Ex Parte Kato

Patent Trial and Appeal Board

Sep 26, 2013

10656274 (P.T.A.B. Sep. 26, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte YOSHIKAZU KATO
____________

Appeal 2011-007591
Application 10/656,274
Technology Center 3600
____________

Before MURRIEL E. CRAWFORD, HUBERT C. LORIN, and
ANTON W. FETTING, Administrative Patent Judges.

LORIN, Administrative Patent Judge.

DECISION ON APPEAL
An oral hearing was held on October 16, 2012.

STATEMENT OF THE CASE
Yoshikazu Kato (Appellant) seeks our review under 35 U.S.C. § 134
of the final rejection of claims 1-5 and 7-9. We have jurisdiction under 35
U.S.C. § 6(b) (2002).

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SUMMARY OF DECISION
We AFFIRM-IN-PART.1
THE INVENTION
Claim 1, reproduced below, is illustrative of the subject matter on
appeal.
Claim 1. An information processing apparatus comprising:
ordering means for receiving at least one order
corresponding to a genre;
storing means for storing a plurality of content data
corresponding to the at least one order;
managing means for managing preference data by which
to determine preferences based on a quantity of previous orders,
each order corresponding to a genre;
reading means for reading said plurality of content data
from said storing means in response to an instruction;
arranging means for arranging said plurality of content
data read by said reading means, in accordance with said
preference data managed by said managing means; and
composing means for composing said plurality of content
data arranged by said arranging means, into a single document
including the plurality of content data for display.

THE REJECTIONS
The Examiner relies upon the following as evidence of
unpatentability:
Kent
Nii

US 2002/0040374 A1
US 2002/0065730 A1
Apr. 4, 2002
May 30, 2002

1 Our decision will make reference to the Appellant’s Appeal Brief (“App.
Br.,” filed Nov. 11, 2009) and Reply Brief (“Reply Br.,” filed Oct. 15,
2010), and the Examiner’s Answer (“Ans.,” mailed Aug. 19, 2010).
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The following rejections are before us for review:
1. Claims 1-3 and 7-9 are rejected under 35 U.S.C. §101 as being
directed to non-statutory subject matter.
2. Claims 1-3, 7 and 8 are rejected under 35 U.S.C. §112, second
paragraph, as being indefinite for failing to particularly point out and
distinctly claim the subject matter which applicant regards as the
invention.
3. Claims 1, 3-5, 7, and 9 are rejected under 35 U.S.C. §103(a) as being
unpatentable over Kent and Nii.
4. Claims 2 and 8 are rejected under 35 U.S.C. §103(a) as being
unpatentable over Kent, Nii, and Applicant’s Own Admission.

ISSUES
Do claims 1-3 and 7-9 recite computer programs per se?
Do claims 1-3, 7 and 8 recite subject matter that is indefinite for
failing to particularly point out and distinctly claim the subject matter which
applicant regards as the invention in violation of under 35 U.S.C. §112,
second paragraph?
Did the Examiner err in concluding that claims 1-5 and 7-9 are
unpatentable under 35 U.S.C. §103(a) over the cited prior art?

FINDINGS OF FACT
We rely on the Examiner’s factual findings stated in the Answer.
Additional findings of fact may appear in the Analysis below.

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ANALYSIS
The rejection of claims 1-3 and 7-9 under 35 U.S.C. §101 as being directed
to non-statutory subject matter.
According to the Examiner, independent “[c]laims 1 and 7 recite
computer programs per se.” The Examiner apparently reaches the same
conclusion as to dependent claims 2 and 3, and claims 8 and 9, respectively.
The difficulty with the Examiner’s position is that it lacks any
underlying claim construction analysis. See State St. Bank & Trust Co. v.
Signature Fin. Group, 149 F.3d 1368, 1370 (Fed. Cir. 1998) (whether a
claim is invalid under § 101 “is a matter of both claim construction and
statutory construction.”)
Claim 1, for example, provides various apparatus elements in means-
plus-function format, none of which are given treatment under 35 U.S.C.
§112, 6th paragraph to determine whether the combination of elements as
claimed can be reasonably broadly construed to cover computer programs.
Rather, the argument is that the Specification (sentence bridging p. 31 and
p. 32) “supports an embodiment of the claimed invention to be software
alone” (Ans. 6). However, as the Appellant correctly states (App. Br. 6),
when this line is read in the context of the remaining disclosure –
importantly, the following sentence “For software-based processing to take
place, programs constituting the processing sequences may be either loaded
from dedicated hardware of a computer into its internal memory for
execution, or installed upon program execution form a suitable program
storage medium into a general-purpose personal computer or like equipment
capable of executing diverse functions.” – it is evident that the

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“apparatus” claimed is not directed any non-apparatus software-only
embodiment.
Claim 7 is even further removed from any software-only embodiment
because it is directed to an “apparatus” comprising various “unit[s]” – e.g.,
for central processing unit [CPU], management unit, reading unit, storage
unit, etc. The Examiner argues that the ““unit[s]” may be interpreted as
software per se” (Ans. 6). But the question is whether claim 7, when given
the broadest reasonable meaning of the term “unit” in its ordinary usage as it
would be understood by one of ordinary skill in the art, taking into account
whatever enlightenment by way of definitions or otherwise that may be
afforded by the written description contained in the Appellant’s
Specification, reasonably broadly covers software per se. See In re Morris,
127 F.3d 1048, 1054 (Fed. Cir. 1997). “[C]laims are to be read in the light
[of the specification], not in a vacuum.” In re Dean, 291 F.2d 947, 951
(CCPA 1961). In that regard, the claimed central processing unit [CPU], for
example, very clearly refers to a structural apparatus element. See
Specification, p. 9: “[i]n the server 2, a CPU [central processing unit) 11
carries out . . . .”
For the forgoing reasons, a prima face case of nonstatutory subject
matter for the subject matter of claims 1-3 and 7-9 as a whole has not been
made out in the first instance. The rejection is reversed.

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The rejection of claims 1-3, 7 and 8 under 35 U.S.C. §112, second
paragraph, as being indefinite for failing to particularly point out and
distinctly claim the subject matter which applicant regards as the invention.
Claims 1-3 are rejected under 35 U.S.C. §112, second paragraph, as
being indefinite. We agree.
The Appellant concedes that claim 1 (the sole independent claim here
at issue) is written in means-plus-function format and necessarily invokes 35
U.S.C. § 112, 6th paragraph. See App. Br. 5: “With respect to Claim 1, this
claim recites means-plus-function features which must be considered in view
of35 U.S.C. §112, sixth paragraph.”
In accordance with Aristocrat Techs. Australia Party, Ltd. v. Int’l
Game Tech., 521 F.3d 1328 (Fed. Cir. 2008), the Specification must disclose
an algorithm corresponding to the function recited in the means-plus-
function limitations of claim 1, the absence of which will render the claims
indefinite under 35 U.S.C. § 112, second paragraph.
In that regard, claim 1 calls for, for example, “managing means for
managing preference data by which to determine preferences based on a
quantity of previous orders, each order corresponding to a genre.” and the
Appellant states that this is disclosed at “page 10, line 23 to page 11, line 1,
Figure 4, element 102 and page 13, lines 1-6.” App. Br. 3, footnote 4.
Fig. 4, element 102, is a box within which are the words “preference
determining part.”
Page 10, line 23 to page 11, line 1 discusses Fig. 3 and describes a
control center with a CPU that “carries out diverse processes in accordance
with programs held in a ROM.”

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Page 13, lines 1-6, states: “The preference determining part 102
searches the storage unit 58 for preference data 111 based on the
supplied user information, and retrieves the preferences of the user who has
ordered the electronic book. The user’s preferences thus read out are sent to
a sorting part 104.”
The issue is whether the Fig. 4, element 102, and the accompanying
description at page 10, line 23 to page 11, line 1, and page 13, lines 1-6 in
the Specification do or do not describe the corresponding structure so that
the scope of the claim can be determined. In our view they do no not.
It is certainly true that the sufficiency of the
disclosure of algorithmic structure must be judged
in light of what one of ordinary skill in the art
would understand the disclosure to impart. See,
e.g., Intel Corp. v. VIA Techs., 319 F.3d 1357,
1367 (Fed. Cir. 2003) (knowledge of a person of
ordinary skill in the art can be used to make clear
how to implement a disclosed algorithm); Atmel
Corp., 198 F.3d at 1379 (“[T]he ‘one skilled in the
art’ analysis should apply in determining whether
sufficient structure has been disclosed to support a
means-plus-function limitation.”) That principle,
however, has no application here, because in this
case there was no algorithm at all disclosed in the
specification. The question thus is not whether the
algorithm that was disclosed was described with
sufficient specificity, but whether an algorithm
was disclosed at all.
Aristocrat at 1337.
We find that the Specification does not describe the corresponding
structure so that the scope of the claim can be determined. Element 102 in
Fig. 4 is a box which at best provides a description of the function to be
performed but not an algorithm by which it is performed. The associated
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description at page 10, line 23 to page 11, line 1 broadly refers to programs ,
and page 13, lines 1-6 in the Specification similarly describes the function to
be performed and the outcome of the function but in neither disclosure is an
algorithm provided by which the function can be performed. See Aristocrat,
521 F.3d at 1334-35. Since there is no algorithm disclosed at all, we agree
with the Examiner that the scope of claim 1 cannot be determined.
The Appellant argues that “structure for the claimed means elements
is clearly found in the disclosure as originally filed.” App. Br. 9. For the
foregoing reasons, we disagree with that assessment.
We find that the Specification does not describe the corresponding
structure so that the scope of the claim can be determined and therefore, we
affirm the Examiner’s decision to reject claims 1-3 under 35 U.S.C. § 112,
second paragraph as being indefinite.

Claims 7 and 8 are rejected under 35 U.S.C. §112, second paragraph,
as being indefinite. We disagree.
The Examiner takes the view that claim 7 “overlaps two different
statutory classes of invention as set forth in 35 U.S.C. §101” (Ans. 14) and
for that reason is a hybrid claim, a type of claim that is necessarily
indefinite. The basis for this view lies in the fact that the claim is directed to
“[a]n information processing apparatus” and yet includes the claim phrase
“using a central processing unit.”
It is true, as a legal matter, that a claim reciting both a system and a
method of using that system would not comply with the definiteness
standard pursuant to the second paragraph of 35 USC §112 (see IPXL
Holdings LLC v. Amazon.com Inc., 430 F.3d 1377 (Fed. Cir. 2005)
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(“Because claim 25 recites both a system and the method for using that
system, it does not apprise a person of ordinary skill in the art of its scope,
and it is invalid under section 112, paragraph 2.”). But here the claim phrase
“using a central processing unit” would be interpreted by one of ordinary
skill in the art to describe the presence of a CPU in the claimed apparatus
and not a step for using the apparatus.
For the foregoing reason, we reverse the Examiner’s decision to reject
claims 7 and 8 under 35 U.S.C. § 112, second paragraph as being indefinite.

The rejection of claims 1, 3-5, 7, and 9 under 35 U.S.C. §103(a) as being
unpatentable over Kent and Nii.
Method and medium claims 4 and 5
We will reverse the rejection of claims 4 and 5.
The key claim limitation at issue here is “managing, using the
information processing apparatus, preference data by which to
determine preferences based on a quantity of previous orders, each order
corresponding to a genre” (claim 4; claim 5 contains a similar limitation).
The Examiner’s position is that Kent discloses all the claimed steps but this
limitation at issue. Ans. 10. Rather, the Examiner relies on Nii. According to
the Examiner, “Nii teaches "a tailoring parameters register" by which to
determine preferences (“tailorization parameters") based on a quantity of
previous orders ("list of previous items purchased"), each order
corresponding to a genre (0024, 0027, 0072, 0075, and 0079).” Ans. 10.
Nii describes a method of tailoring content for delivery to the user.
See [0072]: “tailoring parameters register 172 which takes care of the
tailoring of content to be transferred to the terminal.” However, the steps as
claimed employ preference data to “arrange” content data for reading, not to
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tailor delivery of data. The Examiner cites Fig. 1 of Nii as depicting content
arranged numerically for user to select. Ans. 46. We do not see that in Fig. 1
but, nevertheless, the issue is not whether it was known to arrange data but
whether the claimed subject matter as a whole would have been obvious to
one of ordinary skill in the art over the cited prior art combination; i.e., to
“manag[e], using the information processing apparatus, preference data by
which to determine preferences based on a quantity of previous orders, each
order corresponding to a genre, read[ ] said plurality of content data ... in
response to an instruction; arrang[e] ... said plurality of [read] content data
... , and compos[e] ... said plurality of [arranged] content data.” Claim 4. In
our view, a prima facie case of obviousness for the subject matter as claimed
has not been made out in the first instance.

Apparatus claims 1-3 and 7-9
We will affirm the rejection of claims 1-3 and 7-9. The Appellant has
not shown error in the Examiner’s rejection of the apparatus claims. The
arguments made challenging the rejection go only to method steps.
However, these claims are drawn to apparatuses, not methods.

The rejection of claims 2 and 8 under 35 U.S.C. §103(a) as being
unpatentable over Kent, Nii, and Applicant’s Own Admission.
The Appellant argued against the rejection of dependent claims 2 and
8 for the same reasons used to argue against the rejection of the method
claims. (App. Br. 11). Accordingly, because we found them unpersuasive as
to the rejection of the independent apparatus claims 1 and 7, respectively, we
find them equally unpersuasive as to error in the rejection of claims 2 and 8.
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CONCLUSIONS
The rejection of claims 1-3 and 7-9 under 35 U.S.C. §101 as being
directed to non-statutory subject matter is reversed.
The rejection of claims 1-3 under 35 U.S.C. §112, second paragraph,
as being indefinite for failing to particularly point out and distinctly claim
the subject matter which applicant regards as the invention is affirmed.
The rejection of claims 7 and 8 under 35 U.S.C. §112, second
paragraph, as being indefinite for failing to particularly point out and
distinctly claim the subject matter which applicant regards as the invention is
reversed.
The rejection of claims 1, 3, 7, and 9 under 35 U.S.C. §103(a) as
being unpatentable over Kent and Nii is affirmed.
The rejection of claims 2 and 8 under 35 U.S.C. §103(a) as being
unpatentable over Kent, Nii, and Applicant’s Own Admission is affirmed.
The rejection of claims 4 and 5 under 35 U.S.C. §103(a) as being
unpatentable over Kent and Nii is reversed.

DECISION
The decision of the Examiner to reject claims 1-5 and 7-9 is affirmed-
in-part.

AFFIRMED-IN-PART

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