Ex Parte Lee

Board of Patent Appeals and Interferences

Mar 28, 2007

09782149 (B.P.A.I. Mar. 28, 2007)

The opinion in support of the decision being entered today was not written
for publication in a law journal and is not binding precedent of the Board.

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte YUNG-SEOP LEE
____________

Appeal 2007-0367
Application 09/782,149
Technology Center 3600
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Decided: March 28, 2007
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Before TERRY J. OWENS, HUBERT C. LORIN, and ANITA PELLMAN
GROSS, Administrative Patent Judges.

GROSS, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Lee (Appellant) appeals under 35 U.S.C. § 134 from the Examiner's
final rejection of claims 1 through 13, which are all of the claims pending in
this application.
Appeal 2007-0367
Application 09/782,149

Appellant's invention relates to a method and system for evaluating
and ranking a number of records. Claim 1 is illustrative of the claimed
invention and reads as follows:
1. A computer implemented method of evaluating a plurality of records,
each record having at least a first attribute and a second attribute, each of the
first attribute and the second attribute having an associated attribute value,
the method comprising:

a) first assigning a discretized attribute score for each of the attribute
values;

b) first sorting the plurality of records in to an order based on the
assigned discretized attribute scores associated with the first attribute;

c) second sorting the plurality of records in to an order based on the
assigned discretized attribute scores associated with the second attribute;

d) third sorting the plurality of records in to an order based on the
attribute values associated with at least the first attribute and the second
attribute, until records, which have different attribute values associated with
at least the first attribute or the second attribute, have been sorted to different
ranks; and

e) second assigning an evaluation score to each record which has
been sorted.

The prior art references of record relied upon by the Examiner in
rejecting the appealed claims are:
Powers US 6,604,084 B1 Aug. 05, 2003
(filed July 01, 1998)

Arthur Middleton Hughes, "Quick Profits with RFM Analysis," archived
February 8, 1999 at www.dbmarketing.com/articles/rfmtools.html. (Hughes)

"RFM for Windows," Database Marketing Institute, archived February 3,
1999 at www.dbmarketing.com/ams.html. (RFM for Windows)
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Application 09/782,149

Claims 1 through 3 stand rejected under 35 U.S.C. § 102(b) as being
anticipated by Hughes.
Claims 4 and 7 through 10 stand rejected under 35 U.S.C. § 103 as
being unpatentable over Hughes.
Claims 5 and 6 stand rejected under 35 U.S.C. § 103 as being
unpatentable over Hughes in view of Powers.
Claims 11 through 13 stand rejected under 35 U.S.C. § 103 as being
unpatentable over Hughes in view of RFM for Windows.
We refer to the Examiner's Answer (mailed March 21, 2006) and to
Appellant's Brief (filed February 13, 2006) for the respective arguments.

SUMMARY OF DECISION
As a consequence of our review, we will reverse the anticipation
rejection of claims 1 through 3 and the obviousness rejections of claims 4
through 13. We also enter a new ground of rejection for claims 1 through 13
under 35 U.S.C. § 101.

OPINION
Appellant contends (Br. 5-6) that independent claim 1 requires a third
sorting based on the attribute value associated with at least one of the first
and second attributes, whereas Hughes' third sorting is based on a third
discretized attribute score. We agree. Hughes assigns a code from 1 to 5 for
each of three attributes—recency, frequency, and monetary measures—and
sorts based on each score. Thus, the third sort is based on a third attribute
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Appeal 2007-0367
Application 09/782,149

score, not on an attribute value associated with one of the first and second
attributes. Since Hughes fails to disclose each and every limitation of the
claims, Hughes cannot anticipate claims 1 through 3. Accordingly, we will
not sustain the anticipation rejection of claims 1 through 3.
Regarding the obviousness rejection of claims 4 and 7 through 10
over Hughes, Appellant again contends (Br. 7) that Hughes fails to disclose
the claimed third sorting. The Examiner provides no convincing line of
reasoning why it would have been obvious to modify Hughes to sort a third
time based on an attribute value associated with at least one of the first and
second attributes. Accordingly, we cannot sustain the obviousness rejection
of claims 4 and 7 through 10.
Appellant did not argue the combination of Hughes with Powers to
reject claims 5 and 6. However, since the claims depend from claim 1, and
Powers fails to cure the deficiency of Hughes noted supra, we cannot sustain
the obviousness rejection of claims 5 and 6.
Appellant contends (Br. 8) that RFM for Windows teaches the
invention of Hughes in a Windows environment. As such, neither teaches
the claimed third sorting. We agree. Accordingly, we cannot sustain the
obviousness rejection of claims 11 through 13 over Hughes in view of RFM
for Windows.
Under the provisions of 37 C.F.R. § 41.50(b), we enter the following
new ground of rejection against Appellant's claims 1 through 13 under
35 U.S.C. § 101 as being nonstatutory.
According to the Interim Guidelines for Examination of patent
Applications for patent Subject Matter Eligibility (1300 Off. Gaz. Pat. Office
142 (Nov. 22, 2005)), the first step in determining whether claims are
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Application 09/782,149

statutory under 35 U.S.C. § 101 is to determine whether the claims as a
whole are directed to nothing more than abstract ideas, natural phenomena,
or laws of nature. Clearly, the present claims recite neither a natural
phenomenon nor a law of nature, so the issue is whether they are directed to
an abstract idea. We note that mathematical algorithms are considered to be
abstract ideas. Thus, processes that are merely mathematical algorithms are
nonstatutory under 35 U.S.C. § 101. We further note that it is generally
difficult to ascertain whether a process is merely an abstract idea,
particularly since claims are often drafted to include minor physical
limitations such as data gathering steps or post-solution activity. However,
if the claims are considered to be an abstract idea, then the claims are not
eligible for and, therefore, are excluded from patent protection.
Present claims 1 through 9 recite a machine-implemented method.
However, as noted supra, the question is whether the claims as a whole are
nothing more than abstract ideas. As a whole, the claims recite a series of
mathematical steps. In particular, independent claim 1 recites assigning two
scores, or numbers, ordering based on the first number, ordering based on
the second number, ordering based on a third value, or number, and
assigning a final score, or number. We find nothing in claim 1, or any of its
dependents, other than mathematical steps. Claim 10 recites the same steps
as claim 1, but relates the steps to the airline industry. Specifically, the
method is for evaluating customers in the airline industry, the first attribute
is net revenue, and the second attribute is number of flights. However, the
process itself is still a series of mathematical steps. Thus, claims 1 through
10 merely recite mathematical algorithms.
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Application 09/782,149

Nonetheless, assuming arguendo that the claims are not solely
directed to an algorithm, then the next step set forth in the guidelines is to
determine whether the claimed invention is directed to a practical
application of an abstract idea, law of nature, or natural phenomenon. Again
the claims involve neither a law of nature nor natural phenomenon, so the
issue is whether they are directed to a practical application of an abstract
idea. The guidelines indicate that either a transformation of physical subject
matter to a different state or thing or the production of a useful, concrete,
and tangible result equates to a practical application of an abstract idea, in
accordance with the test set forth in State Street Bank & Trust Co. v.
Signature Finance Group, Inc., 149 F.3d 1368, 1373; 47 USPQ2d 1596,
1601 (Fed. Cir. 1998). If the claims are not directed to a practical
application of an abstract idea (or they do not transform physical subject
matter to a different state or thing nor produce a useful, concrete, tangible
result), then the claims are nonstatutory under 35 U.S.C. § 101.
In claims 1 through 9, we find no physical subject matter being
transformed, just numbers being manipulated. Further, we find no recitation
of a useful, concrete, tangible result, just a final score or number.
Accordingly, claims 1 through 9 are not directed to a practical application of
an abstract idea. They are merely directed to abstract ideas that are
nonstatutory under 35 U.S.C. § 101. Additionally, although the preamble of
claim 10 ties the method to the airline industry, the data being manipulated
are arbitrary numbers that do not represent physical subject matter, and the
result is still just a number. Therefore, as we find no physical subject matter
being transformed and no useful, concrete, tangible result, claim 10 is an
abstract idea that is nonstatutory under 35 U.S.C. § 101.
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A programmed general purpose machine which merely performs a
mathematical algorithm has been held nonstatutory as an attempt to patent
the algorithm itself, see Gottschalk v. Benson, 409 U.S. 63, 71-72, 175
USPQ 673, 676 (1972) and In re de Castelet, 562 F.2d 1236, 1243, 195
USPQ 439, 445 (CCPA 1977). We believe that a similar case exists for
"manufactures" which store programs that cause a machine to perform a
mathematical algorithm stored on a tangible medium.
Claims 11 through 13 are directed to a general purpose machine
which merely performs the mathematical algorithm recited in claim 1 and an
article which stores a program that causes the machine to perform the
mathematical algorithm of claim 1. Thus, we find claims 11 through 13 to
be nonstatutory as further attempts to patent the algorithm.

ORDER
The decision of the Examiner rejecting claims 1 through 3 under
35 U.S.C. § 102(b) and claims 4 through 13 under 35 U.S.C. § 103 is
reversed. Claims 1 through 13 are also newly rejected under 35 U.S.C.
§ 101.
This decision contains a new ground of rejection pursuant to 37 CFR
§ 41.50(b) (effective September 13, 2004, 69 Fed. Reg. 49960 (August 12,
2004), 1286 Off. Gaz. Pat. Office 21 (September 7, 2004)). 37 CFR
§ 41.50(b) provides "[a] new ground of rejection pursuant to this paragraph
shall not be considered final for judicial review."
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Appeal 2007-0367
Application 09/782,149

37 CFR § 41.50(b) also provides that 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. . . .

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 CFR § 1.136(a). See 37 CFR
§ 1.136(a)(1)(iv).

REVERSED
37 C.F.R. § 41.50(b)

jlb

JAMES M. STOVER
NCR CORPORATION
1700 SOUTH PATTERSON BLVD, WHQ4
DAYTON, OH 45479
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