)
compositions of matter. Patentable subject matter must fall within one of the
categories set out in 35 U.S.C. § 101 – “Those four categories define the
explicit scope and reach of subject matter patentable under 35 U.S.C. § 101
. . . .” (In re Nuijten, 500 F.3d 1346, 1357 (Fed. Cir. 2007).)
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As the Supreme Court has explained in a well-settled line of precedent
addressing patentable subject matter – laws of nature, abstract ideas, and
natural phenomena are excluded from patent protection. See Diamond v.
Diehr, 450 U.S. 175,185 (1981).
Recently, in Bilski v. Kappos, 130 S.Ct. 3218 (2010), the Court
invoked Gottschalk v. Benson, 409 U.S. 63 (CCPA 1972), Parker v. Flook,
437 U.S. 584 (1978), and Diehr, explaining that Bilski’s claims “are not
patentable processes because they are attempts to patent abstract ideas.”
Bilski, 130 S.Ct. at 3229-30.
The Supreme Court has also explained that “[a]bstract 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; see Nuijten, 500 F.3d at 1357.) The scope of such a claim is not
limited to any particular practical application. In particular, data structures
in the abstract, i.e., not claimed as embodied in a non-transitory tangible
computer-readable medium are descriptive material per se and are not
statutory subject matter because they are not capable of causing functional
change in a computer. Warmerdam, 33 F.3d at 1361; cf. In re Lowry, 32
F.3d 1579, 1583-84 (Fed. Cir. 1994); accord MPEP § 2106.01 (2007).
In contrast to Wamerdam, Lowry explains that
Lowry’s data structures impose a physical organization on the
data.
. . . .
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More than mere abstraction, the data structures are
specific electrical or magnetic structural elements in a memory.
According to Lowry, the data structures provide tangible
benefits: data stored in accordance with the claimed data
structures are more easily accessed, stored, and erased. . . .
[and] represent complex data accurately and enable powerful
nested operations. In short, Lowry’s data structures are
physical entities that provide increased efficiency in computer
operation.
Lowry, 32 F.3d at 1583-84.
In summary, as explained in Warmerdam, “the dispositive issue for
assessing compliance with § 101 . . . is whether the claim is for a process
that goes beyond simply manipulating ‘abstract ideas’ or ‘natural
phenomena.’” (Warmerdam, 33 F.3d at 1360.) Claims to data structures
and methods of manipulating data structures are not patentable subject
matter because they merely embody or manipulate “abstract ideas.” Id.
A computer program (software), no matter its function, is nothing
more than the representation of an algorithm or group of algorithms,
conceptually no different from a list of steps written down with pencil and
paper for execution by a human being. (See Benson, 409 U.S. at 72; 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.”).)
With this background in mind, we review Appellant’s claims for
compliance with § 101. In reviewing, we give claim terminology the
“broadest reasonable interpretation consistent with the Specification” in
accordance with our mandate that “claim language should be read in light of
the Specification as it would be interpreted by one of ordinary skill in the
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art.” (In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1364 (Fed. Cir.
2004) (citations omitted).)
Claim 10 merely recites steps for a service which Appellant defines as
“work performed for another” (App. Br. 4). Claim 10 does not implicate
any physical structures. For example, the claim does not recite what the
databases or database records are, where the databases reside, or what is
performing the establishing, receiving, determining, and locking (See App.
Br. 7 (claim 10).) Moreover, Appellant admits that the claim elements may
be entirely composed of software. (FF 1).
We also note that the claims do not fall within a statutory process
when reviewed under Bilski’s “machine-or-transformation test.” (See In re
Bilski, 545 F.3d 943, 961(Fed. Cir. 2008); see also Bilski, 130 S.Ct. at 3235
(“the machine-or-transformation test is a useful and important clue . . . for
determining whether some claimed inventions are processes under § 101.”).)
To the extent that Appellant’s claims may be interpreted as a process, rather
than software, we find that the claims are not tied to a particular machine
(supra), and do not transform data into a different state or thing – the service
is merely establishing a network of databases, receiving a request,
determining if database records are locked, and locking the databases if not
already locked. Without tying the claim’s functional limitations to any
concrete parts, devices, or combinations of devices, these functional
limitations could be performed solely within one’s mind, and are therefore
unpatentable. (See Benson, 409 U.S. at 72; Comiskey, 554 F.3d at 979.)
Accordingly, we find the claims recite only abstract ideas. Thus, we
find that Appellant’s representative claim 10 and, for the reasons set forth
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above, independent claim 12 fail to meet the requirements of 35 U.S.C. §
101.

NEW GROUND OF REJECTION UNDER
37 C.F.R. § 41.50(b)
Pursuant to our authority under 37 C.F.R. § 41.50(b) (2008), we are
entering the following new ground of rejection. We reject claims 11 and 13
under 35 U.S.C. § 101 as being directed to non-statutory subject matter.
Neither claim 11 nor claim 13 recites any concrete parts, devices, or
combinations of devices that would change the analysis set forth above for
claims 10 and 12. Indeed, claims 11 and 13 are directed toward abstract
ideas for the reasons set forth above.

CONCLUSION
Appellant has not shown the Examiner erred in finding that claims 10
and 12 under 35 U.S.C. § 101 as being drawn to non-statutory subject
matter. We do not reach the prior art rejections of claims 10-13 because
these claims do not recite patent-eligible subject matter under § 101, which
is a threshold requirement for patentability. (See Comiskey, 554 F.3d
967,973 (Fed. Cir. 2009); In re Bilski, 545 F.3d at 951 n.1; Ex Parte Gutta,
93 USPQ2d 1025, 1036 (BPAI 2009).)

DECISION
The Examiner’s rejection of claims 10 and 12 under 35 U.S.C. § 101
as being directed to non-statutory matter is affirmed.
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Using our authority under 37 C.F.R. § 41.50(b), we have rejected
claims 11and 13 under 35 U.S.C. § 103 as discussed supra.

37 C.F.R. § 41.50(b)
37 C.F.R. § 41.50(b) provides that, “[a] new ground of rejection
pursuant to this paragraph shall not be considered final for judicial review.”
37 C.F.R. § 41.50(b) also provides that the 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 proceedings (37 C.F.R. § 1.197 (b) 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. . . .

37 C.F.R. § 41.52(a)
Regarding the affirmed rejection, 37 C.F.R. § 41.52(a)(1) provides
“Appellant may file a single request for rehearing within two months from
the date of the original decision of the Board.” Should Appellant elect to
prosecute further before the Examiner pursuant to 37 C.F.R. § 41.50(b)(1),
in order to preserve the right to seek review under 35 U.S.C. §§ 141 or 145
with respect to the affirmed rejection, the effective date of the affirmance is
deferred until conclusion of the prosecution before the Examiner unless, as a
mere incident to the limited prosecution, the affirmed rejection is overcome.
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If Appellant elects prosecution before the Examiner and this does not
result in allowance of the application, abandonment, or a second appeal, this
case should be returned to the Board of Patent Appeals and Interferences for
final action on the affirmed rejection, including any timely request for
rehearing thereof.
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
37 C.F.R. § 41.50(b)

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