Ex Parte Kaminsky et al

Board of Patent Appeals and Interferences

Feb 29, 2008

10404297 (B.P.A.I. Feb. 29, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte DAVID LOUIS KAMINSKY and DAVID M. OGLE
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Appeal 2007-2464
Application 10/404,297
Technology Center 2100
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Decided: February 29, 2008
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Before HOWARD B. BLANKENSHIP, ALLEN R. MACDONALD, and
ST. JOHN COURTENAY III, Administrative Patent Judges.

BLANKENSHIP, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 1-18, which are all the pending claims. We have
jurisdiction under 35 U.S.C. § 6(b).
We affirm.
Appeal 2007-2464
Application 10/404,297

Appellants’ invention relates to contact management; i.e.,
management of “contacts” such as those that may be stored on paper or in
electronic address books. (See Spec. ¶ 2.) A logical contact hierarchy stored
in a database can be searched for a closest matching contact. (Abstract.)
Claim 1 reads as follows:
1. A method for matching nearest contacts in a logical contact
hierarchy, the method comprising the steps of:

establishing an anchor contact in the logical contact hierarchy;

computing a distance within the logical contact hierarchy between
said anchor contact and a selected contact, for each contact in the logical
contact hierarchy; and,

selecting as a nearest matching contact, a contact from among
contacts in said logical contact hierarchy having a shortest computed
distance within the logical contact hierarchy.

The Examiner relies on the following references as evidence of
unpatentability.
Vora US 6,539,379 B1 Mar. 25, 2003
(filed Aug. 23, 1999)
Hyatt US 6,678,692 B1 Jan. 13, 2004
(filed Jul. 10, 2000)
Boreham US 6,768,988 B2 Jul. 27, 2004
(filed May 29, 2001

Claims 1-6 stand rejected under 35 U.S.C. § 101 as being directed to
nonstatutory subject matter.
Claims 1, 3, 4, 7, 9, 10, 13, 15, and 16 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Hyatt and Vora.
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Claims 2, 5, 6, 8, 11, 12, 14, 17, and 18 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Hyatt, Vora, and Boreham.

Section 101 rejection
In a § 101 analysis, the critical question must be answered: “What did
the applicant invent?” Arrhythmia Research Technology, Inc. v. Corazonix
Corp., 958 F.2d 1053, 1059 (Fed. Cir. 1992) (quoting In re Grams, 888 F.2d
835, 839 (Fed. Cir. 1989)).
Claim 1 purports “[a] method” comprising three steps, and thus is
nominally drawn to a “process.” In our initial reading of the claim, we
observe there is no physical transformation of any article to another state or
thing.
“A process is . . . an act, or series of acts, performed upon the subject
matter to be transformed and reduced to a different state or thing.”
Cochrane v. Deener, 94 U.S. 780, 788 (1877). “‘Transformation and
reduction of an article “to a different state or thing” is the clue to the
patentability of a process claim that does not include particular machines.’”
Diamond v. Diehr, 450 U.S. 175, 184, 209 USPQ 1, 7 (1981) (quoting
Gottschalk v. Benson, 409 U.S. 63, 70 (1972)).
There are cases suggesting that the lack of transformation is not
determinative with respect to whether a claimed process is statutory. Those
cases, however, involved inventions that at least used machines to transform
data. For example, our reviewing court in AT&T Corp. v. Excel
Communications, Inc., 172 F.3d 1352, 1357 (Fed. Cir. 1999), set forth
(citing In re Alappat, 33 F.3d 1526, 1544 (Fed. Cir. 1994) (en banc)) that a
§ 101 inquiry is directed to the determination of whether the claimed subject
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matter as a whole is a disembodied mathematical concept representing
nothing more than a “law of nature” or an “abstract idea,” or if the
mathematical concept has been reduced to some practical application
rendering it “useful.” A claimed process that produces a useful, concrete,
tangible result without pre-empting other uses of the mathematical principle
falls within the scope of § 101. AT&T Corp. at 1358. The process held to
be statutory in AT&T Corp., however, required the use of switches and
computers. See, e.g., id. at 1358 (AT&T's claimed process used “switching
and recording mechanisms” to create a “signal” useful for billing purposes).1
Here, under a broad but reasonable interpretation of claim 1, the
subject matter of the claim requires at most human thought and paperwork.
The second step of claim 1 is “computing” a distance. Human beings are
quite capable of “computing,” and did so for millennia before the
development of the electronic digital computer.
Claim 1 does not recite any particular way of implementing the steps.
Claim 1 does not require any machine or apparatus to perform the steps.
Claim 1 does not recite any electrical, chemical, or mechanical acts or
results, which are typical in traditional process claims. Claim 1 does not call
for any physical transformation of an article to a different state or thing, nor
does it require any transformation of data or signals. Claim 1 represents
mere abstraction; i.e., a disembodied mathematical concept representing
nothing more than an “abstract idea,” which has not been reduced to some

1 As recited in the portion of State Street Bank & Trust Co. v. Signature Fin.
Group, Inc., 149 F.3d 1368 (Fed. Cir. 1998), reproduced by Appellants at
page 5 of the Appeal Brief, the “useful, concrete, and tangible result” in
State Street related to a claim directed to a machine programmed with
software.
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Application 10/404,297

practical application that renders it “useful.” As the Supreme Court has
made clear, “[a]n idea of itself is not patentable.” In re Warmerdam, 33
F.3d 1354, 1360 (quoting Rubber-Tip Pencil Co. v. Howard, 87 U.S. (20
Wall.) 498, 507, 22 L.Ed. 410 (1874)).
We thus sustain the rejection of claim 1 under 35 U.S.C. § 101 as
being directed to nonstatutory subject matter.2 Claims 2-6 fall with claim 1.
See 37 C.F.R. § 41.37(c)(1)(vii).

Section 103(a) rejections
The Examiner rejects instant claim 1 under § 103(a) over Hyatt and
Vora. According to the Examiner, Hyatt teaches all of claim 1 except for a
hierarchy in which the nodes are “contacts.” Vora is relied upon as teaching
a “contact” hierarchy. The Examiner concludes that the combination of the
references demonstrates the prima facie obviousness of the claimed subject
matter. (Ans. 4-5.)
Hyatt teaches a search technique based on classification of database
records in accordance with a predominant concept or feature. The concepts
are defined in relation to a hierarchy of concepts. For each database record,
a key concept, or its location in the hierarchy, is stored in association with
the database record to facilitate searching by using key concepts father than
textual or other specific content. Hyatt teaches determining the key concept
location for each database record, by computing a distance value for each
node. Hyatt Abstract.

2 Appellants seem to present arguments (App. Br. 6-7) against a non-existent
ground of rejection based on the invention lacking “utility.” The rejection is
based on the claims being directed to subject matter that is not statutory
under § 101, which is the rejection that we affirm.
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The process of automatically finding a concept location involves
associating “coverage” and “anticoverage” quantities with each branch of
the hierarchy. A “distance” quantity is associated with each node in the
hierarchy. The distance is computed for the top node first, and then for
successively lower nodes, based on the coverage and anticoverage of the
branches followed to reach the lower nodes. Hyatt col. 8, ll. 45-53. The
“coverage” of a branch is the total of all the key word hits at nodes in the
hierarchy that are positioned below the branch. The “anticoverage” of a
branch may be expressed as the difference between the total number of hits
on the entire hierarchy and the coverage of the same branch. Col. 8, l. 54 -
col. 9, l. 5. See also col. 10, ll. 15-62; Figs. 5-7.
Appellants submit that the calculation of a “distance” quantity as
described by Hyatt is not “computing a distance” as claimed. According to
Appellants, the “distance” described by Hyatt does not correspond to the
“ordinary and customary meaning” of “distance” as known to one skilled in
the art. (App. Br. 7-10.)
Appellants do not point to any intrinsic evidence (e.g., the
Specification) in support of the position. Nor have Appellants provided any
extrinsic evidence (e.g., dictionaries or treatises from the art) in support of
the position. The evidence that we do have is the Hyatt reference, which
uses the express term “distance,” and which clearly describes computing a
“distance,” whether the “distance” is considered to be a distance “value,” a
distance “quantity,” or a distance something else. As the Examiner
indicates, instant claim 1 does not specify how the “distance” is to be
computed. Nor does the claim specify the unit values for the “distance.”
We find Appellants’ argument to be not persuasive.
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In a related matter, Appellants also allege that Hyatt does not teach
computing a distance within the logical hierarchy “between said anchor
contact and a selected contact.” (App. Br. 10-11.) We find the Examiner’s
response (Ans. 11-12) to be persuasive and Appellants’ response (Reply Br.
5-6), in turn, not. We agree with the Examiner that because all the distance
computations in Hyatt are based on the top node or “anchor,” Hyatt teaches
computing a distance between the anchor node (or “contact”) and a selected
node (or “contact”) for each node (or “contact”) in the hierarchy.
Contrary to Appellants’ allegations in the briefs, we consider the
Examiner’s basis for the proposed combination of Hyatt and Vora to be well
founded. See Cable Elec. Prods., Inc. v. Genmark, Inc., 770 F.2d 1015,
1025 (Fed. Cir. 1985) (“[T]he suggestion to modify the art to produce the
claimed invention need not be expressly stated in one or all of the references
used to show obviousness. ‘Rather, the test is what the combined teachings
of the references would have suggested to those of ordinary skill in the
art.’”) (quoting In re Keller, 642 F.2d 413, 425 (CCPA 1981)).
Moreover, we are not persuaded that one needs to go beyond Hyatt to
demonstrate the unpatentability of instant claim 1 under 35 U.S.C. § 102 or
103. Appellants call the nodes in the hierarchy of claim 1 “contacts.”
However, what the nodes may be deemed to represent does not modify the
method set forth by the claim, even assuming, for present purposes, that the
nodes or “contacts” may be stored and processed by a machine. That the
nodes are considered to be “contacts” does not change the functions
specified by claim 1, which, on this record, are taught by Hyatt. The
“contacts” of claim 1 represent nonfunctional descriptive material.
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The content of the nonfunctional descriptive material carries no
weight in the analysis of patentability over the prior art. Cf. In re Lowry, 32
F.3d 1579, 1583 (Fed. Cir. 1994) (“Lowry does not claim merely the
information content of a memory. . . . [N]or does he seek to patent the
content of information resident in a database.”). See also Ex parte Nehls,
http://www.uspto.gov/web/offices/dcom/bpai/prec/fd071823.pdf; Ex parte
Curry, 84 USPQ2d 1272 (BPAI 2005) (nonprecedential) (Fed. Cir. Appeal
No. 2006-1003, aff’d Rule 36 Jun. 12, 2006); Manual of Patent Examining
Procedure § 2106.01 (8th ed., Rev. 6, Sept. 2007).
We have considered all of Appellants’ arguments in response to the
rejection of claim 1 over the prior art. We sustain the rejection.
Appellants place claim 7 in a separate heading in the Appeal Brief,
and allege that the Examiner has not clearly designated the teachings of
Hyatt being relied upon in the rejection. We disagree. (See Ans. 6-7;
rejection mailed Jan. 24, 2006 at 5-6.)
Claim 7 is a “system” claim similar to claim 1, but requires a
“hierarchical query processor.” Hyatt clearly describes a processor (e.g.,
Fig. 2, element 40). The Examiner finds the Hyatt processor to be a
“hierarchical query” processor as claimed. Appellants’ arguments have not
demonstrated the Examiner’s rejection of claim 7 to be deficient in any
respect. We sustain the rejection of claim 7.
In response to the § 103(a) rejection of claim 2 over Hyatt, Vora, and
Boreham, Appellants submit they are “unable to determine” where Boreham
teaches “performing at least one boolean operation” as claimed. (App. Br.
14.) The Examiner helps Appellants at page 13 of the Answer.
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Appellants’ only other response to the rejection of claim 2 is the
allegation that the Examiner has not shown a “realistic” motivation for
combining the teachings of Hyatt, Vora, and Boreham. However,
Appellants neglect to provide us with the basis for the belief; the position
thus rests on mere allegation.
Moreover, applying Boolean operations in database applications was
well known in the art.3 A person having ordinary skill in the art uses known
elements for their intended purpose. Anderson’s-Black Rock, Inc. v.
Pavement Salvage Co., 396 U.S. 57 (1969) (radiant-heat burner used for its
intended purpose in combination with a spreader and a tamper and screed).
“[W]hen a patent ‘simply arranges old elements with each performing the
same function it had been known to perform’ and yields no more than one
would expect from such an arrangement, the combination is obvious.” KSR
Int’l Co. v. Teleflex, Inc., 127 S. Ct. 1727, 1740 (2007) (quoting Sakraida v.
Ag Pro, Inc., 425 U.S. 273, 282 (1976)). Appellants have provided no
evidence tending to show that performing Boolean operations on a
hierarchical database was “uniquely challenging or difficult for one of
ordinary skill in the art.” See Leapfrog Enters., Inc. v. Fisher-Price, Inc.,
485 F.3d 1157, 1162 (Fed. Cir. 2007) (citing KSR, 127 S. Ct. at 1740-41).
We have considered claims 1, 2, and 7 in our review of the rejections.
See 37 C.F.R. § 41.37(c)(1)(vii). Because none of the claims have been
shown to be rejected in error, we sustain the rejection of claims 1, 3, 4, 7, 9,
10, 13, 15, and 16 under 35 U.S.C. § 103(a) as being unpatentable over
Hyatt and Vora and the rejection of claims 2, 5, 6, 8, 11, 12, 14, 17, and 18

3 Again, for present purposes, we assume that claim 2 requires a machine for
“performing at least one Boolean operation” as claimed.
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under 35 U.S.C. § 103(a) as being unpatentable over Hyatt, Vora, and
Boreham.
CONCLUSION
The rejection of claims 1-6 under 35 U.S.C. § 101 as being directed to
nonstatutory subject matter is affirmed. The rejection of claims 1-18 under
35 U.S.C. § 103(a) 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).

AFFIRMED

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