Ex Parte Lynn et al

Patent Trial and Appeal Board

Sep 5, 2018

12041518 (P.T.A.B. Sep. 5, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO.
12/041,518
12256 7590
Adknowledge, Inc.
300 E. 39th Street
Suite 4E
FILING DATE
03/03/2008
09/07/2018
Kansas City, MO 64111
FIRST NAMED INVENTOR
Scott Lynn
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
ATTORNEY DOCKET NO.
10364-016US 1
(ADKl.033)
CONFIRMATION NO.
1532
EXAMINER
HAMILTON, SARA CHANDLER
ART UNIT PAPER NUMBER
3692
NOTIFICATION DATE DELIVERY MODE
09/07/2018 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
docketing@mcciplaw.com
IP@v2.ventures
cbobonnie@v2.ventures
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte SCOTT LYNN,
DAVID PHILLIPS, and
BRYCE ANSON
Appeal2016-006785 1
Application 12/041,5182
Technology Center 3600
Before HUBERT C. LORIN, JOSEPH A. FISCHETTI, and
MATTHEW S. MEYERS, Administrative Patent Judges
MEYERS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's final
rejection of claims 1-33, 46, 48, 49, 51, 53, 55, and 57---63. We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 Our decision references Appellants' Appeal Brief ("Br.," filed December
16, 2015), the Examiner's Answer ("Ans.," mailed April 18, 2016), and
Final Office Action ("Final Act.," mailed April 16, 2015).
2 Appellants identify "ADKNOWLEDGE INC." as the real party in interest
(Br. 3).
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Application 12/041,518
CLAIMED INVENTION
Appellants' claimed invention "is directed to methods and systems
for analyzing consumer clicks (clicks) received from search engines, and
managing future traffic by click aggregation" (Spec. ,r 2).
Claims 1, 12, 23, and 58 are the independent claims on appeal. Claim
1, reproduced below with added bracketed notations, is illustrative of the
subject matter on appeal:
1. A computer-implemented method for traffic
management over a network comprising:
[a] providing, by a first computer system linked to the
network, 1) a system bid corresponding to a current bid of an
advertiser associated with the first computer system, the system
bid being determined in accordance with a ratio of the
advertiser's cost per search engine conversion versus a cost per
e-mail conversion times the current bid to set the system bid to a
value equal to a cost per e-mail conversion, and 2) a listing
corresponding to the system bid, the listing associated with the
target web site of the advertiser, to at least one second computer
system linked to the network;
[b] directing, by the first computer system, a browsing
application of a computer device associated with at least one
entity who has activated the provided listing associated with the
target web site, the provided listing hosted by the at least one
second computer system, to the target web site;
[ c] receiving, by the first computer system, data associated
with the browsing application of the computer device associated
with the at least one entity who has activated the provided listing
associated with the target web site;
[ d] analyzing, by the first computer system, the received
data with respect to at least one parameter associated with the
target web site;
[ e] determining, by the first computer system, a
subsequent system bid based on the analyzed data; and,
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[ fJ providing, by the first computer system, the subsequent
system bid corresponding to the provided listing associated with
the target web site, to the at least one second computer system.
REJECTIONS
Claims 1-33, 46, 48, 49, 51, 53, 55, and 57-63 stand rejected under
35 U.S.C. § 101 as being directed to non-statutory subject matter (see Final
Act. 2-5).
Claims 1, 12, 23 and 58 stand rejected under 35 U.S.C. § 112(b) or 35
U.S.C. § 112 (pre-AIA), second paragraph, as being indefinite (see id. at 5-
6).
Claims 1-33, 46, 48, 49, 51, 53, 55, and 57-63 stand rejected under
35 U.S.C. § I03(a) as unpatentable over Collins (US 2007/0027768 Al,
pub. Feb. 1, 2007) in view of Dean (US 2004/0059712 Al, pub. Mar. 25,
2004) (see id. at 6-15).
ANALYSIS
Non-statutory subject matter
Independent claims 1, 12, 23, and 58, and dependent claims 2-11, 13-22,
24-33, 46, 48, 49, 51, 53, 55, 57, and 59-63
Appellants argue claims 1-33, 46, 48, 49, 51, 53, 55, and 57---63 as a
group (see Br. 8-12). We select claim 1 as representative. Claims 2-33, 46,
48, 49, 51, 53, 55, and 57---63 fall with independent claim 1. See 37 C.F.R.
§ 4I.37(c)(l)(iv).
Alice Corp. Pty. Ltd. v. CLS Bank International, 134 S.Ct. 2347
(2014) identifies a two-step framework for determining whether claimed
subject matter is judicially-excepted from patent eligibility under § 101.
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According to Alice step one, "[ w ]e must first determine whether the
claims at issue are directed to a patent-ineligible concept," such as an
abstract idea. Alice, 134 S.Ct. at 2355.
The "directed to" inquiry []cannot simply ask whether the claims
involve a patent-ineligible concept, because essentially every
routinely patent-eligible claim involving physical products and
actions involves a law of nature and/or natural phenomenon-
after all, they take place in the physical world. See Mayo, 132
S.Ct. at 1293 ("For all inventions at some level embody, use,
reflect, rest upon, or apply laws of nature, natural phenomena, or
abstract ideas.") Rather, the "directed to" inquiry applies a stage-
one filter to claims, considered in light of the specification, based
on whether "their character as a whole is directed to excluded
subject matter." Internet Patents Corp. v. Active Network, Inc.,
790 F.3d 1343, 1346 (Fed. Cir. 2015); see Genetic Techs. Ltd. v.
Merial L.L.C., 818 F.3d 1369, 1375, 2016 WL 1393573, at *5
(Fed. Cir. 2016) (inquiring into "the focus of the claimed advance
over the prior art").
Enfzsh, LLC v. Microsoft Corp., 822 F.3d 1327, 1335 (Fed. Cir. 2016). "The
'abstract idea' step of the inquiry calls upon us to look at the 'focus of the
claimed advance over the prior art' to determine if the claim's 'character as a
whole' is directed to excluded subject matter." Affinity Labs of Texas, LLC
v. DIRECTV, LLC, 838 F.3d 1253, 1257 (Fed. Cir. 2016) (citing Elec. Power
Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1353 (Fed. Cir. 2016); Enfish, LLC
v. Microsoft Corp., 822 F.3d 1327, 1335 (Fed. Cir. 2016).
In rejecting the claims under 35 U.S.C. § 101, the Examiner
determined that the claims, considered as a whole, are directed to "the
abstract ideas of providing system bids, managing traffic over a network[,]
and dynamically serving consumer clicks," and therefore to "fundamental
economic practices [that] employ mathematical relationship[ s ]/formulas"
without additional elements that transform it into a patent-eligible
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application of that idea (see Final Act. 4, 16; see also Ans. 3-10). The
Examiner also determined that the claimed steps "could have just as easily
been performed by a human operator" (see id. at 16).
According to the Examiner, "fundamental economic practices and
mathematical relationships/formulas are examples of abstract ideas explicitly
referenced in Alice Corp." (Final Act. 16; see also Ans. 6). The Examiner
further supports this position by citing to buySafe, Inc. v. Google, Inc., 765
F.3d 1350 (Fed. Cir. 2014) and Bilski v. Kappas, 561 U.S. 593 (2010) for
disclosing "[ a ]greements between people or performance of financial
transactions" (Ans. 4). Additionally, the Examiner cites to several court
cases including Gottschalk v. Benson, 409 U.S. 63 (1972) and In re Abele,
684 F .2d 902 (CCP A 1982) for disclosing a"[ m ]athematical relationship or
formula" and "[p ]erforming mathematical calculations" (Ans. 5).
Appellants argue that "the Office [a]ction makes no reference
whatsoever to any of the limitations recited in the claims" (Br. 9 ( citing
Final Act. 4)). "Thus, [according to Appellants,] 'generalized arguments
that are not directed to the specific language of the challenged claims, are
insufficient to show that the claims more likely than not are directed to a
patent-ineligible abstract idea"' (Br. 9 (citing Google Inc. v. SimpleAir Inc.,
CBM 2014-00170, 2015 WL 331089 (PTAB Jan. 22, 2015))). At the outset,
we note that Google is a non-precedential Board decision denying institution
of a covered business method patent review, and, as such, is not binding on
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this panel. Nonetheless, we are not persuaded by the analogy Appellants
attempt to draw.
In Google, the Petitioner advanced arguments that did not align with
the language of the claims and, as such, the Board found that Petitioner's
arguments did not show that the challenged claims were more likely than
not patent-ineligible under 35 U.S.C. § 101. See, e.g., Google, 2015 WL
331089, at * 10 ("Petitioner does not explain sufficiently how the challenged
claims allegedly relate to the abstract idea of packaging and routing
information as part of a subscription service. This is particularly true when
none of the challenged claims recite[] a 'subscription service' at all"); see
also id. ( describing flaws in Petition's analogy of the challenged claims to
conventional periodical publication delivery). Here, Appellants have not
shown there to be a similar deficiency in the Examiner's analysis.
Specifically, the Examiner has pointed to specific claim language in
determining that the claims are directed to an abstract idea. In particular,
the Examiner refers to "providing a system bid," the "system bid being
determined in accordance with a ratio ... current bid," and "set[ ting] the
system bid to a value equal to a cost per e-mail conversion," which are all
specific limitations set forth in element [a] of claim 1 (see Final Act. 4, 16;
see also Ans. 3---6).
We also find that there is no requirement that examiners must provide
evidentiary support in every case before a conclusion can be made that a
claim is directed to an abstract idea. See, e.g., para. IV "July 2015 Update:
Subject Matter Eligibility" to 2014 Interim Guidance on Subject Matter
Eligibility (2014 IEG), 79 Fed. Reg. 74618 (Dec. 16, 2014)
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The courts consider the determination of whether a claim is
eligible (which involves identifying whether an exception such
as an abstract idea is being claimed) to be a question of law.
Accordingly, courts do not rely on evidence that a claimed
concept is a judicial exception, and in most cases resolve the
ultimate legal conclusion on eligibility without making any
factual findings.
(Emphasis added.) Evidence may be helpful in certain situations where, for
instance, facts are in dispute. But it is not always necessary. Based on the
above analysis set forth by the Examiner, we are unpersuaded it is necessary
in this case.
Instead, we need only look to other decisions where similar concepts
were previously found abstract by the courts. See Amdocs (Israel) Limited v.
Openet Telecom, Inc., 841 F.3d 1288, 1294 (Fed. Cir. 2016) ("Instead of a
definition [for what an 'abstract idea' encompasses], then, the decisional
mechanism courts now apply is to examine earlier cases in which a similar
or parallel descriptive nature can be seen-what prior cases were about, and
which way they were decided.")
To that end, as noted above, the Examiner finds the claims are
directed to "providing system bids, managing traffic over a network[,] and
dynamically serving consumer clicks," and therefore to "fundamental
economic practices [that] employ mathematical relationship[ s ]/formulas"
(see Final Act. 4, 16; see also Ans. 3---6). Broadly, we agree that the
Examiner is correct. According to Appellants' Specification, "the present
disclosed subject matter is directed to methods and systems for analyzing
consumer clicks (clicks) received from search engines, and managing future
traffic by click aggregation" (Spec. ,r 2). And, taking independent claim 1 as
representative, the claimed subject matter is generally directed to "providing
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... a system bid corresponding to a current bid of an advertiser," "directing
... a browsing application ... to the target web site," "receiving ... data
associated with the browsing application," "analyzing ... the received data,"
"determining ... a subsequent system bid based on the analyzed data," and
"providing ... the subsequent system bid."
Therefore, these steps accomplish little more than collecting data,
analyzing the data, and then presenting the data based on the analysis, and
are similar to the steps that the Federal Circuit determined were patent
ineligible in Electric Power Group, LLC v. Alstom S.A., 830 F.3d 1350 (Fed.
Cir. 2016). In Electric Power, the method claims at issue were directed to
performing real-time performance monitoring of an electric power grid by
collecting data from multiple data sources, analyzing the data, and
displaying the results. Elec. Power Grp. LLC, 830 F.3d at 1351-52. The
Federal Circuit held that the claims were directed to an abstract idea,
explaining that "[ t ]he advance they purport to make is a process of gathering
and analyzing information of a specified content, then displaying the results,
and not any particular assertedly inventive technology for performing those
functions" (Id. at 1354).
Accordingly, we find that independent claim 1 involves nothing more
than providing a system bid, directing a computer system to a browsing
application to access a target web site, receiving and analyzing browsing
data, determining a subsequent bid based on the browsing data, and
presenting the subsequent system bid - activities squarely within the realm
of abstract ideas. See, e.g., Elec. Power Grp., LLC, 830 F.3d at 1353-54
(When "the focus of the asserted claims" is "on collecting information,
analyzing it, and displaying certain results of the collection and analysis,"
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the claims are directed to an abstract idea.). See also Accenture Global
Servs., GmbH v. Guidewire Software, Inc., 728 F.3d 1336, 1344--45 (Fed.
Cir. 2013) (Claims reciting "generalized software components arranged to
implement an abstract concept [ of generating insurance-policy-related tasks
based on rules to be completed upon the occurrence of an event] on a
computer" not patent eligible.).
Appellants argue that claim 1 recites "significantly more" than an
abstract idea because it "recites express limitations in a network-linked
computer system" (Br. 11 ). Appellants further argue similar to DDR
Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245 (Fed. Cir. 2014), the
instant steps are "necessarily rooted in computer technology" and "solve[] a
problem that only arises in the computer technology" (Br. 12). Additionally,
according to Appellants, "the 'core concept' of [the i]nvention is a
'technological process,"' so "the claims are correctly directed to eligible
subject matter" (id.). The Examiner asserts that the additional limitations are
"mere instruction[s] to apply the abstract idea," and "the claims require no
more than a generic computer to perform generic computer functions that are
well-understood, routine[,] and conventional" (Ans. 6).
We agree with the Examiner and considering each of the claim
elements in tum, we find them all to be directed to well-understood, routine,
conventional activities previously known to the industry (see, e.g., Spec.
,r,r 45, 140). And, when viewed as a whole, the computer components (e.g.,
"first computer system," "a browsing application," "second computer
system," and "computer device") of Appellants' system add nothing that is
not already present when the claim elements are considered separately.
Furthermore, other than stating that the claimed limitations are performed in
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a network-linked computer system (i.e. apply it), the Appellants have not
explained why the claims are similar to DDR (Br. 11 ).
Additionally, Appellants' claims do not purport to improve the
functioning of the system itself. Nor do they effect an improvement in any
other technology or technical field. Instead, claims 1-33, 46, 48, 49, 51, 53,
55, and 57---63 amount to nothing significantly more than an instruction to
implement the abstract idea of "providing system bids, managing traffic over
a network, and dynamically serving consumer clicks[,] and employ[ing]
mathematical relationships/formulas" (see Final Act. 4, 16; see also Ans. 3-
6) using generic computer components (see Ans. 6; see also Spec. ,r,r 48,
140). This is insufficient to transform an abstract idea into a patent-eligible
invention. "[T]he mere recitation of a generic computer cannot transform a
patent-ineligible abstract idea into a patent-eligible invention. Stating an
abstract idea "while adding the words 'apply it"' is not enough for patent
eligibility." Alice, 134 S. Ct. at 2358.
We acknowledge Appellants' argument that the pending claims
"recite[] express limitations in a network-linked computer system[]," (see
Br. 11), however, Appellants' argument fails to persuade us that this is an
improvement beyond using the computer as a tool to carry out the claimed
limitations.
According to the Specification, the "[t]he servers, engines and/or
components ... are linked ... to an endless number of other servers and the
like, via the Internet 24" (Spec. ,r 48). Furthermore, "[t]hese processes ...
can be performed by computers, computer-type devices" (Spec. ,r 140). The
instant claims do not, for example, purport to improve the functioning
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of the computer itself or involve a solution necessarily rooted in computer
technology to overcome a problem specific to the realm of computer
networks, but instead embody the use of generic computer components in
a conventional manner to perform an abstract idea, which, as the Court in
DDR Holdings explained, is not patent eligible. DDR Holdings, 773 F.3d at
1256 ("[T]hese claims in substance were directed to nothing more than the
performance of an abstract business practice on the Internet or using a
conventional computer. Such claims are not patent-eligible."). Nor do the
claims effect an improvement in any other technology or technical field.
Instead, the claims at issue amount to nothing significantly more than an
instruction to apply the abstract idea of "providing system bids, managing
traffic over a network, and dynamically serving consumer clicks [,] and
employ[ing] mathematical relationships/formulas" (see Final Act. 4, 16; see
also Ans. 3-6), which under our precedents, is not enough to transform an
abstract idea into a patent-eligible invention. See Alice, 134 S. Ct. at 2360.
Furthermore, unlike the problem in DDR Holdings, the instant
problem is not "a problem specifically arising in the realm of computer
networks," since the claimed steps of "providing ... a system bid
corresponding to a current bid of an advertiser," "receiving ... data
associated with the browsing application," "analyzing ... the received data,"
"determining ... a subsequent system bid based on the analyzed data," and
"providing ... the subsequent system bid." can be performed manually by a
click aggregator "comparing ... recorded data" and enabling a web site
promoter to "track how many consumers were successfully sent to the
relevant web site by the search engine" (Spec. ,r 4). For example, the click
aggregator can mail a paper copy of the report with the analytics to the web
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site promoter each month. Therefore, the claims merely recite the
performance of some business practice known from the pre-Internet world,
namely how well is an advertising campaign performing, along with the
requirement to perform it on the Internet. Additionally, we generally agree
with the Examiner that the Appellants are merely automating routine
activities with the use of generic computing technology (see Ans. 6; see also
Spec. ,r,r 48, 140). Furthermore, because Appellants have not provided any
arguments regarding why these claimed elements are not generic computer
components, and the Specification indicates these are generic computer
components, we agree with the Examiner that claims 1-33, 46, 48, 49, 51,
53, 55, and 57---63 lack additional elements that would render the claims
patent-eligible.
In view of the foregoing, we sustain the Examiner's rejection under
35 U.S.C. § 101 of independent claim 1, and claims 2-33, 46, 48, 49, 51, 53,
55, and 57---63, which fall with independent claim 1.
Indefiniteness
Independent claims 1, 12, 23 and 58
In rejecting claims 1, 12, 23 and 58 under 35 U.S.C. § 112, second
paragraph, the Examiner finds
[t]he claim[s] present[] two conflicting or alternative definitions
for what the "system bid" is (i.e., "a ratio of the advertiser's cost
per search engine conversion versus a cost per e-mail conversion
times the current bid" vs. "a value equal to a cost per e-mail
conversion") and two conflicting or alternative methods for how
the "system bid" is established (i.e., "the system bid being
determined" vs. "set the system bid.").
(Final Act. 5---6; see also Ans. 10).
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However, we agree with Appellants that the language relied on by the
Examiner is taken from the Specification, and "[i]t is fully consistent when
Q, for example, is equal to 1" (see Br. 13 ( citing Spec. ,r 97) ). As recited in
limitation [a] of claim 1, the system bid is "determined in accordance with a
ratio of the advertiser's cost per search engine conversion versus a cost per
e-mail conversion times the current bid" in order "to set the system bid to a
value equal to a cost per e-mail conversion." The Specification discloses
that "[t]he Q value is a ratio of the advertiser's cost per conversion ...
versus the cost per conversion of another parameter [such as] ... e-mail
conversions," and the objective may be to get the two costs and therefore Q
to be "as close to 1 as possible" (Spec. ,r 97). The reason for doing so would
be to bill the advertiser for the clicks that are high quality and to not bill the
advertiser for fraudulent clicks (id.).
Therefore, we do not sustain the Examiner's rejection under 35 U.S.C.
§ 112, second paragraph, of claims 1, 12, 23, and 58. See Orthokinetics, Inc.
v. Safety Travel Chairs, Inc., 806 F.2d 1565, 1576 (Fed. Cir. 1986) (The test
for definiteness under 35 U.S.C. 35 U.S.C. § 112, second paragraph, is
whether "those skilled in the art would understand what is claimed when the
claim is read in light of the specification.").
Obviousness
Independent claims 1, 12, 23, and 58, and dependent claims 2-11, 13-22,
24-33, 46, 48, 49, 51, 53, 55, 57, and 59-63
We are persuaded by Appellants' argument that the Examiner erred
in rejecting independent claim 1 under 35 U.S.C. § 103(a) because the
combination of Collins and Dean fails to disclose or suggest "the system bid
being determined in accordance with a ratio of the advertiser's cost per
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search engine conversion versus a cost per e-mail conversion times the
current bid to set the system bid to a value equal to a cost per e-mail
conversion," as recited by limitation [a] of independent claim 1, and
similarly recited by independent claims 12, 23, and 58 (see Br. 13-14).
The Examiner maintains the rejection is proper, and relies on
paragraphs 33, 94, and 102 of Dean, as disclosing the argued subject matter
(see Final Act. 8-9; see also Ans. 12). We cannot agree.
In making this determination, we note that Collins is directed to a
system "for optimizing and managing advertising campaigns" (Collins ,r 9).
Collins discloses that advertisers "may bid for position or prominence of
their listings in a set of search results" (id. ,r 34). More particularly, Collins
discloses "that an advertiser may determine how much they are willing to
bid for each listing based on the advertiser's business objectives and the
amount of traffic on the advertised website that the listing generates" using a
campaign optimizer component (id. ,r,r 58, 98).
Dean is directed to a system "for allowing advertisers to put targeted,
e-mail relevant ads on e-mail, or to serve such ads in association withe-
mail" (Dean ,r 23). Dean discloses
[p]erformance information (e.g., a history of selections or
conversions per URL or per domain) may be fed back in the
system, so that e-mail clusters that tend to get better performance
for particular kinds of ads ( e.g., ads belonging to a particular
cluster or topic) may be determined. This can be used to re-rank
e-mail relevant ads such that the ads served are determined using
some function of both e-mail-relevance and performance.
(Id. ,r 94). Dean further discloses that "advertisers can control how their ads
are served ... by allowing the advertiser[s] to opt-in, opt-out, [and]
manipulate bidding or budgeting controls, etc." (id. ,r 102).
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After reviewing the cited portions of Dean, we agree with Appellants
that there is nothing in the relied upon portions of Dean that discloses or
suggests the argued limitation (see Br. 13-14). Here, as Appellants point
out, although "Dean discloses that advertisers may pay for clicks on content-
related-based targeted Web sites and for clicks on content-related-based
targeted emails, Dean fails to teach or suggest any ratio that seeks to adjust a
bid to a value that is the same for both such advertising mediums" (Id.).
In the Response to Arguments section of the Answer, the Examiner
takes the position
"the system bid being determined in accordance with a ratio of
the advertiser's cost per search engine conversion versus a cost
per e-mail conversion times the current bid to set the system bid
to a value equal to a cost per e-mail conversion," does not refer
to a positively recited step or act ( e.g., "determining the system
bid in accordance ... ", "setting the system bid ... "etc.)
required of the computer system (i.e., "first computer system")
claimed. Furthermore, none of the positively recited steps or acts
required of the claimed invention rely on the characteristics of
the "system bid" as described in the clause. In other words, the
claimed process would occur exactly the same regardless of how
the "system bid" is interpreted. The phrase is akin to a "wherein"
clauses and/ or "intended use/result" recitations that are not
further limiting of the claimed invention.
(Ans. 12). However, we disagree with the Examiner that the secondary
determining step is merely such an intended use, and instead find it limiting.
For example, limitation [ e] in claim 1 recites "determining, by the first
computer system, a subsequent system bid based on the analyzed data," and
in order to have a subsequent system bid, logically, a previous system bid
needs to be determined as recited in limitation [a] of claim 1. In other
words, the first determined bid in limitation [a] of claim 1 is utilized later in
the claim to provide "the subsequent system bid" required in limitation [f].
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Therefore, contrary to the Examiner's assertion, the determining portion of
limitation [a] in claim 1 is not merely an intended result but is actually used
to perform the subsequent determination in limitation [ e ], and thus limiting.
Independent claims 12, 23, and 58 include similar limitations.
In view of the foregoing, we do not sustain the Examiner's rejection
of independent claims 1, 12, 23, and 58 under 35 U.S.C. § 103(a). For the
same reasons, we also do not sustain the Examiner's rejection of dependent
claims 2-11, 13-22, 24--33, 46, 48, 49, 51, 53, 55, 57, and 59-63.
DECISION
The rejection of claims 1-33, 46, 48, 49, 51, 53, 55, and 57---63 under
35 U.S.C. § 101 is affirmed.
The rejection of claims 1, 12, 23 and 58 under 35 U.S.C. § 112(b) or
35 U.S.C. § 112 (pre-AIA), second paragraph, is reversed.
The rejection of claims 1-33, 46, 48, 49, 51, 53, 55, and 57---63 under
35 U.S.C. § 103(a) is reversed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED
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