Ex Parte Johnson

Patent Trials and Appeals Board

May 13, 2019

10500181 - (D) (P.T.A.B. May. 13, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
10/500,181 12/02/2004
22045 7590 05/15/2019
Brooks Kushman
1000 Town Center
22nd Floor
SOUTHFIELD, MI 48075
FIRST NAMED INVENTOR
Perry L. Johnson
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
PJI0105PUSA 5335
EXAMINER
GOTTSCHALK, MARTIN A
ART UNIT PAPER NUMBER
3697
NOTIFICATION DATE DELIVERY MODE
05/15/2019 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
docketing@brookskushman.com
kdilucia@brookskushman.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte PERRY L. JOHNSON
Appeal2018-001348
Application 10/500,181 1
Technology Center 3600
Before ANTON W. PETTING, MICHAEL C. ASTORINO, and
NINA L. MEDLOCK, Administrative Patent Judges.
PETTING, Administrative Patent Judge.
DECISION ON APPEAL
1 According to Appellant, the real party in interest is Perry L. Johnson
Consulting (Appeal Br. 2).
Appeal2018-001348
Application 10/500,181
STATEMENT OF THE CASE2
Perry L. Johnson (Appellant) seeks review under 35 U.S.C. § 134(a)
of a final rejection of claim 17, the only claim pending in the application on
appeal. We have jurisdiction over the appeal pursuant to 35 U.S.C. § 6(b).
The Appellant invented a way of performing various types of audits to
certify compliance with a national or international standard.
Specification 1 : 5-7.
An understanding of the invention can be derived from a reading of
claim 1 7, which is reproduced below (bracketed matter and some
paragraphing added).
17. A system for initiating a witness audit comprising: one or
more computers configured to
[1] periodically receive input specifying a query to a central
database storing information representing a plurality of
available audits required to obtain or maintain an accreditation,
each of the queries based on requirements of the witness audit
including at least one of SIC code and accreditation type;
[2] for each of the queries, provide a list of the available audits
responsive to the query;
[3] display one or more scheduled upcoming dates for a
selected audit;
[ 4] receive input representing a confirmation of the one or more
scheduled upcoming dates for the selected audit;
and
2 Our decision will make reference to the Appellant's Appeal Brief ("App.
Br.," filed May 22, 2017) and Reply Brief ("Reply Br.," filed November 21,
2017), and the Examiner's Answer ("Ans.," mailed September 21, 2017),
and Final Action ("Final Act.," mailed October 20, 2016).
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[5] store the confirmation in a corresponding field of the central
database.
The Examiner relies upon the following prior art:
Schuler US 5,855,005
Boyd US 2002/0194049 Al
Dec. 29, 1998
Dec. 19,2002
Claim 17 stands rejected under 35 U.S.C. § 101 as directed to a judicial
exception without significantly more.
Claim 17 stands rejected under 35 U.S.C. § I03(a) as unpatentable over
Schuler and Boyd.
ISSUES
The issues of eligible subject matter tum primarily on whether the
claim recites more than abstract conceptual advice of what a computer is to
provide without implementation details.
The issues of obviousness tum primarily on whether patentable
weight should be afforded the characterization of the audit limitation as
being limited to a witness audit.
FACTS PERTINENT TO THE ISSUES
The following enumerated Findings of Fact (FF) are believed to be
supported by a preponderance of the evidence.
Facts Related to the Prior Art
Schuler
01. Schuler is directed to auditing systems used for monitoring the
activities of a business entity. Schuler 1:6-7.
02. Schuler describes a computer-implemented system for auditing
a total exposure of an entity, the total exposure forming the basis
of a premium amount to be charged to the entity for an insurance
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policy. A first means for receiving a plurality of exposure
information records from a first source is provided. Each of the
exposure information records from the first source corresponds to
a location of the entity and a class code associated with the
location of the entity. A database, coupled to the first means for
receiving, is provided for storing the exposure records from the
first source. Each of the exposure records from the first source is
stored in the database as a data structure having an entity number
field for storing a code that uniquely identifies the entity in the
database, a location field for storing information representing a
geographical location of the entity, a class code field for storing
information representing a class code associated with the entity,
and an amount field for storing an exposure amount associated
with the geographical location and the class code stored in the
location and class code fields, respectively, of the data structure.
A totaling means is provided for determining a first total exposure
amount associated with the entity from the exposure records from
the first source. A second receiving means is provided for
receiving a second total exposure amount associated with the
entity from a second source that is different from the first source.
A reconciliation means reconciles the first total amount by
comparing the first total amount to the second total amount. The
reconciliation means includes means for entering into the system
an explanation of a deviation between the first total amount and
the second total amount. Schuler 1 :66-2:28.
03. After an auditor has retrieved a listing or inventory of his or
her audits using the Audit Inventory Menu as described above, the
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auditor may next select an audit to work on by clicking on one of
the individual audits listed by the Audit Inventory Menu.
Following the selection of an individual audit from the Audit
Inventory Menu, a Policy View/ Audit View Menu is displayed
for the auditor. From the Policy View/ Audit View Menu, the
auditor may selectively proceed to one of several alternative steps
by clicking on a particular box in the Menu. Schuler 5:53---6:24.
04. In addition to inputting the entity identification information, an
auditor selects a model worksheet to use for auditing each entity.
The auditor selects a model worksheet to use in auditing the entity
by first clicking on a box, which causes a list of pre-formatted
worksheets (or spreadsheets) to be displayed for the auditor, and
then selecting one of the pre-formatted worksheets from the
displayed list. Thus, each entity will have one or more selected
worksheets that are associated with that entity. Information
corresponding to the selected worksheet for a given entity is then
stored in data records. Once a particular worksheet has been
selected using a button, an auditor may access the worksheet in
order to enter, reconcile and/or verify financial information
associated with the entity by clicking on the button. Schuler 8: 19-
37.
Boyd
05. Boyd is directed to facilitating the arrangement of networking
meetings between two or more individuals. Boyd para. 2.
06. Boyd describes the desirability of a personalized, dynamic
interactive means which allows individuals to schedule a time and
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place for a meeting for the purpose of business or personal
networking. Boyd para. 1 7.
07. Boyd describes a participant either confirming or declining the
meeting. Boyd paras. 48 and 59.
ANALYSIS
Claim 17 rejected under 35 U.S.C. § 1 OJ as directed to a judicial exception
without significantly more
STEP 12
Claim 17, as a system claim, nominally recites one of the enumerated
categories of eligible subject matter in 35 U.S.C. § 101. The issue before us
is whether it is directed to a judicial exception without significantly more.
STEP2
The Supreme Court
set forth a framework for distinguishing patents that claim laws
of nature, natural phenomena, and abstract ideas from those that
claim patent-eligible applications of those concepts. First, ...
determine whether the claims at issue are directed to one of
those patent-ineligible concepts. If so, we then ask, "[ w ]hat
else is there in the claims before us?" To answer that question,
. . . consider the elements of each claim both individually and
"as an ordered combination" to determine whether the
additional elements "transform the nature of the claim" into a
patent-eligible application. [The Court] described step two of
this analysis as a search for an "'inventive concept'"-i.e., an
element or combination of elements that is "sufficient to ensure
that the patent in practice amounts to significantly more than a
patent upon the [ineligible concept] itself."
3 For continuity of analysis, we adopt the steps nomenclature from 2019
Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7,
2019).
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Alice Corp. v CLS Banklnt'l, 573 U.S. 208, 217-18 (2014) (citations
omitted) ( citing Mayo Collaborative Servs. v. Prometheus Labs., Inc.,
566 U.S. 66 (2012)). To perform this test, we must first determine what the
claims are directed to. This begins by determining whether the claims recite
one of the judicial exceptions ( a law of nature, a natural phenomenon, or an
abstract idea). Then, if claims recite a judicial exception, determining
whether the claims at issue are directed to the recited judicial exception, or
whether the recited judicial exception is integrated into a practical
application of that exception, i.e., that the claims "apply, rely on, or use the
judicial exception in a manner that imposes a meaningful limit on the
judicial exception, such that the claim is more than a drafting effort designed
to monopolize the judicial exception." 2019 Guidance, 84 Fed. Reg. at 54.
If the claims are directed to a judicial exception, then finally determining
whether the claims provide an inventive concept because the additional
elements recited in the claims provide significantly more than the recited
judicial exception.
STEP 2A Prong 1
System claim 1 7 recites querying with a list, displaying dates, and
receiving and storing a confirmation. Thus, claim 17 recites receiving,
displaying, receiving, and storing data. None of the limitations recites
technological implementation details for any of these steps, but instead recite
only results desired by any and all possible means.
From this we see that claim 1 7 does not recite the judicial exceptions
of either natural phenomena or laws of nature.
Under Supreme Court precedent, claims directed purely to an abstract
idea are patent ineligible. As set forth in the Revised Guidance, which
extracts and synthesizes key concepts identified by the courts, abstract ideas
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include (1) mathematical concepts4, (2) certain methods of organizing
human activity5, and (3) mental processes 6. Among those certain methods
of organizing human activity listed in the Revised Guidance are commercial
or legal interactions. Like those concepts, claim 17 recites the concept of
quality management. Specifically, claim 17 recites operations that would
ordinarily take place in advising one to periodically receive data to select
and confirm an audit date from a list of dates. The advice to periodically
receive data to select and confirm an audit date from a list of dates involves
auditing results, which is an economic act, and planning an audit, which is
an act ordinarily performed in the stream of commerce. For example, claim
17 recites "provide a list of the available audits," which is an activity that
would take place whenever one is planning audits. Similarly, claim 17
recites "display one or more scheduled upcoming dates for a selected audit"
and "confirmation of the one or more scheduled upcoming dates for the
selected audit," which are also characteristics of audit planning.
The Examiner determines the claims to be directed to confirming the date
for an upcoming audit. Final Act. 2.
4 See, e.g., Gottschalkv. Benson, 409 U.S. 63, 71-72 (1972); Bilski v.
Kappas, 561 U.S. 593, 611 (2010); Mackay Radio & Telegraph Co. v. Radio
Corp. of Am., 306 U.S. 86, 94 (1939); SAP Am., Inc. v. InvestPic, LLC,
898 F.3d 1161, 1163 (Fed. Cir. 2018).
5 See, e.g., Bilski, 561 U.S. at 628; Alice, 573 U.S. at 219-20; Ultramercial,
Inc. v. Hulu, LLC, 772 F.3d 709, 715 (Fed Cir. 2014); Smart Sys.
Innovations, LLC v. Chicago Transit Auth., 873 F.3d 1364, 1383 (Fed. Cir.
2017); In re Marco Guldenaar Holding B. V., 911 F.3d 1157, 1160-61 (Fed.
Cir. 2018).
6 See, e.g., Benson, 409 U.S. at 67; CyberSource Corp. v. Retail Decisions,
Inc., 654 F.3d 1366, 1371-72 (Fed. Cir. 2011); Intellectual Ventures I LLC
v. Symantec Corp., 838 F.3d 1307, 1318 (Fed. Cir. 2016).
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The preamble to claim 17 recites that it is a system for initiating a witness
audit. The steps in claim 17 result in displaying and confirming an audit
date, absent any technological mechanism other than a conventional
computer for doing so.
As to the specific limitations, limitation 1 recites data gathering for the
purpose of specifying a query. Limitation 2 recites data gathering in the
form of providing a list for each query. There is no step between these of
performing a query. Limitation 3 recites insignificant display of dates.
Limitations 4 and 5 recite data gathering and storage in the form of receiving
and storing a confirmation input, which is simply confirming a date. The
limitations thus recite advice for periodically receiving data to select and
confirm an audit date from a list of dates. To advocate periodically
receiving data to select and confirm an audit date from a list of dates is
conceptual advice for results desired and not technological operations.
The Specification at 1 : 5-7 describes the invention as relating to
performing various types of audits to certify compliance with a national or
international standard. The Specification at 3: 12-23 describes this as being
part of quality management. Thus, all this intrinsic evidence shows that
claim 17 is directed to confirming an audit date, i.e. quality management.
This is consistent with the Examiner's determination.
This, in tum, is an example of commercial or legal interactions as a
certain method of organizing human activity because managing quality is an
interaction of those managing quality in a commercial enterprise. The
concept of quality management as advised to be done by periodically
receiving data to select and confirm an audit date from a list of dates is part
of the idea of managing quality with periodic audits. The steps recited in
claim 17 are part of periodically assigning audit dates.
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Our reviewing court has found claims to be directed to abstract ideas
when they recited similar subject matter. "We agree with the district court
that filtering content is an abstract idea because it is a long-standing, well-
known method of organizing human behavior, similar to concepts previously
found to be abstract." BASCOM Glob. Internet Servs., Inc. v. AT&T
Mobility LLC, 827 F.3d 1341, 1347 (Fed. Cir. 2016).
Alternately, this is an example of concepts performed in the human mind
as mental processes because the steps of receiving, displaying, receiving,
and storing data mimic human thought processes of observation, evaluation,
judgment, and opinion, perhaps with paper and pencil, where the data
interpretation is perceptible only in the human mind. See In re TL!
Commc 'ns LLC Patent Litig., 823 F.3d 607, 611 (Fed. Cir. 2016);
FairWarning IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089, 1093-94 (Fed. Cir.
2016). Claim 17, unlike the claims found non-abstract in prior cases, uses
generic computer technology to perform data reception, display, and storage
and does not recite an improvement to a particular computer technology.
See, e.g., McRO, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299,
1314--15 (Fed. Cir. 2016) (finding claims not abstract because they "focused
on a specific asserted improvement in computer animation"). As such,
claim 17 is directed to receiving, displaying, receiving, and storing data, and
not a technological implementation or application of that idea.
From this we conclude that at least to this degree, claim 17 is directed
to quality management by periodically receiving data to select and confirm
an audit date from a list of dates.
STEP 2A Prong 2
The next issue is whether claim 17 not only recites, but is more
precisely directed to this concept itself or whether it is instead directed to
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some technological implementation or application of, or improvement to,
this concept i.e. integrated into a practical application. 7
At the same time, we tread carefully in construing this
exclusionary principle lest it swallow all of patent law. At
some level, "all inventions ... embody, use, reflect, rest upon,
or apply laws of nature, natural phenomena, or abstract ideas."
Thus, an invention is not rendered ineligible for patent simply
because it involves an abstract concept. "[ A ]pplication[ s ]" of
such concepts " 'to a new and useful end,' " we have said,
remain eligible for patent protection. Accordingly, in applying
the § 101 exception, we must distinguish between patents that
claim the " 'buildin[g] block[ s]' " of human ingenuity and those
that integrate the building blocks into something more.
Alice, 573 U.S. at 217 ( citations omitted).
The introduction of a computer into the claims does not generally alter
the analysis at Mayo step two.
the mere recitation of a generic computer cannot transform a
patent-ineligible abstract idea into a patent-eligible invention.
Stating an abstract idea "while adding the words 'apply it"' is
not enough for patent eligibility. Nor is limiting the use of an
abstract idea "'to a particular technological environment."'
Stating an abstract idea while adding the words "apply it with a
computer" simply combines those two steps, with the same
deficient result. Thus, if a patent's recitation of a computer
amounts to a mere instruction to "implement[t]" an abstract
idea "on ... a computer," that addition cannot impart patent
eligibility. This conclusion accords with the preemption
concern that undergirds our § 101 jurisprudence. Given the
ubiquity of computers, wholly generic computer
implementation is not generally the sort of "additional
feature[ e ]" that provides any "practical assurance that the
process is more than a drafting effort designed to monopolize
the [ abstract idea] itself."
7 See, e.g., Alice, 573 U.S. at 223, discussing Diamond v. Diehr, 450 U.S.
175 (1981).
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Alice, 573 U.S. at 223-24 (citations omitted).
"[T]he relevant question is whether the claim[ ] here do[ es] more than
simply instruct the practitioner to implement the abstract idea [] on a generic
computer." Alice, 573 U.S. at 225. It does not.
Taking the claim elements separately, the operation performed by the
computer at each step of the process is expressed purely in terms of results,
devoid of implementation details. Steps 1, 2, 4, and 5 are pure data
gathering steps. Limitations describing the nature of the data do not alter
this. Step 3 is insignificant post solution activity, such as storing,
transmitting, or displaying the results. All purported inventive aspects reside
in how the data are interpreted and the results desired, and not in how the
process physically enforces such a data interpretation or in how the process
technologically achieves those results.
Viewed as a whole, Appellant's claim 17 simply recites the concept of
quality management by periodically receiving data to select and confirm an
audit date from a list of dates as performed by a generic computer. This is
no more than conceptual advice on the parameters for this concept and the
generic computer processes necessary to process those parameters, and does
not recite any particular implementation.
Claim 17 does not, for example, purport to improve the functioning of the
computer itself. Nor does it effect an improvement in any other technology
or technical field. The 23+ pages of specification spell out different generic
procedures8 and parameters that might be applied using this concept and the
particular steps such conventional processing would entail based on the
8 The Specification does not describe exemplary equipment or even
parameters for equipment, other than there being a database and screen.
Spec. 23.
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concept of quality management by periodically receiving data to select and
confirm an audit date from a list of dates under different scenarios. They do
not describe any particular improvement in the manner a computer
functions. Instead, claim 17 at issue amounts to nothing significantly more
than an instruction to apply quality management by periodically receiving
data to select and confirm an audit date from a list of dates using some
unspecified, generic computer. Under our precedents, that is not enough to
transform an abstract idea into a patent-eligible invention. See Alice, 573
U.S. at 225-26.
None of the limitations reflects an improvement in the functioning of a
computer, or an improvement to other technology or technical field, applies
or uses a judicial exception to effect a particular treatment or prophylaxis for
a disease or medical condition, implements a judicial exception with, or uses
a judicial exception in conjunction with, a particular machine or manufacture
that is integral to the claim, effects a transformation or reduction of a
particular article to a different state or thing, or applies or uses the judicial
exception in some other meaningful way beyond generally linking the use of
the judicial exception to a particular technological environment, such that
the claim as a whole is more than a drafting effort designed to monopolize
the exception.
We conclude that claim 1 7 is directed to achieving the result of quality
management by advising one to periodically receive data to select and
confirm an audit date from a list of dates as distinguished from a
technological improvement for achieving or applying that result. This
amounts to commercial or legal interactions, which fall within certain
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methods of organizing human activity that constitute abstract ideas. The
claim does not integrate the judicial exception into a practical application.
STEP 2B
The next issue is whether claim 17 provides an inventive concept because
the additional elements recited in the claim provide significantly more than
the recited judicial exception. Taking the claim elements separately, the
function performed by the computer at each step of the process is purely
conventional. Using a computer for receiving, displaying, receiving, and
storing data amounts to electronic data query and retrieval----one of the most
basic functions of a computer. The limitation of "each of the queries based
on requirements of the witness audit including at least one of SIC code and
accreditation type" is not a step, but a recitation of the characterization of
queries, viz. an aspiration as to how the queries are characterized, which is
afforded no patentable weight. All of these computer functions are generic,
routine, conventional computer activities that are performed only for their
conventional uses. See Elec. Power Grp. v. Alstom S.A., 830 F.3d 1350,
1353 (Fed. Cir. 2016). See also In re Katz Interactive Call Processing
Patent Litigation, 639 F.3d 1303, 1316 (Fed. Cir. 2011) ("Absent a possible
narrower construction of the terms 'processing,' 'receiving,' and 'storing,' ..
. those functions can be achieved by any general purpose computer without
special programming"). None of these activities is used in some
unconventional manner nor do any produce some unexpected result.
Appellant does not contend to have invented any of these activities. In short,
each step does no more than require a generic computer to perform generic
computer functions. As to the data operated upon, "even if a process of
collecting and analyzing information is 'limited to particular content' or a
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particular 'source,' that limitation does not make the collection and analysis
other than abstract." SAP Am., Inc. v. InvestPic LLC, 898 F.3d 1161, 1168
(Fed. Cir. 2018).
Considered as an ordered combination, the computer components of
Appellant's claim 1 7 add nothing that is not already present when the steps
are considered separately. The sequence of data reception-display-
reception-storage is equally generic and conventional. See Ultramercial,
Inc. v. Hulu, LLC, 772 F.3d 709, 715 (Fed. Cir. 2014) (sequence of
receiving, selecting, offering for exchange, display, allowing access, and
receiving payment recited an abstraction), Inventor Holdings, LLC v. Bed
Bath & Beyond, Inc., 876 F.3d 1372, 1378 (Fed. Cir. 2017) (sequence of
data retrieval, analysis, modification, generation, display, and transmission),
Two-Way Media Ltd. v. Comcast Cable Communications, LLC, 874 F.3d
1329, 1339 (Fed. Cir. 2017) (sequence of processing, routing, controlling,
and monitoring). The ordering of the steps is, therefore, ordinary and
conventional.
We conclude that claim 17 does not provide an inventive concept
because the additional elements recited in the claim do not provide
significantly more than the recited judicial exception.
REMAINING CLAIMS
There are no other claims. There is only a single claim in the Application.
LEGAL CONCLUSION
From these determinations we further determine that claim 17 does
not recite an improvement to the functioning of the computer itself or to any
other technology or technical field, a particular machine, a particular
transformation, or other meaningful limitations. From this we conclude the
claim is directed to the judicial exception of the abstract idea of certain
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methods of organizing human activity as exemplified by quality
management by advising one to periodically receive data to select and
confirm an audit date from a list of dates, without significantly more.
APPELLANT'S ARGUMENTS
We are not persuaded by Appellant's argument that "[i]mplementing
an abstract idea, by definition, would mean that it is no longer abstract."
App. Br. 3. Claim 17 does not recite a technological implementation. "The
features set forth in the claim[ ] are described and claimed generically
rather than with the specificity necessary to show how those
components provide a concrete solution to the problem addressed by the
patent." Affinity Labs of Texas, LLC v. Amazon.com Inc., 838 F.3d 1266,
1271 (2016).
We are not persuaded by Appellant's argument "how does one, for
example, perform with pen and paper queries to a central database-no less
queries to a central database that are based on requirements of a witness
audit including at least one of SIC code and accreditation type?" App. Br. 3.
Recital of generic computer components to perform an abstract idea is
generally insufficient.
Because the claims are directed to an abstract idea, the claims
must include an "inventive concept" in order to be patent-
eligible. No such inventive concept is present here. Instead, the
claims "add" only generic computer components such as an
"interface," "network," and "database." These generic
computer components do not satisfy the inventive concept
requirement.
Mortgage Grader, Inc. v. First Choice Loan Services Inc., 811 F.3d 1314,
1324--1325 (2016) (internal citations and quotation marks omitted).
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Claim 17 rejected under 35 U.S.C. § 103(a) as unpatentable over Schuler
and Boyd
Claim 17 is an apparatus claim with one recited part, viz. one or more
computers. The claim does not recite any manner in which the word
computer affects the structure or function of the parts.
As to structural inventions, such claims must be distinguished from
the prior art in terms of structure rather than function. See, e.g., In re
Schreiber, 128 F.3d 1473, 1477-78 (Fed. Cir. 1997). In order to satisfy the
functional limitations in an apparatus claim, however, the prior art apparatus
as disclosed must be capable of performing the claimed function. Id.
at 1478. When the functional language is associated with programming or
some other structure required to perform the function, that programming or
structure must be present in order to meet the claim limitation. Typhoon
Touch Techs., Inc. v. Dell, Inc., 659 F.3d 1376, 1380 (Fed. Cir. 2011)
( discussing Microprocessor Enhancement Corp. v. Texas Instruments, Inc.,
520 F.3d 1367 (Fed. Cir. 2008)). In some circumstances generic structural
disclosures may be sufficient to meet the functional requirements. See Ergo
Licensing, LLC v. CareFusion 303, Inc., 673 F.3d 1361, 1364 (Fed. Cir.
2012) (citing Telcordia Techs., Inc. v. Cisco Sys., Inc., 612 F.3d 1365, 1376-
77 (Fed. Cir. 2010)).
Also, a structural invention is not distinguished by the work product it
operates upon, such as data in a computer. "[E]xpressions relating the
apparatus to contents thereof during an intended operation are of no
significance in determining patentability of the apparatus claim." Ex parte
Thibault, 164 USPQ 666, 667 (Bd. App. 1969). Furthermore, "inclusion of
material or article worked upon by a structure being claimed does not impart
patentability to the claims." In re Otto, 312 F.2d 937,940 (CCPA 1963).
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Claim 17 recites querying with a list, displaying dates, and receiving
and storing a confirmation. As the Examiner finds, Schuler describes the
query and date display, Boyd describes the confirmation, and the need and
use of confirmations is and has been sufficiently notoriously well known to
makes applying it to scheduling a date obvious on its face. The Examiner
also finds that Schuler applies its queries to the audits as recited in the claim.
Appellant argues that the Examiner should have given patentable
weight to the adjective "witness" in the limitations "witness audit." We are
not persuaded by Appellant's argument that "the limitations at issue are
positively recited within the context of the claim, and are entitled to be given
patentable weight." App. Br. 4. As we determined supra, a structural
invention is not distinguished by the work product it operates upon, such as
data in a computer. Furthermore, the characterization of the audit being a
witness audit is discemable only in the mind of the beholder, and also
undeserving of weight for that reason as well. In re Bernhart, 417 F.2d
1395, 1399 (CCPA 1969). Even if weight were granted, Appellant has not
convincingly argued that because Schuler describes application of the claim
steps to one form of audit, it would not have been obvious to one of ordinary
skill to apply the claim steps in any other form of audit.
CONCLUSIONS OF LAW
The rejection of claim 17 under 35 U.S.C. § 101 as directed to a
judicial exception without significantly more is proper.
The rejection of claim 17 under 35 U.S.C. § 103(a) as unpatentable
over Schuler and Boyd is proper.
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DECISION
The rejection of claim 1 7 is affirmed.
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)(l)(iv) (2011).
AFFIRMED
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