Ex Parte Hillmann et al

Board of Patent Appeals and Interferences

May 26, 2010

10275633 (B.P.A.I. May. 26, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte MATTHIAS HILLMANN and WALDEMAR KUBLI
____________

Appeal 2009-005878
Application 10/275,633
Technology Center 3700
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Decided: May 27, 2010
____________

Before: JENNIFER D. BAHR, JOHN C. KERINS, and KEN B. BARRETT,
Administrative Patent Judges.

BAHR, Administrative Patent Judge.

DECISION ON APPEAL
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STATEMENT OF THE CASE
Matthias Hillmann and Waldemar Kubli, (Appellants) appeal under
35 U.S.C. § 134 (2002) from the Examiner's decision rejecting claims 1-14.
We have jurisdiction over this appeal under 35 U.S.C. § 6 (2002).

The Invention
Appellants' claimed invention is directed to a method of designing
addendum zones for tools used to manufacture formed sheet metal parts.
Spec., para. 1.
Claim 1, reproduced below, is illustrative of the claimed invention.
1. A method for creating addendums (4) of tools
for sheet metal formed parts (2) comprising the
steps of:
determining initial directions (31) of
sectional profiles (10);
arranging the sectional profiles (10) at a
distance from one another along a component (3,
8) with utilization of said initial directions (31);
and,
connecting the sectional profiles (10) to
create addendums (4).

The Rejections
Appellants seek review of the Examiner's rejections under 35 U.S.C.
§ 101 of claims 1-14 as being directed to non-statutory subject matter, and
under § 112, first paragraph, of claims 1-14 as being based on a non-
enabling disclosure.

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SUMMARY OF DECISION
We AFFIRM-IN-PART and enter a NEW GROUND OF
REJECTION.

OPINION
Rejection (1) - 35 U.S.C. § 101
Claim 1 is directed to a method for creating addendums. Claim 13 is
directed to a computer program comprising code adapted to perform a
method of creating addendums. Claim 14 is directed to a computer readable
medium containing a program adapted to make a computer execute the steps
of a method of creating addendums.
Contentions
The Examiner rejected claims 1 and 14 as directed to non-statutory
subject matter because the sequence of steps recited in the claims are merely
data manipulation steps resulting in data representative of addendums, but
that no actual addendum is produced other than the abstract data
representation. Ans. 3. In addition, the Examiner found that claims 1 and
14 do not transform any underlying subject matter to a different state or
thing and are not tied to another statutory class. Ans. 6. In particular, the
Examiner found that the methods referred to in the claims are merely a
computational model of an addendum and do not require any particular
apparatus. Id.
The Examiner rejected claim 13 as directed to a computer program,
which, the Examiner finds, does not fall under any of the "inventive
categories" of § 101. Id. In particular, the Examiner notes that the computer
program is not claimed in conjunction with a structure or machine. Ans. 6.
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Appellants admit that claim 1 does not include a physical
transformation step, but does produce a "useful, concrete and tangible
result." Appeal Br. 11. In particular, Appellants argue that the claim results
in a "real-world result" and a "practical application": a computational model
of the addendum. Appeal Br. 12. Appellants argue claims 1-12 as a group
(Appeal Br. 10), and claims 2-12 stand or fall with claim 1. 37 C.F.R. §
41.37(c)(1)(vii) (2007).
Appellants argue claims 13 and 14 as a group. Appeal Br. 12.
Appellants argue that the types of subject matter in both claims "are well
known in the art and are not merely a manipulation of abstract ideas." Id.
Issues
Is the method of claim 1, characterized as a "computational model,"
directed to statutory subject matter?
Is the "computer program" of claim 13, claiming "computer program
code" directed to statutory subject matter?
Is the Examiner's rejection of claim 14, drawn to a "computer readable
medium," as not being directed to statutory subject matter on the basis that
the claim "recite[s] a method for creating addendums," proper?
Analysis - Claim 1
A claimed process is patent eligible under § 101 if: (1) it is tied to a
particular machine or apparatus, or (2) it transforms a particular article into a
different state or thing. In re Bilski, 545 F.3d 943, 954 (Fed. Cir. 2008),
cert. granted, 129 S. Ct. 2735 (2009). Appellants admit that claim 1 does
not meet the transformation prong. Appeal Br. 11. Appellants do not make
any arguments regarding the method of claim 1 being tied to a particular
machine or apparatus, nor do we find that claim 1 recites any limitation that
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would require a particular structure/machine. Indeed, as claimed, the entire
method could be performed solely as a mental process, by mentally
envisioning the initial directions of the sectional profiles and mentally
arranging and connecting them. Therefore, we find that claim 1 is not tied to
a particular machine or apparatus, and thus is not patent eligible under § 101.
Analysis - Claim 13
Appellants argue that a "computer program" is "well known in the
art." Appeal Br. 12. Appellants do not present any arguments in response to
the Examiner's particular rejection. See Ans. 3, 6. A "computer program" is
not one of the four enumerated statutory classes recited in § 101. Further,
the broadest reasonable interpretation of "computer program," in accordance
with its ordinary usage1, includes computer code listings. Therefore, the
"computer program" of claim 13 could encompass source code listings,
existing merely as text. See In re Warmerdam, 33 F.3d 1354, 1362 (Fed.
Cir. 1994) (sustaining a rejection for lack of statutory subject matter of a
claim directed to "data structure" not implying a "physical arrangement of
the contents of a memory"). The computer code of claim 13, not claimed as
embodied on a tangible computer readable medium, is incapable of causing
functional change in a machine, and is thus directed to non-statutory subject
matter. Cf. In re Lowry, 32 F.3d 1579, 1583 (Fed. Cir. 1994) (finding

1 See, e.g., http://www.thefreedictionary.com/computer+program (last
visited May 25, 2010) (defining "computer program" as "a sequence of
instructions, stored in any medium, that can be interpreted and executed by a
computer; - called most frequently a program. This term is used both for the
written program (a document) and for its corresponding electronic version
stored or executed on the computer.")
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statutory a claim directed to data structures "processed by a machine" and
not merely "the [] content of a memory").
Analysis - Claim 14
Appellants argue claim 14 as a group with claim 13. Appeal Br. 12.
However, claim 14 is directed to a "computer readable medium." Thus, in
an abundance of caution, we address claim 14 separately. The Examiner's
analysis of the § 101 rejection of claim 14 is solely based upon the
Examiner's interpretation of claim 14 as a method claim. See Ans. 3, 6.
However, claim 14 is not a method claim, but a claim to a "computer
readable medium." Thus, we do not sustain the Examiner's rejection of
claim 14 because the Examiner's analysis does not address whether the
"computer readable medium" of claim 14 encompasses non-statutory subject
matter.
Conclusion
We affirm the Examiner's rejection of claims 1-13 under 35 U.S.C.
§ 101 as directed to non-statutory subject matter. We reverse the Examiner's
rejection of claim 14 under § 101.

Rejection (2) - 35 U.S.C. § 112, first paragraph
Claim 1 is directed to a method for creating addendums, comprising a
step of "determining initial directions [] of sectional profiles." Claim 13 is
directed to a computer program comprising code adapted to perform a
method comprising the above-identified "determining" step. Claim 14 is
directed to a computer readable medium containing a program adapted to
make a computer execute the above-identified "determining" step.
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Contentions
The Examiner found that the Specification lacked an adequate
disclosure as to "how the initial directions of sectional profiles are
determined," and in particular, "how the sectional curve [used to determine
the initial direction of the sectional profile] is formed." Ans. 4, 7.
Appellants respond that the initial direction is determined as described in the
Specification. Appeal Br. 13-14. In particular, Appellants argue that the
sectional curve is generated from the intersection of vertical plane 24 and the
geometry of the component (i.e., its surface), as described in figure 5 and
paragraph 44. Reply Br. 5-7.
Issue
Has the Examiner demonstrated that the Specification does not enable
a person skilled in the art to "determin[e] initial directions [] of sectional
profiles" without undue experimentation?
Analysis
We agree with the Examiner's finding (Ans. 4) that the Specification
does not describe how the "sectional curve" is formed. Paragraph 44 merely
states that "a sectional curve 26 between a vertical (parallel to the z-axis)
plane 24 also running through the point 25 is formed." Thus, the
Specification merely describes the "sectional curve" as a curve running
through point 25 and between the boundaries of the plane 24.
However, the relevant inquiry is not what the specification describes
in isolation, but what the specification describes plus the scope of what
would be known to one of ordinary skill in the art without resorting to undue
experimentation. See Nat’l Recovery Tech., Inc. v. Magnetic Separation
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Sys., Inc., 166 F.3d 1190, 1196 (Fed. Cir. 1999). The Examiner has not
made any findings regarding the level of ordinary skill in the art or whether
undue experimentation would be required to determine how to draw the
"sectional curve." Indeed, other than stating that the Specification does not
disclose how the sectional curve is formed, the Examiner has not put forth
any cogent reasoning as to why one of ordinary skill in the art would not
have understood that a sectional curve is merely the intersection of the
vertical plane 24 and the surface geometry of the component, as explained
by Appellants and consistent with the Specification's stated desire to
determine a "minimum geometry change" useful for determining the initial
direction of a sectional profile 10 (Spec., para. 44) "arranged such that they
correspond to the natural course of geometrical details of the component"
(Spec., para. 43).
Conclusion
The Examiner has not met the initial burden to establish a reasonable
basis to question the enablement provided for the claim limitation of
"determining initial directions [] of sectional profiles." See In re Wright,
999 F.2d 1557, 1561-62 (Fed. Cir. 1993) (when rejecting a claim for lack of
enablement, the PTO bears the initial burden of setting forth a reasonable
explanation as to why the scope of the claim is not adequately enabled by
the description provided in the specification). As such, we do not sustain the
Examiner's rejection of claims 1-14 as lacking an enabling disclosure under
35 U.S.C. § 112, first paragraph.

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New Ground of Rejection under 35 U.S.C. § 101
The computer readable medium of claim 14 is not constrained to a
tangible medium. See In re Nuijten, 500 F.3d 1346, 1353-54 (Fed. Cir.
2007) (holding non-statutory transitory forms of signals). Thus, we find that
the medium of claim 14 could encompass transient electromagnetic signals
because these signals are both readable by a computer and adapted to make a
computer execute steps when read.
The USPTO recognizes that applicants may
have claims directed to computer readable media
that cover signals per se, which the USPTO must
reject under 35 U.S.C. § 101 as covering both non-
statutory subject matter and statutory subject
matter.
1351 Off. Gaz. Pat. Office 212 (USPTO Feb. 23, 2010). Therefore, the
medium of claim 14 is directed to non-statutory subject matter because it is
broad enough to encompass solely non-statutory signals. As such, pursuant
to our authority under 37 C.F.R. § 41.50(b), we enter a new ground of
rejection of claim 14 under 35 U.S.C. § 101 as being directed to non-
statutory subject matter.

DECISION
We affirm the Examiner's decision as to claims 1-13, and reverse the
Examiner's decision as to claim 14. Pursuant to our authority under 37
C.F.R. § 41.50(b) (2009), we enter a new ground of rejection of claim 14
under 35 U.S.C. § 101, as directed to non-statutory subject matter.

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FINALITY OF DECISION
Regarding the affirmed rejection(s), 37 C.F.R. § 41.52(a)(1) provides
"Appellant may file a single request for rehearing within two months of the
date of the original decision of the Board."
In addition to affirming the Examiner's rejection of one or more
claims, this decision contains a new ground of rejection pursuant to 37
C.F.R. § 41.50(b). 37 C.F.R. § 41.50(b) provides "[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 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:
(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.…
Should Appellants 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.
If Appellants elect prosecution before the Examiner and this does not
result in allowance of the application, abandonment or a second appeal, this
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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). See 37 C.F.R.
§ 1.136(a)(1)(iv) (2007).

AFFIRMED-IN-PART; 37 C.F.R. § 41.50(b)

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