Ex Parte Keene

Board of Patent Appeals and Interferences

Mar 21, 2011

10329144 (B.P.A.I. Mar. 21, 2011)

UNITED STATES PATENT AND TRADEMARK OFFICE
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
10/329,144 12/24/2002 Robert A. Keene END920020096US1 8758
7590 03/21/2011
William E. Schiesser
IBM Corporation
Dept. N50E, Bldg. 40-4
1701 North Street
Endicott, NY 13760
EXAMINER
ERB, NATHAN
ART UNIT PAPER NUMBER
3628
MAIL DATE DELIVERY MODE
03/21/2011 PAPER
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.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte ROBERT A. KEENE
___________

Appeal 2009-008489
Application 10/329,144
Technology Center 3600
____________

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

LORIN, Administrative Patent Judge.

DECISION ON APPEAL1

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.
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STATEMENT OF THE CASE
Robert A. Keene (Appellant) seeks our review under 35 U.S.C. § 134
(2010) of the final rejection of claims 16, 20-30, 40, 46, 47, 49, 50, 53, and
54. We have jurisdiction under 35 U.S.C. § 6(b) (2010).

SUMMARY OF DECISION
We AFFIRM and enter a new ground of rejection pursuant to 37
C.F.R .§ 41.50(b). 2

THE INVENTION
This invention is “a method, system, and program product for
generating a demanufacturing price quote.” Specification 1:14-16.
Claim 16, reproduced below, is illustrative of the subject matter on
appeal.
16. A computer implemented method for
generating an electronic equipment
demanufacturing price quote, said method
comprising:
providing a list describing at least one piece
of electronic equipment;
defining at least one representative
equipment group;
determining and storing at least one default
data value in said at least one representative
equipment group;

2 Our decision will make reference to the Appellant’s Appeal Brief (“App.
Br.,” filed Oct. 3, 2008) and Reply Brief (“Reply Br.,” filed Jan. 21, 2009),
and the Examiner’s Answer (“Answer,” mailed Nov. 18, 2008).

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storing at least one dismantle study data
value in said at least one representative equipment
group if said at least one dismantle study data
value is available, wherein said at least one
dismantle study data value has been determined by
at least one demanufacturing worker dismantling
said at least one piece of electronic equipment, and
recording data related to said dismantling of said at
least one piece of electronic equipment;
categorizing said at least one piece of
electronic equipment into said at least one
representative equipment group;
determining a group quantity of electronic
equipment in said at least one representative
equipment group;
multiplying said at least one dismantle study
data value and said group quantity if said at least
one dismantle study data value has been stored in
said at least one representative equipment group,
or multiplying said at least one default data value
and said group quantity if said at least one
dismantle study data value has not been stored in
said at least one representative equipment group;
calculating a profit or loss for said at least
one representative equipment group; and
calculating and displaying said
demanufacturing price quote by adding together
said profit or loss for each of said at least one
representative equipment group, and incorporating
a pricing contingency and a profit into said
demanufacturing price quote.

THE REJECTIONS
The Examiner relies upon the following as evidence of
unpatentability:
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Suzuki
Hiroshige
Liebeskind
Brand
US 5,965,858
US 2002/0069137 A1
US 2002/0188480 A1
US 2004/0181422 A1
Oct. 12, 1999
Jun. 6, 2002
Dec. 12, 2002
Sep. 16, 2004
Michael R. Johnson, Evaluating Remanufacturing and
Demanufacturing for Extended Producer Responsibility & Sustainable
Product Management, UMI Quest Information and Learning, 2002.
[Hereinafter, Johnson.]

The following rejections are before us for review:
1. Claims 16, 20-30, 46, 47, 49, and 50 are rejected under 35
U.S.C. § 101 as being directed to non-statutory subject matter.
2. Claims 16, 20-21, 24-30, 40, 46, 47, 49, 50, 53, and 54 are
rejected under 35 U.S.C. §103(a) as being unpatentable over
Hiroshige, Suzuki, Johnson, and Liebeskind.
3. Claims 22 and 23 are rejected under 35 U.S.C. §103(a) as being
unpatentable over Hiroshige, Suzuki, Johnson, Liebeskind, and
Brand.

ISSUES
The first issue is whether claims 16, 20-30, 46, 47, 49, and 50 are
directed to non-statutory subject matter under 35 U.S.C. § 101. Specifically,
the issue is whether the claims recite an abstract idea.
The second issue is whether claims 16, 20-21, 24-30, 40, 46, 47, 49,
50, 53, and 54 are unpatentable under 35 U.S.C. § 103(a) over Hiroshige,
Suzuki, Johnson, and Liebeskind. The rejection of claims 22 and 23 under
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35 U.S.C. §103(a) as being unpatentable over Hiroshige, Suzuki, Johnson,
Liebeskind, and Brand also turns on this issue.

FINDINGS OF FACT
We find that the following enumerated findings of fact (FF) are
supported by at least a preponderance of the evidence. Ethicon, Inc. v.
Quigg, 849 F.2d 1422, 1427 (Fed. Cir. 1988) (explaining the general
evidentiary standard for proceedings before the Office).
1. The Specification states: “The present invention generally relates
to a method, system, and program product for generating a
demanufacturing price quote.” Specification 1:14-16.
2. Johnson, on page 86, discusses a recyclability calculation used by
the ARDC and states:
The recyclability calculations used by the AROC
are based on guidelines recommended by the
American Automotive Manufacturers Association
(AAMA) and are shown in Appendix D. From
personally working with the VRP since 1997, it is
the opinion of the author that these recyclability
ratings are highly theoretical and are not true
indicators of a vehicle's recydability. Other
engineers that work within the vehicle recycling
program at the ARDC also support this opinion.
The recydabilily calculation of concem for North
American automakers is the European recyclability
rating and they are obviously motivated (from the
EU Directive on EL V) to demonstrate high
recydability of their vehicles.
The following is a discussion why it is
believed that the European Recyclability
calculation is only a theoretical calculation and
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should not be used to calculate recyclability in the
present research.

ANALYSIS
The rejection of claims 16, 20-30, 46, 47, 49, and 50 are rejected under 35
U.S.C. § 101 as being directed to non-statutory subject matter
Claims 16, 20-29, 46, and 47
The Examiner and the Appellant dispute whether process claims 16,
20-29, 46, and 47 are directed to non-statutory subject matter. Answer 12-
13 and Reply Br. 9-12.
We find that claims 16, 20-29, 46, and 47 are drawn to non-statutory
subject matter as they encompass an abstract idea. The law in the area of
patent-eligible subject matter for process claims has recently been clarified
by the Supreme Court in Bilski v. Kappos, 130 S. Ct. 3218, No. 08-964,
2010 WL 2555192 (U.S. June 28, 2010). The Court held that the term
“process” as used in 35 U.S.C. § 101, does not categorically exclude
business methods. Bilski, 130 S. Ct. at 3228-3229.
The Court is unaware of any argument that the
“ordinary, contemporary, common meaning,”
Diehr, supra, at 182, 101 S.Ct. 1048, of “method”
excludes business methods. Nor is it clear what a
business method exception would sweep in and
whether it would exclude technologies for
conducting a business more efficiently.
Bilski, 130 S. Ct. at 3222.
“At the same time, some business method patents raise special
problems in terms of vagueness and suspect validity.” Bilski, 130 S. Ct. at
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3229. (citing eBay Inc. v. MercExchange, L.L.C., 547 U.S. 388, 397
(2006))(Kennedy, J., concurring).
In searching for a limiting principle, this Court's
precedents on the unpatentability of abstract ideas
provide useful tools. See infra, at 12-15. Indeed, if
the Court of Appeals were to succeed in defining a
narrower category or class of patent applications
that claim to instruct how business should be
conducted, and then rule that the category is
unpatentable because, for instance, it represents an
attempt to patent abstract ideas, this conclusion
might well be in accord with controlling precedent.
Bilski, 130 S. Ct. at 3229 (2010).
Claims 16, 20-29, 46, and 47 are drawn to business methods. Taking
claim 16 as representative, the broadest reasonable construction of the
claimed process in light of the Specification as it would be interpreted by
one of ordinary skill in the art is that it provides a series of instructions that
do no more than: gather and store information and data (e.g., provide list,
define equipment groups, store dismantle study data value, and store default
data value); categorize the a piece of electronic equipment; multiple one of a
dismantle data value or the default data value, based on availability, by a
quantity of equipment; calculate a profit or loss, and calculated and display a
price quote. The claim encompasses any use of the concept of gathering and
storing information and data (e.g., providing list, defining equipment groups,
storing dismantle study data value, and storing default data value);
categorizing the a piece of electronic equipment; multiplying one of a
dismantle data value or the default data value, based on availability, by a
quantity of equipment; calculating a profit or loss, and calculating and
displaying a price quote.
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We now turn to the question of whether the claimed process subject
matter is patent-eligible under 35 U.S.C. § 101. Various factors must be
considered and weighed when analyzing claims as a whole before reaching a
conclusion on patent subject matter eligibility.
The factors relevant in this case are the lack of an express or implied
recitation in the claims to a particular machine or transformation and that the
claims are a mere statement of a general concept.
The Appellant agues that Claim 16 requires a machine since it recites
that the method is “computer implemented” and the calculated price quote is
displayed. Reply Br. 10. However, “Flook stands for the proposition that
the prohibition against patenting abstract ideas ‘cannot be circumvented by
attempting to limit the use of the formula to a particular technological
environment’ or adding ‘insignificant postsolution activity.” Bilski, 130 S.
Ct. 3218, 3230 (quoting Diamond v. Diehr, 450 U.S. 175, 191-192 (1981)).
The terms suggest at best a nominal use of a machine and impose no
meaningful limits on the scope of the claim apart from describing a field in
which to conduct the process. A field-of-use limitation is insufficient to
render an otherwise patent-ineligible process patent eligible. See Diehr, 450
U.S. 175, 191 (1981). Cf. SiFR Technology, Inc. v. International Trade
Commission, 601 F.2d 1319, 1333 (Fed. Cir. 2010):
In order for the addition of machine to impose a meaningful limit on
the scope of the claim, it must play a significant part in permitting the
claimed method to be performed, rather than function solely as an obvious
mechanism for permitting a solution to be achieved more quickly, i.e.,
through the utilization of a computer for performing calculations. However,
“Flook stands for the proposition that the prohibition against patenting
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abstract ideas ‘cannot be circumvented by attempting to limit the use of the
formula to a particular technological environment’ or adding ‘insignificant
postsolution activity.” Bilski, 130 S. Ct. 3218, 3230 (quoting Diamond v.
Diehr, 450 U.S. 175, 191-192 (1981)). The terms suggest at best a nominal
use of a machine and impose no meaningful limits on the scope of the claim
apart from describing a field in which to conduct the process. A field-of-use
limitation is insufficient to render an otherwise patent-ineligible process
patent eligible. See Diehr, 450 U.S. 175, 191 (1981). Cf. SiFR Technology,
Inc. v. International Trade Commission, 601 F.2d 1319, 1333 (Fed. Cir.
2010):
In order for the addition of machine to
impose a meaningful limit on the scope of the
claim, it must play a significant part in permitting
the claimed method to be performed, rather than
function solely as an obvious mechanism for
permitting a solution to be achieved more quickly,
i.e., through the utilization of a computer for
performing calculations.
The Appellant also argues that the claims recite a transformation since
the data represent physical electronic equipment that is to be
demanufactured. Reply Br. 11. However, we disagree with this
characterization. The data recites in claim 16 is not representative of the
electronic equipment, but is value and cost data that is used to calculate a
quote.
As we have reasonably broadly construed it, the subject matter of
claim 16 is a series of instructions for monitoring actual demand and
allocation reservations; comparing the demand and reservations with a
demand forecast at predetermined intervals; dynamically assigning
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component allocations according to the comparison; dynamically assigning
an allocation priority; selecting the component based on the allocation
priority; and manufacturing the product. The vague instructions listed in the
claim do no more than instruct how business should be conducted; that is to
gather and store information and data (e.g., provide list, define equipment
groups, store dismantle study data value, and store default data value);
categorize the a piece of electronic equipment; multiple one of the dismantle
data value or the default data value, based on availability, by a quantity of
equipment; calculate a profit or loss, and calculated and display a price
quote. The claim covers any use of this concept. In the words of Gottschalk
v. Benson, 409 U.S. 63, 72 (1972), the claimed process “would wholly pre-
empt the [concept of gathering and storing information and data (e.g.,
providing list, defining equipment groups, storing dismantle study data
value, and storing default data value); categorizing the a piece of electronic
equipment; multiplying one of a dismantle data value or the default data
value, based on availability, by a quantity of equipment; calculating a profit
or loss, and calculating and displaying a price quote.] and in practical effect
would be a patent on the [concept] itself.”
For the foregoing reasons, based upon consideration of all the relevant
factors with respect to claims 16, 20-29, 46, and 47as a whole, claims 16,
20-29, 46, and 47 are held to claim an abstract idea and are therefore
rejected as ineligible subject matter under 35 U.S. C § 101.
However, since our reasoning differs from that of the Examiner, we
shall reverse the Examiner’s rejection of claims 16, 20-29, 46, and 47 under
35 U.S.C. § 101 and designate our reasoning as a new ground of rejection.

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Claims 30, 49, and 50
The Examiner rejected claims 30 and 49-50 under 35 U.S.C. § 101 as
being directed to non-statutory subject matter because these claims are
directed to software per se. Answer 13. However, claims 30 and 49-50 are
written in means-plus-function format. 35 U.S.C. § 112, paragraph 6, states:
An element in a claim for a combination may be
expressed as a means or step for performing a specified
function without the recital of structure, material, or acts
in support thereof, and such claim shall be construed to
cover the corresponding structure, material, or acts
described in the specification and equivalents thereof.
Construing means-plus-function claim language in accordance with 35
U.S.C. § 112, paragraph 6, is a two step process.
The first step in construing a means-plus-function
claim limitation is to define the particular function
of the claim limitation. Budde v. Harley-Davidson,
Inc., 250 F.3d 1369, 1376 (Fed.Cir.2001). “The
court must construe the function of a means-plus-
function limitation to include the limitations
contained in the claim language, and only those
limitations.” Cardiac Pacemakers, Inc. v. St. Jude
Med., Inc., 296 F.3d 1106, 1113 (Fed.Cir.2002). . .
. The next step in construing a means-plus-function
claim limitation is to look to the specification and
identify the corresponding structure for that
function. “Under this second step, ‘structure
disclosed in the specification is “corresponding”
structure only if the specification or prosecution
history clearly links or associates that structure to
the function recited in the claim.’ ” Med.
Instrumentation & Diagnostics Corp. v. Elekta AB,
344 F.3d 1205, 1210 (Fed.Cir.2003) (quoting B.
Braun Med. Inc. v. Abbott Labs., 124 F.3d 1419,
1424 (Fed.Cir.1997)).
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Golight Inc. v. Wal-Mart Stores Inc., 355 F.3d 1327, 1333-34 (Fed. Cir.
2004).
The Examiner has not provided a claim construction that determines
the corresponding structure in the Specification and its equivalents to
support their determination that these claims encompass software per se. We
note that the Appellant argues that claims 30 and 49-50, when construed
properly, are directed to a particular machine. See Reply Br. 12-13.
We find that Examiner has failed to establish a prima facie showing
that claims 30, 49, and 50 are directed to non-statutory subject matter.
Accordingly, we find that the Appellant has overcome the rejection of
claims 30 and 49-50 under 35 U.S.C. § 101 as being directed to non-
statutory subject matter.

The rejection of claims 16, 20-21, 24-30, 40, 46, 47, 49, 50, 53, and 54
under 35 U.S.C. §103(a) as being unpatentable over Hiroshige, Suzuki,
Johnson, and Liebeskind
The Appellant argues claims 16, 20-21, 24-30, 40, 46, 47, 49, 50, 53,
and 54 as a group. App. Br. 5-9. We select claim 16 as the representative
claim for this group, and the remaining claims 20-21, 24-30, 40, 46, 47, 49,
50, 53, and 54 stand or fall with claim 16. 37 C.F.R. § 41.37(c)(1)(vii)
(2010).
The Appellant advances multiple reason’s as to why the Examiner
erred in finding claims 16, 30, and 40 obvious over the prior art, We will
address each one in turn.
Turning to the Appellant’s first argument, the Appellant argues that
none of the prior art teaches “utilizing dismantle study data when available,
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and default data when said study data is not available.” App. Br. 5.
Specifically, the Appellant and the Examiner dispute whether Hiroshige data
in paragraph’s [00752] and [0074] is default data. App. Br. 6, Reply Br. 4
and Answer 17-19.
First, the claimed “default data” is clearly information, albeit the
information is specifically characterized as being default. The Appellant has
not come forward with evidence sufficient to show that the structure of the
information, i.e., the data, is functionally affected by it being, specifically,
default. Absent such evidence, it was reasonable to conclude that this aspect
of the information is descriptive and not functionally related to any structure
of the claimed invention and as such falls under the category of patentably
inconsequential subject matter. The fact that the claim requires storing and
utilizing default data does not change the fact that the data is stored and
utilized but that aspect of the data which is to be default is properly
considered to be nonfunctional and descriptive. See Ex parte Curry, 84
USPQ2d 1272, 1275 (BPAI 2005) (informative) (“Common situations
involving nonfunctional descriptive material are: - a computer-readable
storage medium that differs from the prior art solely with respect to
nonfunctional descriptive material, such as music or a literary work, encoded
on the medium, - a computer that differs from the prior art solely with
respect to nonfunctional descriptive material that cannot alter how the
machine functions (i.e., the descriptive material does not reconfigure the
computer), or - a process that differs from the prior art only with respect to
nonfunctional descriptive material that cannot alter how the process steps are
to be performed to achieve the utility of the invention. Thus, if the prior art
suggests storing a song on a disk, merely choosing a particular song to store
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on the disk would be presumed to be well within the level of ordinary skill in
the art at the time the invention was made. The difference between the prior
art and the claimed invention is simply a rearrangement of nonfunctional
descriptive material.).” See also Ex parte Mathias, 84 USPQ2d 1276 (BPAI
2005) (informative). Therefore, we are not persuaded by the Appellant’s
argument.
Turning to the Appellant’s second argument, the Appellant also
argues that none of the prior art teaches “utilizing dismantle study data when
available, and default data when said study data is not available” because the
dismantle study data in Johnson has not been determined by at least one
demanufacturing worker, but presumably by an automotive worker instead.
App. Br. 5-6 and Reply Br. 3-4. See also Answer 14-17.
Initially, we note that claim 16 does not positively recite any steps that
actually require a worker to perform a dismantle study or to dismantle a
product. Claim 16 only characterizes the data as dismantle study data that
“has been determined by at least one demanufacturing worker dismantling
said at least one piece of electronic equipment.” Again we find this
characterization to be non-functional descriptive material. The Appellant has
not come forward with evidence sufficient to show that the structure of the
information, i.e., the data, is functionally affected by it being, specifically,
determined by at least one demanufacturing worker. Absent such evidence,
it was reasonable to conclude that this aspect of the information is
descriptive and not functionally related to any structure of the claimed
invention and as such falls under the category of patentably inconsequential
subject matter. The fact that the claim requires storing and utilizing data that
has been determined by at least one demanufacturing worker does not
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change the fact that the data is stored and utilized but that aspect of the data
which is to be have been determined by at least one demanufacturing worker
is properly considered to be nonfunctional and descriptive. Therefore, we are
not persuaded by the Appellant’s argument.
Turning to the Appellant’s third argument, the Appellant argues that
Johnson teaches away from the claimed combination because Johnson on
page 86 states that “these recyclability ratings are highly theoretical and are
not true indicators of a vehicle’s recyclability. App. Br. 6-7 and Reply Br.
5-6. The Examiner responds that the while Johnson is critical of some
demanufacturing studies (i.e., the European Recyclablity Rating), Johnson is
not critical of demanufacturing studies as a whole as Johnson discloses its
own improved dismantle study method. Answer 19-20.
Gurley's position appears to be that a
reference that “teaches away” can not serve to
create a prima facie case of obviousness. We agree
that this is a useful general rule. However, such a
rule can not be adopted in the abstract, for it may
not be applicable in all factual circumstances.
Although a reference that teaches away is a
significant factor to be considered in determining
unobviousness, the nature of the teaching is highly
relevant, and must be weighed in substance. A
known or obvious composition does not become
patentable simply because it has been described as
somewhat inferior to some other product for the
same use.
In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994)
We agree with the Examiner. While Johnson is critical of one specific
recyclability rating calculation method (FF 2), we see nothing in Johnson
that teaches away from the proposed combination of obtaining away from
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dismantle data from a dismantle study. Therefore, we are not persuaded by
the Appellant’s argument.
Turning to the Appellant’s fourth argument, the Appellant argues that
that Liebeskind and Johnson are non-analogous art and therefore, the
Examiner is applying hindsight in combining the prior art. App. Br. 7-8 and
Reply Br. 6-8.
Two criteria have evolved for determining whether prior art is
analogous: (1) whether the art is from the same field of endeavor, regardless
of the problem addressed, and (2) if the reference is not within the field of
the inventor's endeavor, whether the reference still is reasonably pertinent to
the particular problem with which the inventor is involved. In re Clay, 966
F.2d 656, 658-59 (Fed. Cir. 1992). See also In re Deminski, 796 F.2d 436,
442 (Fed. Cir. 1986); In re Wood, 599 F.2d 1032, 1036 (CCPA 1979).
As to Liebeskind, the Examiner argues that the Liebeskind is analgous
art because Liebeskind is reasonably pertinent to the particular problem with
which the Applicant was concerned, which is pricing. Answer 21. The
Appellant argues that Liebeskind is not analogous because the fields of
insurance and electronic demanufacturing are “widely divergent fields”
(App.Br. 7. See also Reply Br. 6-7), and states: “That pricing is involved in
both of these fields of endeavor does not make these fields analogous.”
Reply Br. 6. While the Appellant’s argue that Liebeskind is not in the same
field of endeavor, the Appellant’s do not challenge the Examiner’s assertion
that Liebeskind is reasonably pertinent to the particular problem with which
the Applicant is concerned. Therefore, we are not persuaded by the
Appellant’s argument.
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As to Johnson, the Appellant argues that electronic and automotive
demanufacturing are different fields. App. Br. 7. However, we note that
the Appellant’s Specification describes the Appellant’s field of endeavor
more broadly as demanufacturing. FF 1. As the Appellant’s admit, both
Johnson is related to the field of demanufacturing. App. Br. 7. Therefore,
we are not persuaded by the Appellant’s argument.
To traverse the rejection of independent claims 30 and 40, the
Appellant relies upon the same arguments, which we found unpersuasive
above. We note the unlike claim 16, claims 30 and 40 are directed to a
structure of an apparatus and article, respectively. The Appellant does not
address whether the structure of the apparatus and article are rendered
obvious or not by the prior art.
Accordingly, the Appellant has not overcome the rejection of claims
16, 30, and 40, or claims 20-29, 46,47, 49, 50, 53, and 54 dependent thereon,
under 35 U.S.C. § 103(a) over Hiroshige, Suzuki, Johnson, and Liebeskind.

The rejection of claims 22 and 23 under 35 U.S.C. §103(a) as being
unpatentable over Hiroshige, Suzuki, Johnson, Liebeskind, and Brand
We also shall sustain the standing 35 U.S.C. § 103(a) rejection of
dependent claims 22 and 23 as being unpatentable over Hiroshige, Suzuki,
Johnson, Liebeskind, and Brand since the Appellant has not challenged such
with any reasonable specificity (see App. Br. 9), thereby allowing claims 22
and 23 to stand or fall with parent claim 16 (see In re Nielson, 816 F.2d
1567, 1572 (Fed. Cir. 1987)).

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DECISION
The decision of the Examiner to reject claims 16, 20-30, 40, 46, 47,
49, 50, 53, and 54 is affirmed.
This decision contains a new ground of rejection pursuant to
37 C.F.R. § 41.50(b) (effective September 13, 2004, 69 Fed. Reg. 49960
(August 12, 2004), 1286 Off. Gaz. Pat. Office 21 (September 7, 2004)). 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 the Appellant, 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 . . . .

AFFIRMED; 37 C.F.R. § 41.50(b)

mev

William E. Schiesser
IBM Corporation
Dept. N50E, Bldg. 40-4
1701 North Street
Endicott NY 13760