Ex Parte Kirkconnell-Ewing et al

Patent Trials and Appeals Board

Jul 30, 2013

09796165 - (D) (P.T.A.B. Jul. 30, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________
Ex parte NANCY KIRKCONNELL-EWING, KYLE NEAL,
and LYNN SAUDER
____________________

Appeal 2010-012011
Application 09/796,165
Technology Center 3600
____________________

Before: JAMES P. CALVE, JILL D. HILL, and BEVERLY M. BUNTING,
Administrative Patent Judges.

BUNTING, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF CASE
Appellants appeal under 35 U.S.C. § 134 from a rejection of claims
11-36. We have jurisdiction under 35 U.S.C. § 6(b).
We DISMISS and enter a NEW GROUND OF REJECTION of
claims 26-30 pursuant to our authority under 37 C.F.R. § 41.50(b).

CLAIMED SUBJECT MATTER
The claims are directed to a system and method for aiding customers
in defining problems and finding solutions. Claim 26, reproduced below, is
illustrative of the claimed subject matter:
26. A web server including computer readable media,
comprising:
logic configured to prompt a customer via a web site to
provide information about its business and a business problem
the customer is experiencing;
logic configured to receive customer responses to the
prompts entered via the web site;
logic configured to automatically cross-reference the
customer responses with problem definitions and available
business solutions offered via the web site to determine a set of
problem definitions and potential solutions to the problems; and
logic configured to present the set of problem definitions
and potential business solutions to the customer for review.

REFERENCES
Kelman US 2004/0093255 A1 May 13, 2004
Inference Corporation, CBR Express® Knowledge Creation (Feb. 2, 1999),
found at http://web.archive.org/web/19990202201458/
www.inference.com/products/knowc_3.5.html (hereinafter “Inference
Reference U”).

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Inference Corporation, Products: k-Commerce. SUPPORT (Oct. 8, 1999),
found at http://web.archive.org/web/19991008044805/
www.inference.com/products/web.html (hereinafter “Inference Reference
V”).

Inference Corporation, Inference Acquires Web-based e-Commerce Sales
Company and Announces Preliminary First Quarter Results (Oct. 13, 1999),
found at http://web.archive.org/web/19991013155249/
www.inference.com/news/press_releases/ (hereinafter “Inference Reference
W”).

Arons et al., Implementation and Results of a Prototype Expert System on
Strategic Analysis, Erasmus University Rotterdam-Faculty of Economics, 1-
21 (1998) (hereinafter “Arons”).

VAR.CODE, Internet/Extranet/Intranet servers, software, network
connectivity, outsourcing, education and consulting services), found at
http://web.archive.org/web/19980123220916/http://www.resell.net
(hereinafter “Var.Code”).

Business Editors, VAR.CODE debuts first Internet value-added distributor
for resellers, Business Wire (Nov. 5, 1996) (hereinafter “Business Wire”).

Resellers Network, Partner Program (Jan. 23, 1998), found at
http://web.archive.org/web/19980123221402/www.resell.net/varprgrm.htm
(hereinafter “Partner Program”).

Resellers Network, Server Software (Jan. 23, 1998), found
at:http://web.archive.org/web/19980123221135/www.resell.net/clntserv.htm
(hereinafter “Server Software”).

REJECTIONS
The Examiner made the following rejections:
I. Claims 11-25 and 31-36 are rejected under 35 U.S.C. § 101.
Ans. 10-11.1

1 All references to “Ans.” are to the Examiner’s Answer mailed June 7, 2010
in response to the Administrative Remand mailed May 27, 2010.
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II. Claims 11-16 are rejected under 35 U.S.C. § 112, second
paragraph, as being indefinite. Ans. 3-5, 7-10.
III. Claims 11-15, 17, 21-24 and 26-29 are rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Inference Reference U,
Inference Reference V, and Inference Reference W. Ans. 12-
18.
IV. Claims 18-20 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Inference U, Inference Reference V,
Inference Reference W, and Arons. Ans. 18-23.
V. Claims 16, 25 and 30 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Inference Reference U, Inference
Reference V, Inference Reference W, and Kelman. Ans. 23-24.
VI. Claims 31-34 and 36 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Inference Reference U, Inference
Reference V, Inference Reference W, and Var.Code, as
illustrated by Business Wire, Partner Program, and Server
Software. Ans. 24-29.
VII. Claim 35 is rejected under 35 U.S.C. § 103(a) as being
unpatentable over Inference Reference U, Inference Reference
V, Inference Reference W, Var.Code, and Kelman. Ans. 29-31.

ANALYSIS
I. Claims 11-25 and 31-36: Non-Statutory Subject Matter
Following the first administrative remand of the Appeal on May 29,
2009, the Examiner entered a new ground of rejection in the Second
Examiner’s Answer against claims 11-25 and 31-36 under 35 U.S.C. § 101
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as being directed to nonstatutory subject matter. Second Ans. 3.2 The
Second Examiner’s Answer properly gave notice to the Appellants of the
new ground of rejection and the Technology Center Director approved the
new ground. Second Ans. 35-37. The Second Examiner’s Answer advised
that Appellants were required to respond to the new ground within two
months in either of two ways: 1) reopen prosecution by filing a reply under
37 C.F.R. § 1.111 (see 37 C.F.R. § 41.39(b)(1)); or 2) maintain the appeal by
filing a reply brief as set forth in 37 C.F.R. § 41.41 (see 37 CFR
41.39(b)(2)), “to avoid sua sponte dismissal of the appeal as to the claims
subject to the new ground of rejection.” Second Ans. 35-36; see 37 C.F.R. §
41.39(b). According to the record before us, neither option was exercised.
Therefore, the appeal as to claims 11-25 and 31-36, which are subject
to the Examiner’s New Ground of Rejection under 35 U.S.C. § 101 as being
directed to nonstatutory subject matter, stands dismissed.

NEW GROUND OF REJECTION UNDER 37 C.F.R. § 41.50(b)
We enter a new ground of rejection for independent claim 26 and
dependent claims 27-30 as unpatentable under 35 U.S.C. § 101 for being
drawn to nonstatutory abstract subject matter, so as to provide Appellants
with a full and fair opportunity to respond to the thrust of the rejection. See
In re Kronig, 539 F.2d 1300, 1302 (CCPA 1976) (“the ultimate criterion of
whether a rejection is considered ‘new’ in a decision by the board is whether
appellants have had [a] fair opportunity to react to the thrust of the
rejection.”).

2 All references to “Second Ans.” are to the Second Examiner’s Answer,
mailed June 12, 2009, in response to the Administrative Remand mailed
May 29, 2009.
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Under the Patent Act of 1952, subject matter patentability is a
threshold requirement. “Whoever invents or discovers any new and useful
process, machine, manufacture, or composition of matter, or any new and
useful improvement thereof, may obtain a patent therefor, subject to the
conditions and requirements of this title.” 35 U.S.C § 101.
The Federal Circuit Court concluded that:
A transitory, propagating signal like Nuijten’s is not a “process,
machine, manufacture, or composition of matter.” Those four
categories define the explicit scope and reach of subject matter
patentable under 35 U.S.C. § 101; thus, such a signal cannot be
patentable subject matter.
In re Nuijten, 500 F.3d 1346, 1357 (Fed. Cir. 2007).
Subsequent to the court’s decision in Nuijten, the USPTO has issued
additional guidance.3 Specifically, the USPTO guidance states:
The United States Patent and Trademark Office (USPTO) is
obliged to give claims their broadest reasonable interpretation
consistent with the specification during proceedings before the
USPTO. See In re Zletz, 893 F.2d 319 (Fed. Cir. 1989) (during
patent examination the pending claims must be interpreted as
broadly as their terms reasonably allow). The broadest
reasonable interpretation of a claim drawn to a computer
readable medium (also called machine readable medium and
other such variations) typically covers forms of non-transitory
tangible media and transitory propagating signals per se in view
of the ordinary and customary meaning of computer readable
media, particularly when the specification is silent. See MPEP
2111.01. When the broadest reasonable interpretation of a claim
covers a signal per se, the claim must be rejected under 35
U.S.C. § 101 as covering non-statutory subject matter. See In re

3 See David J. Kappos, Subject Matter Eligibility of Computer Readable
Media, 1351 Off. Gaz. Pat. Office 212 (Feb. 23, 2010)(“OG
Notice”)(citation omitted), available at http://
www.uspto.gov/web/offices/com/sol/og/2010/week08/TOC.htm#ref20

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Nuijten, 500 F.3d 1346, 1356-57 (Fed. Cir. 2007) (transitory
embodiments are not directed to statutory subject matter) and
Interim Examination Instructions for Evaluating Subject Matter
Eligibility Under 35 U.S.C. § 101, Aug. 24, 2009; p. 2.
Independent Claim 26 recites “[a] web server including computer
readable media.” Appellants’ Specification discloses that “computer-
readable medium” “can be any means that can contain, store, communicate,
propagate, or transport the program for use by or in connection with the
instruction execution system, apparatus, or device.” Spec. 10, ll. 3-5.
Additional examples of computer readable medium include:
for example but not limited to, an electronic, magnetic, optical,
electromagnetic, infrared, or semiconductor system, apparatus,
device, or propagation medium. More specific examples (a non
exhaustive list) of the computer-readable medium would
include the following: an electrical connection (electronic)
having one or more wires, a portable computer diskette
(magnetic), a random access memory (RAM) (magnetic), a
read-only memory (ROM) (magnetic), an erasable
programmable read-only memory (EPROM or Flash memory)
(magnetic), an optical fiber (optical), and a portable compact
disc read-only memory (CDROM) (optical). Note that the
computer-readable medium could even be paper or another
suitable medium upon which the program is printed, as the
program can be electronically captured, via for instance optical
scanning of the paper or other medium, then compiled,
interpreted or otherwise processed in a suitable manner if
necessary, and then stored in a computer memory.
Spec. 10, ll. 6-18.
Giving claim 26 the broadest reasonable construction, consistent with
Appellants’ Specification, we find that claim 26 encompasses transitory
propagating signals and does not specifically preclude the claimed logic
from being embodied in transitory media.
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Since claim 26, as we have construed it above, encompasses a
propagating, transitory signal, we find claim 26 is directed to non-statutory
subject matter. Dependent claims 27-30 also are directed toward non-
statutory subject matter for the same reasons.

II. Claims 11-16 under 35 U.S.C. § 112, second paragraph
Since claims 11-16 stand dismissed for Appellants’ failure to respond
to the Examiner’s New Ground of Rejection of those claims under 35 U.S.C.
§ 101, we do not address the rejection of claims 11-16 under 35 U.S.C.
§ 112.4

III. Claims 11-15, 17, 21-24 and 26-29 under 35 U.S.C. § 103(a)
Claims 11-15, 17, and 21-24
Since claims 11-15, 17, and 21-24 stand dismissed, for Appellants’
failure to respond to the Examiner’s New Ground of Rejection of those
claims under 35 U.S.C. § 101, we do not address the rejection of claims 11-
15, 17, and 21-24 under 35 U.S.C. § 103(a).
Claims 26-29
As claims 26-29 are subject to a New Grounds of Rejection as being
directed to nonpatentable subject matter under § 101, we do not reach the
question of whether claims 26-29 are obvious under § 103. See In re
Comiskey, 554 F.3d 967, 973 (Fed. Cir. 2009) (“We do not reach the ground
relied on by the Board below-that the claims were unpatentable as obvious

4 Following the Administrative Remand on May 27, 2010, the Examiner
entered a new ground of rejection in the Examiner’s Answer mailed June 7,
2010 against claims 11-16 under 35 U.S.C. § 112, second paragraph, as
being indefinite. Ans. 3.

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over Ginter in view of Walker, Perry, and ‘Arbitration Fee Schedule’-
because we conclude that many of the claims are ‘barred at the threshold by
§ 101.’”); Ex Parte Gutta, 93 USPQ2d 1025, 1036 (BPAI 2009)
(precedential) (same).

IV. Claims 18-20 under 35 U.S.C. § 103(a)
Since claims 18-20 stand dismissed for Appellants’ failure to respond
to the Examiner’s New Ground of Rejection of those claims under 35 U.S.C.
§ 101, we do not address the rejection of claims 18-20 under 35 U.S.C.
§ 103(a).

V. Claims 16, 25 and 30 under 35 U.S.C. § 103(a)
Claims 16 and 25
Since claims 16 and 25 stand dismissed for Appellants’ failure to
respond to the Examiner’s New Ground of Rejection of those claims, we do
not address the rejection of claims 16 and 25 under 35 U.S.C. § 103(a).
Claim 30
As claim 30 is subject to a New Ground of Rejection as being directed
to nonpatentable subject matter under § 101, we do not reach the question of
whether claim 30 is obvious under § 103.

VI. Claims 31-34 and 36 under 35 U.S.C. 103(a)
Since claims 31-34 and 36 stand dismissed for Appellants’ failure to
respond to the Examiner’s New Ground of Rejection of those claims under
35 U.S.C. § 101, we do not address the rejection of claims 31-34 and 36
under 35 U.S.C. § 103(a).

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VII. Claim 35 under 35 U.S.C. 103(a)
Since claim 35 stands dismissed for Appellants’ failure to respond to
the Examiner’s New Ground of Rejection of those claims under 35 U.S.C.
§ 101, we do not address the rejection of claim 35 under 35 U.S.C. §103(a).

DECISION
A NEW GROUND OF REJECTION has been entered for claims 26-
30 under 35 U.S.C. § 101.
The appeal as to claims 11-25 and 31-36 is dismissed.
Upon return of the application to the Examiner, the Examiner should
cancel claims 11-25 and 31-36.
This decision contains a NEW GROUND OF REJECTION pursuant
to 37 C.F.R. § 41.50(b). 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 Appellants, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new grounds 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. . . .
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) (2011).
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DISMISSED; 37 C.F.R. § 41.50(b)

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