Ex Parte Hassinger et al

Patent Trial and Appeal Board

Jun 28, 2013

10112531 (P.T.A.B. Jun. 28, 2013)

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.
10/112,531 03/28/2002 Sebastian D. Hassinger 49703.90 3700
27683 7590 06/28/2013
HAYNES AND BOONE, LLP
IP Section
2323 Victory Avenue
Suite 700
Dallas, TX 75219
EXAMINER
NGUYEN, TAN D
ART UNIT PAPER NUMBER
3689
MAIL DATE DELIVERY MODE
06/28/2013 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 PATENT TRIAL AND APPEAL BOARD
____________

Ex parte SEBASTIAN D. HASSINGER, MARGARET G. MACPHAIL,
and DAVID B. KUMHYR
____________

Appeal 2011-008903
Application 10/112,531
Technology Center 3600
____________

Before ALLEN R. MACDONALD, ELENI MANTIS MERCADER, and
MATTHEW R. CLEMENTS, Administrative Patent Judges.

CLEMENTS, Administrative Patent Judge.

DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 1-27. We have jurisdiction under 35 U.S.C. § 6(b). We
affirm-in-part, designating the rejection of claims 10-18 as new grounds.

STATEMENT OF THE CASE
Appellants’ invention generally relates to a method for processing
e-commerce information in which a project model is modified by a user only
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if dependency relationships can be maintained. See generally Abstract.
Claim 1 is illustrative:
1. A method for processing e-commerce information for a
business entity, the method comprising:
retrieving a project model that represents a project for a product
or service for sale by the business entity, wherein the project model
comprises dependency relationships derived from e-commerce
agreements such that the dependency relationships
constrain modifications of the project model with respect to
specific parameters;
receiving a user input proposal to specify modified parameters
to be employed within the project model;
determining whether dependency relationships within the
project model can be maintained if the modified parameters are
employed within the project model; and
modifying the project model based on the specified modified
parameters after determining that the dependency relationships within
the project model can be maintained.

THE REJECTIONS
1. Claims 1-9 and 19-27 stand rejected under 35 U.S.C. § 101 as
directed to non-statutory subject matter. Ans. 5-6. 1
2. Claims 10-18 stand rejected under 35 U.S.C. § 101 as directed to
non-statutory subject matter. Ans. 6-7.
3. Claims 10-18 stand rejected under 35 U.S.C. § 112 as being
indefinite. Ans. 7-8.

1 Throughout this opinion, we refer to (1) the Appeal Brief filed Sept. 20,
2010 (“App. Br.”); (2) the Examiner’s Answer mailed Feb. 18, 2011
(“Ans.”); and (3) the Reply Brief filed Apr. 18, 2011 (“Reply Br.”).
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4. Claims 1-27 stand rejected under 35 U.S.C. § 102(e) as anticipated
by Adler (US 2002/0169658 A1; filed Mar. 6, 2002; published Nov. 14,
2002). Ans. 9-14.
5. Claims 1-27 stand rejected under 35 U.S.C. § 102(e) as anticipated
by Chappel (US 2003/0101089 A1; filed Nov. 29, 2001; published May 29,
2003). Ans. 14-18.

THE STATUTORY SUBJECT MATTER REJECTION OF
CLAIMS 1-9 AND 19-27
The Examiner finds that claims 1-9 and 19-27 are directed to
nonstatutory subject matter. Ans. 5-6.
Appellants argue that (1) the Examiner has not made a prima facie
case because the machine-or-transformation test is no longer the sole test of
patent eligibility; (2) the claims meet the “transformation” requirement
because the project model is modified; (3) claims 19-27 are not “process
claims” because they recite a “computer program product;” (4) the claims do
not recite a fundamental principle, law of nature, natural phenomenon, or
abstract idea because a particular type of data (i.e., the “project model”) is
being transformed; and (5) the claimed process cannot be performed in the
human mind. App. Br. 4-6.

ISSUES
(1) Is claim 1 directed to patent-ineligible subject matter?
(2) Is claim 19 directed to patent-ineligible subject matter?
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LEGAL PRINCIPLES
“‘[L]aws of nature, natural phenomena, and abstract ideas’ are
excluded from patent eligibility, id. at 185, because such fundamental
discoveries represent ‘the basic tools of scientific and technological work.’”
CLS Bank Int’l. v. Alice Corp. Pty. Ltd., 106 USPQ2d 1696 (Fed. Cir. 2013)
(quoting Diamond v. Diehr, 450 U.S. 175, 191-192 (1981) and Gottschalk v.
Benson, 409 U.S. 63, 67 (1972)).
“[T]he prohibition against patenting abstract ideas ‘cannot be
circumvented by attempting to limit the use of the formula to a particular
technological environment’ or adding ‘insignificant postsolution activity.’”
Bilski v. Kappos, 130 S. Ct. 3218, 3230 (2010) (quoting Diehr, 450 U.S. at
191–92).
ANALYSIS
Claim 1
The Examiner relies, in part, upon the “machine-or-transformation”
test articulated in In re Bilski, 545 F.3d 943 (Fed. Cir. 2008) (en banc), cert.
granted sub. nom. Bilski v. Doll, 129 S. Ct. 2735 (2009). After the mailing
of the Final Rejection, the Supreme Court clarified that the “machine-or-
transformation” test was not the sole test of patent eligibility. Bilski v.
Kappos, 130 S. Ct. 3218 (2010). Nevertheless, even under the current
standard for § 101, articulated most recently in CLS Bank, we agree with the
Examiner that claim 1 is directed to patent-ineligible subject matter.
Claim 1 is directed to an abstract idea of modifying a project model
only if dependency relationships can be maintained. The claim does not
require a computer. Like the claims at issue in Bilski v. Kappos, “[a]llowing
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[the claims] would pre-empt use of this approach in all fields, and would
effectively grant a monopoly over an abstract idea.” Kappos, 130 S. Ct. at
3231. Such claims cannot be made patent eligible by “limiting an abstract
idea to one field of use or adding token postsolution components.” Id.
We are not persuaded by Appellants’ argument that the claims meet
the “transformation” requirement because the project model is modified.
App. Br. 4-6; Reply Br. 3-4. The modification of a project model does not
transform underlying subject matter to a different state or thing. Ans. 4, 81-
82; see also CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366,
1375 (Fed. Cir. 2011) (“The mere manipulation or reorganization of data,
however, does not satisfy the transformation prong.”).

Claim 19
Claim 19 recites a “computer program product in a computer readable
medium” comprising “instructions for” performing the steps of the method
of claim 1. “Allowing the determination of patent eligibility to ‘depend
simply on the draftsman’s art … would ill serve the principles underlying
the prohibition against patents for ‘ideas’ or phenomena of nature.’” CLS
Bank, 106 USPQ2d at 1703 (quoting Parker v. Flook, 437 U.S. 584, 593
(1978)). Because the “instructions” of claim 19 merely perform the method
of claim 1, it is no less abstract. Like the Beauregard claims at issue in CLS
Bank, we conclude that claim 19 is equivalent to claim 1 for § 101 purposes.
We are not persuaded by Appellants’ arguments that claim 19
qualifies as a manufacture and is not abstract.2 Reply Br. 2-3.

2 Should there be further prosecution, the Examiner’s attention is directed to
the Interim Examination Instructions for Evaluating Subject Matter
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* * *
On this record, Appellants have not persuaded us of reversible error in
the rejection of claims 1-9 and 19-27 under § 101. Accordingly, we sustain
the rejection of claims 1-9 and 19-27.

NEW GROUNDS OF REJECTION UNDER 37 C.F.R. § 41.50(b)
We enter a new ground of rejection for independent claim 10 and
dependent claims 11-18 as unpatentable under 35 U.S.C. § 101.
As the Federal Circuit recently held:
[A]ll claims are normally to be considered separately, but discrete
claims reciting subject matter only nominally from different statutory
classes may warrant similar substantive treatment under § 101 when,
in practical effect, they cover the same invention. That may be
particularly apparent where . . . a claim presents a physical recitation
of an abstract method, and parallel claims . . . claim that same abstract
method in the same or similar terms.
CLS Bank, 106 USPQ2d at 1708.
Claim 10 recites an “apparatus” comprising “means for” performing
the steps of the method of claim 1. Claim 10 is formally drawn to physical
objects—an “apparatus,” “means for retrieiving . . . ,” “means for receiving .
. . ,” “means for determining . . . ,” and “means for modifying . . . ,”
However, the only disclosed structure capable of performing these functions
is a processor. Spec. 10:21-23. Thus, these means-plus-function elements
expressly cover only the algorithms disclosed as a means for performing

Eligibility Under 35 U.S.C. § 101, Aug. 2009, at 2, available at
http://www.uspto.gov/web/offices/pac/dapp/opla/2009-08-
25_interim_101_instructions.pdf (providing a computer program per se as
an example of a claim not directed to one of the four patent-eligible subject
matter categories).
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these steps, or equivalents thereof. See, e.g., Aristocrat Techs. Austl. Pty
Ltd. v. Int’l Game Tech., 521 F.3d 1328, 1333 (Fed. Cir. 2008). As support
for these means-plus-function elements, Appellants refer broadly to the
entire Summary of the Invention, Brief Description of the Drawings, and
Detailed Description of the Invention, including the same disclosure cited to
in support of claim 1. App. Br. 2-3. As a result, we conclude that the scope
of the means-plus-function elements of claim 10 is coextensive with the
steps of claim 1. While claim 10 recites an “apparatus” instead of a method,
“[a]llowing the determination of patent eligibility to ‘depend simply on the
draftsman’s art … would ill serve the principles underlying the prohibition
against patents for ‘ideas’ or phenomena of nature.’” CLS Bank, 106
USPQ2d at 1703 (quoting Flook, 437 U.S. at 593). Like the system claims
at issue in CLS Bank, the computer-based limitations recited in the system
claims here cannot support any meaningful distinction from the related
method claims. The system claims merely recite the method steps in means-
plus-function form. Such limitations are not actually limiting in the sense
required under § 101. CLS Bank, 106 USPQ2d at 1710. We therefore
conclude that claim 10 is equivalent to the method it recites for § 101
purposes.
As a result, we conclude that independent claim 10 is directed to
patent-ineligible subject matter for the reasons discussed above in
connection with claims 1 and 19. Dependent claims 11-18 are directed to
patent-ineligible subject matter for the same reasons.

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THE OTHER REJECTIONS
As to the other rejections, our decision is dispositive with respect to
patentability since claims 1-27 on appeal do not recite patent-eligible subject
matter under § 101. We therefore need not reach the questions of whether
claims 10-18 recite a patent-ineligible mixed method and apparatus under
§ 101, whether claims 10-18 are indefinite under § 112, and whether claims
1-27 would have been anticipated under § 102 or obvious under § 103. See
Diehr, 450 U.S. 175 at 188; In re Comiskey, 554 F.3d 967, 973 (Fed. Cir.
2009) (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 the Examiner may
reject claims solely on that basis).

CONCLUSION
The Examiner did not err in rejecting claims 1-9 and 19-27 under
§ 101. We newly reject claims 10-18 under § 101.

ORDER
The Examiner’s decision rejecting claims 1-27 is affirmed-in-part.
This decision contains new grounds of rejection pursuant to 37 C.F.R.
§ 41.50(b) for claims 10-18. This section provides that “[a] new ground of
rejection . . . shall not be considered final for judicial review.”
Section 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 ground of rejection to
avoid termination of the appeal as to the rejected claims:
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(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. . . .

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)

gvw