Ex Parte Kaminsky et al

Board of Patent Appeals and Interferences

Apr 19, 2010

10652109 (B.P.A.I. Apr. 19, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte DAVID L. KAMINSKY, CHRISTOPHER J. ROGUS,
and KYLE M. SMITH
___________

Appeal 2009-003736
Application 10/652,109
Technology Center 2100
____________

Decided: April 19, 2010
____________

Before JOHN A. JEFFERY, JAY P. LUCAS, and
ST. JOHN COURTENAY III, Administrative Patent Judges.

COURTENAY, Administrative Patent Judge.

DECISION ON APPEAL

This is a decision on appeal under 35 U.S.C. § 134(a) (2002) from the
Examiner’s rejection of claims 1-13. We have jurisdiction under 35 U.S.C.
§ 6(b) (2008).
We affirm in part.
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STATEMENT OF THE CASE
INVENTION
The invention on appeal is directed generally to the field of computer-
human interactions. More particularly, the invention on appeal is directed to
the configuration of a user interface to facilitate computer-human
interactions through the user interface. (Spec. 1).

ILLUSTRATIVE CLAIM
1. A system for autonomically configuring a user interface
comprising:

at least one widget programmed to be disposed in the
user interface, said at least one widget comprising a
dynamically configurable presentation field; and,

a policy comprising a plurality of business rules for
configuring said at least one widget in the user interface based
upon a context provided by said at least one widget; and,

a rules engine configured to process said business rules.

PRIOR ART
The Examiner relies upon the following reference as evidence:
Underwood US 6,601,233 B1 Jul. 29, 2003

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THE REJECTIONS1
1. The Examiner rejected claims 1-5 under 35 U.S.C. § 101 as
being directed to non-statutory subject matter.
2. The Examiner rejected claims 1-13 under 35 U.S.C. § 102(e) as
anticipated by Underwood.

GROUPING OF CLAIMS
Regarding the Examiner’s rejection under § 102, we accept
Appellants’ grouping (App. Br. 8). Therefore, claims 2, 5-10, and 13 stand
or fall with independent claim 1, claim 11 stands or falls with claim 3, and
claim 12 stands or falls with claim 4. Thus, we decide the appeal of the
§ 102 rejection on the basis of representative claims 1, 3, and 4. See 37
C.F.R. § 41.37(c)(1)(vii).

ISSUES
Appellants contend that claims 1-5 are directed to statutory subject
matter under § 101 because their system for autonomically configuring a
user interface: (1) produces a useful, concrete, and tangible result2 (App. Br.

1 We note that the Examiner has neglected to include page numbers in the
Answer. Nevertheless, we make reference to the Answer by page numbers,
counting consecutively from page 1. Additionally, we observe that the
Examiner incorrectly refers to the “Reply Brief dated 8/30/2007” throughout
the Answer (e.g., see Ans. pp. 17 and 19-23). We consider this as a
harmless typographical error, as the Examiner clearly intended to refer to the
principal Brief, filed August 30, 2007.
2 Citing State Street Bank and Trust Co. v. Signature Financial Group, Inc.,
149 F.3d 1368, 1373 (Fed. Cir. 1998) (“we hold that the transformation of
data, representing discrete dollar amounts, by a machine through a series of
mathematical calculations into a final share price, constitutes a practical
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8), and (2) claims 1-5 could include hardware, under a broad but reasonable
interpretation, citing In re Comiskey 499 F.3d 1365, 1379 (Fed. Cir. 2007)
(holding that claims 17 and 46 were directed to patentable subject matter,
because “under the broadest reasonable interpretation, [these claims] could
require the use of a computer as part of Comiskey's arbitration system).
(Reply Br. 2-3).
Regarding the Examiner’s rejection under § 102, Appellants argue
specific limitations (App. Br. 9-17) that we address infra.
Based upon our review of the administrative record, we have
determined that the following issues are dispositive in this appeal:

Issue 1: Did the Examiner err in concluding that claims
1-5 are directed to non-statutory subject matter under 35
U.S.C. § 101?

Issue 2: Did the Examiner err in finding that Underwood
discloses or describes “configuring said at least one
widget in the user interface?” (Independent claim 1).

Issue 3: Did the Examiner err in finding that Underwood
discloses or describes “wherein said business rules
specify at least one suggested option to be presented to
an end user through said at least one widget?”
(Dependent claim 3).

application of a mathematical algorithm, formula, or calculation, because it
produces ‘a useful, concrete and tangible result.’”).
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Issue 4: Did the Examiner err in finding that Underwood
discloses or describes “wherein said business rules
specify at least one option which is not to be presented to
an end user through said at least one widget?”
(Dependent claim 4).

PRINCIPLES OF LAW
35 U.S.C. § 101
“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). See also U.S. Patent &
Trademark Office, Interim Examination Instructions for Evaluating Subject
Matter 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 (“A claim that covers both statutory and
non-statutory embodiments (under the broadest reasonable interpretation of
the claim when read in light of the specification and in view of one skilled in
the art) embraces subject matter that is not eligible for patent protection and
therefore is directed to non-statutory subject matter.”).

Anticipation under § 102
In rejecting claims under 35 U.S.C. § 102, “[a] single prior art
reference that discloses, either expressly or inherently, each limitation of a
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claim invalidates that claim by anticipation.” Perricone v. Medicis Pharm.
Corp., 432 F.3d 1368, 1375 (Fed. Cir. 2005) (citing Minn. Mining & Mfg.
Co. v. Johnson & Johnson Orthopaedics, Inc., 976 F.2d 1559, 1565 (Fed.
Cir. 1992)).
Anticipation of a patent claim requires a finding that the claim
at issue ‘reads on’ a prior art reference. In other words, if
granting patent protection on the disputed claim would allow
the patentee to exclude the public from practicing the prior art,
then that claim is anticipated, regardless of whether it also
covers subject matter not in the prior art.

Atlas Powder Co. v. IRECO, Inc., 190 F.3d 1342, 1346 (Fed. Cir. 1999)
(citations omitted).

FINDINGS OF FACT
In our analysis infra, we rely on the following findings of fact (FF):

Appellants’ Specification
1. Appellants’ system is disclosed as being “realized in hardware,
software, or a combination of hardware and software.” (Spec.
11, ¶ 2).

The Underwood Reference
2. Underwood discloses "[t]he User Interface framework provides
components for generating HTML. An HTML page is
generated from a combination of the various UI [User Interface]
Components." (Col. 63, ll. 2-5).

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3. Underwood discloses various user interface widgets, such as
text entry widgets, a radio button widget, and a check box
widget. (Col. 63, ll. 30-43).

4. Underwood discloses that UI widgets are mapped to attributes
of business objects. (Col. 280, ll. 10-13).

5. Underwood discloses that business logic is packaged as
components. (Col. 125, ll. 23-24).

6. Underwood discloses that business components may include,
e.g., orders, credit checks and fraud analysis. (Col. 2, ll. 22-
24).

7. Underwood discloses:
Business Logic is the core of any application,
providing the expression of business rules and procedures
(e.g., the steps and rules that govern how a sales order is
fulfilled). As such, the Business Logic includes the
control structure that specifies the flow for processing
business events and user requests.

(Col. 125, ll. 25-30).

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8. Underwood discloses:
Bigger Business Components hide more
complexity, which in general is a good thing. However,
too much complexity in a component can lead to many of
the problems that preceded component-based
development. For example, embedding too much policy
information can lead to a Business Component that is
more difficult to maintain and customize.

(Col. 321, ll. 32-38).

ANALYSIS
Issue 1
We decide the question of whether the Examiner erred in concluding
that claims 1-5 are directed to non-statutory subject matter under 35 U.S.C.
§ 101.
Appellants ground their argument presented in the principal Brief on
State Street. In these times of changing law, an individual patent appeal is
judged in the light of the law as it exists at the time of review. We note that
our reviewing court in Bilski determined that the “useful, concrete, and
tangible result” test associated with State Street Bank & Trust Co. v.
Signature Financial Group, Inc., 149 F.3d at 1373 was inadequate. See In
re Bilski, 545 F.3d 943, 959-960 (Fed. Cir. 2008)(en banc)(cert. granted)
(“Therefore, we also conclude that the ‘useful, concrete and tangible result’”
inquiry is inadequate and reaffirm that the machine-or-transformation test
outlined by the Supreme Court is the proper test to apply.”).
In the Reply Brief, Appellants further contend that claims 1-5 are
directed to patentable subject matter because the claimed system could
include hardware, under a broad but reasonable interpretation, citing In re
Comiskey 499 F.3d 1365, 1379 (Fed. Cir. 2007) (holding at 1379-80 that
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claims 17 and 46 were directed to patentable subject matter, because under
the broadest reasonable interpretation, [these claims] could require the use of
a computer as part of Comiskey's arbitration system). (Reply Br. 2-3,
underline added).
However, we conclude that the recited “system for autonomically
configuring a user interface” is merely a statement of intended purpose
regarding how the software elements found in the body of claim are intended
to be used. (Claim 1). Moreover, as pointed out by the Examiner (Ans. p. 11
of the “Response to Arguments” section), Appellants’ system is clearly
described in the Specification as being “realized in hardware, software, or a
combination of hardware and software.” (FF 1, underline added).
Thus, we conclude that Appellants’ claim 1 may be broadly but
reasonably construed to encompass both statutory (e.g., hardware) and non-
statutory subject matter (e.g., disembodied software). Our reviewing court
has determined that “[t]he 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 at 1354. See also U.S. Patent &
Trademark Office, Interim Examination Instructions for Evaluating Subject
Matter 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 (“A claim that covers both statutory and
non-statutory embodiments (under the broadest reasonable interpretation of
the claim when read in light of the specification and in view of one skilled in
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the art) embraces subject matter that is not eligible for patent protection and
therefore is directed to non-statutory subject matter.”).
This reasoning is applicable here. Therefore, we agree with the
Examiner’s legal conclusion that independent claim 1 is directed to non-
statutory subject matter. Because dependent claims 2-5 do not remedy the
deficiencies of claim 1 (by limiting the “system” of claim 1 to a statutory
subject class), we sustain the Examiner’s rejection of claims 1-5 under
35 U.S.C. § 101.

Issue 2
We decide the question of whether the Examiner erred in finding that
Underwood discloses or describes “configuring said at least one widget in
the user interface.” (Claim 1).
Appellants contend:
Upon reviewing the passages cited by the Examiner, Appellants
note that the Examiner's citations to column 125 and column
316 are completely silent with regard to "configuring said at
least one widget in the user interface," as claimed. Moreover,
the Examiner's citation to column 32 is completely silent as to
the application logic/business rules described in column 125
and the control logic described in column 316. Therefore, it
appears that the Examiner is manufacturing a single specific
teaching in Underwood so as to identically disclose the claimed
limitation by combining multiple completely unrelated
teachings from Underwood. However, Appellants respectfully
submit that one having ordinary skill in the art would not have
recognized Underwood as teaching the claimed "policy
comprising a plurality of business rules for configuring said at
least one widget in the user interface based upon a context
provided by said at least one widget" since the relied upon
teachings within Underwood are unrelated. Thus, Underwood
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fails to identically disclose the claimed invention, as recited in
claim 1, within the meaning of 35 U.S.C. § 102.

(App. Br. 10).

The Examiner disagrees. In particular, the Examiner concludes that
“[t]he scope of the recited ‘… configuring said at least one widget in the
user interface…’ encompasses an extremely broad range of configuring.”
(Ans. 24). Based upon our review of the record, we agree with the
Examiner’s claim interpretation. We begin our analysis by noting that the
Examiner reads the claimed “at least one widget in the user interface” on
Underwood’s user interface widgets. (Ans. 4).
At the outset, we note that Underwood is directed to a business
component framework. (See Title). Underwood discloses that a user
interface framework provides components for generating an HTML page.
(FF 2). Underwood expressly discloses various user interface widgets, such
as text entry widgets, a radio button widget, and a check box widget. (FF 3;
see also Ans. 5). Underwood also discloses that user interface widgets are
mapped to attributes of business objects. (FF 4). Underwood additionally
discloses that business logic is packaged as components (FF 5) and the
business components may include, e.g., orders, credit checks and fraud
analysis (FF 6), which we find reflect policies (i.e., order, credit check and
fraud analysis policies) that each inherently comprise a plurality of business
rules. (FF 6-8).
We also note that Underwood expressly discloses that business logic
(packaged as components, FF 5) provides the expression of business rules,
as follows:
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Business Logic is the core of any application, providing
the expression of business rules and procedures (e.g., the
steps and rules that govern how a sales order is fulfilled).
As such, the Business Logic includes the control
structure that specifies the flow for processing business
events and user requests.
(FF 7).

As pointed out by the Examiner (Ans. 9), Underwood also discloses
that business components are associated with policy information:
Bigger Business Components hide more complexity,
which in general is a good thing. However, too much
complexity in a component can lead to many of the
problems that preceded component-based development.
For example, embedding too much policy information
can lead to a Business Component that is more difficult
to maintain and customize.

(FF 8, underline added).
Thus, from the above descriptions in Underwood, we agree with the
Examiner that Underwood discloses or describes “configuring said at least
one widget in the user interface” in accordance with a policy comprising a
plurality of business rules. (Claim 1). Therefore, we affirm the Examiner’s
anticipation rejection of representative claim 1. Claims 2, 5-10, and 13 fall
with claim 1. See 37 C.F.R. § 41.37(c)(1)(vii).

Issue 3
We decide the question of whether the Examiner erred in finding that
Underwood discloses or describes “wherein said business rules specify at
least one suggested option to be presented to an end user through said at
least one widget.” (Dependent claim 3).
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In the principal Brief, Appellants merely restate what claim 3 recites,
followed by a statement that it is “unclear” how the passage relied on by the
Examiner (Underwood, col. 282, ll. 35-36) is related to business rules where
at least one suggested option is specified by the business rules, and teach
that the option is presented through the widget. (App. Br. 16).
We note that “[a] statement which merely points out what a claim
recites will not be considered an argument for separate patentability of the
claim.” See 37 CFR § 41.37(c)(1)(vii). We also note that Appellants have
not affirmatively stated in the record that the limitations of claim 3 are not
disclosed or described by Underwood. Thus, we find Appellants' have failed
to traverse the merits of the Examiner’s rejection by merely stating that the
correspondence is “unclear” between the claim and the portion of
Underwood relied on by the Examiner. We note that mere attorney
arguments and conclusory statements that are unsupported by factual
evidence are entitled to little probative value. In re Geisler, 116 F.3d 1465,
1470 (Fed. Cir. 1997); see also In re De Blauwe, 736 F.2d 699, 705 (Fed.
Cir. 1984); 37 C.F.R. § 1.111(b); and Ex parte Belinne, No. 2009-004693,
slip op. at 7-8 (BPAI Aug. 10, 2009) (informative), available at
http://www.uspto.gov/web/offices/dcom/bpai/its/fd09004693.pdf
Moreover, we conclude that the claimed “business rules [that] specify
at least one suggested option to be presented to an end user through said at
least one widget” (claim 3) broadly but reasonably read on Underwood’s
disclosure of various user interface widgets, such as text entry widgets, a
radio button widget, and a check box widget that are mapped to attributes of
business objects (FF 3-4), consistent with our discussion of claim 1 supra.
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For at least these reasons, we affirm the Examiner’s anticipation rejection of
representative claim 3 and claim 11 that falls therewith. See 37 C.F.R.
§ 41.37(c)(1)(vii).

Issue 4
We decide the question of whether the Examiner erred in finding that
Underwood discloses or describes “wherein said business rules specify at
least one option which is not to be presented to an end user through said at
least one widget.” (Dependent claim 4).
Based upon our review of the portions of Underwood relied on by the
Examiner (col. 12, ll. 42-44, col. 57, ll. 10-13, and col. 302, ll. 40-43),3 we
agree with Appellants that the recited negative limitation is not expressly nor
inherently disclosed by the cited portions of Underwood. (See App. Br. 16-
17). For us to affirm the Examiner regarding the negative limitation would
require speculation on our part. We decline to engage in speculation.
Accordingly, we reverse the Examiner’s anticipation rejection of dependent
claim 4 and dependent claim 12 which recites commensurate limitations.

CONCLUSIONS
Based on the findings of fact and analysis above:

Issue 1: The Examiner did not err in concluding that claims 1-5 are
directed to non-statutory subject matter under 35 U.S.C. § 101.

3 See Final Rejection mailed May 31, 2007, pp. 6-7.
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Issue 2: The Examiner did not err in finding that Underwood discloses
or describes “configuring said at least one widget in the user interface.”
(Representative independent claim 1).

Issue 3: The Examiner did not err in finding that Underwood discloses
or describes “wherein said business rules specify at least one suggested
option to be presented to an end user through said at least one widget.”
(Dependent claim 3).

Issue 4: The Examiner erred in finding that Underwood discloses or
describes “wherein said business rules specify at least one option which is
not to be presented to an end user through said at least one widget.”
(Dependent claim 4).

ORDER
We affirm the Examiner’s rejection of claims 1-5 under 35 U.S.C.
§ 101.
We affirm the Examiner’s rejection of claims 1-3, 5-11, and 13 under
35 U.S.C. § 102(e).
We reverse the Examiner’s rejection of claims 4 and 12 under 35
U.S.C. § 102(e).
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

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