Ex Parte Malnekoff

Board of Patent Appeals and Interferences

Feb 17, 2010

09871867 (B.P.A.I. Feb. 17, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte PETER J. MALNEKOFF
____________

Appeal 2009-010063
Application 09/871,867
Technology Center 3600
____________

Decided: February 17, 2010
____________

Before MURRIEL E. CRAWFORD, JOSEPH A. FISCHETTI and
BIBHU R. MOHANTY, Administrative Patent Judges.

FISCHETTI, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellant seeks our review under 35 U.S.C. § 134 of the Examiner’s
final rejection of claims 1-18 and 20-22. Claim 19 is cancelled. We have
jurisdiction under 35 U.S.C. § 6(b) (2002).

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SUMMARY OF DECISION
We AFFIRM.

THE INVENTION
Appellant claims a system and method of automated gemstone
evaluation for producing an automated gemstone evaluation report.
(Specification 1:9-11).
Claim 1, reproduced below, is representative of the subject matter on
appeal.

1. A fully automated gemstone evaluation system
for which presence of the actual gemstone is not required,
comprising:
an input device adapted to receive a gemstone laboratory
grading certificate via a remote communication device the
gemstone laboratory grading certificate including cut type,
weight, color, clarity, and cut proportions wherein the data for
cut proportions include an objective measurable value for at
least one of depth percentage, table percentage, girdle
thickness, crown height, crown angle, pavilion depth, pavilion
angle, culet amount, and type of finish;
a processing device adapted to compute a pricing
estimate for use in an evaluation report, based at least upon the
data included on the gemstone laboratory grading certificate;
and
an output device adapted to communicate the evaluation
report to the system user.

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THE REJECTIONS
The Examiner relies upon the following as evidence of
unpatentability:
Aggarwal US 6,239,867 B1 May 29, 2001
Vanier US 5,828,405 Oct. 27, 1998
A Multimedia Solution to Productivity Gridlock: A Re-Engineered Jewelry
Appraisal System at Zale Corporation, MIS Quarterly (March 1994)
(hereinafter “Zale”).
The following rejections are before us for review.
The Examiner rejected claims 15-18 and 20 under 35 U.S.C. § 101
because the claimed invention is directed to non-statutory subject matter.
The Examiner rejected claims 1-18 and 20-22 under 35 U.S.C. § 112,
first paragraph, as failing to comply with the written description
requirement.
The Examiner rejected claims 1-14 under 35 U.S.C. § 102(e) as being
anticipated by Aggarwal.
The Examiner rejected claims 3, 10 and 17 under 35 U.S.C. § 103(a)
as being unpatentable over Aggarwal in view of Vanier.

The Examiner rejected claim 20 under 35 U.S.C. § 103(a) as being
unpatentable over Aggarwal in view of Zale.

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ISSUES
Has Appellant shown that the Examiner erred in rejecting claims 15-
18 and 20 under 35 U.S.C. § 101 because the claimed invention is directed
to non-statutory subject matter in that the claimed subject matter is neither
(1) tied to a particular machine or apparatus, or (2) transforms a particular
article into a different state or thing?
Has Appellant shown that the Examiner erred in rejecting claims 1-
18 and 20-22 under 35 U.S.C. § 112, first paragraph, as failing to comply
with the written description requirement?
Has Appellant shown that the Examiner erred in rejecting claims 1-14
under 35 U.S.C. 102(e) as being anticipated by Aggarwal because the
content of data in the system of Aggarwal is different from Appellant’s and
thus distinguishes over the prior art systems which function in the same way
but have different data content.
Has Appellant shown that the Examiner erred in rejecting claims 3, 10
and 17 under 35 U.S.C. § 103(a) as being unpatentable over Aggarwal in
view of Vanier on the grounds that a person with ordinary skill in the art
would understand that because Vanier discloses a database which has
adjusted index price values based on a jeweler’s somewhat high appraisal
derived from a jewelry market from which there are substantial discounts
meets the claim limitation of adjusting the indexed list price value based on
a jeweler pricing adjustment for generating said baseline price estimate.
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Has Appellant shown that the Examiner erred in rejecting claim 20
under 35 U.S.C. § 103(a) as being unpatentable over Aggarwal in view of
Zale on the grounds that because Vanier adjusts the price estimate, e.g., the
jeweler’s appraisal, using national pricing standards and market values, the
requirements of claim 20 are met.

PRINCIPLES OF LAW
Anticipation
“A claim is anticipated only if each and every element as set forth in
the claim is found, either expressly or inherently described, in a single prior
art reference.” Verdegaal Bros., Inc. v. Union Oil Co. of Cal., 814 F.2d 628,
631 (Fed. Cir. 1987).
Obviousness
“Section 103 forbids issuance of a patent when ‘the differences
between the subject matter sought to be patented and the prior art are such
that the subject matter as a whole would have been obvious at the time the
invention was made to a person having ordinary skill in the art to which said
subject matter pertains.’” KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 406
(2007). The question of obviousness is resolved on the basis of underlying
factual determinations including (1) the scope and content of the prior art,
(2) any differences between the claimed subject matter and the prior art, (3)
the level of skill in the art, and (4) where in evidence, so-called secondary
considerations. Graham v. John Deere Co., 383 U.S. 1, 17-18 (1966). See
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also KSR, 550 U.S. at 407 (“While the sequence of these questions might be
reordered in any particular case, the [Graham] factors continue to define the
inquiry that controls.”)
Novelty/Obviousness Nonfunctional Descriptive Material
When “non-functional descriptive material” is recorded or stored in a
memory or other medium (i.e., substrate) it is treated as analogous to printed
matter cases where what is printed on a substrate bears no functional
relationship to the substrate and is given no patentable weight. See In re
Gulack, 703 F.2d 1381, 1385 (Fed. Cir. 1983).
Nonfunctional descriptive material cannot render nonobvious an
invention that would have otherwise been obvious. In re Ngai, 367 F.3d
1336, 1339 (Fed. Cir. 2004). Cf. In re Gulack, 703 F.2d 1381, 1385 (Fed.
Cir. 1983) (when descriptive material is not functionally related to the
substrate, the descriptive material will not distinguish the invention from the
prior art in terms of patentability).
Patentable weight need not be given to descriptive material absent a
new and unobvious functional relationship between the descriptive material
and the substrate. See In re Lowry, 32 F.3d 1579, 1582-83 (Fed. Cir. 1994);
In re Ngai, 367 F.3d 1336, 1338 (Fed. Cir. 2004). See also Ex parte
Mathias, 84 USPQ2d 1276 (BPAI 2005).
Patent Eligibility
The test to determine whether a claimed process recites patentable
subject matter under § 101 is whether: (1) it is tied to a particular machine
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or apparatus, or (2) it transforms a particular article into a different state or
thing. In re Bilski, 545 F.3d 943, 961-62 (Fed. Cir. 2008) (en banc).
Written Description
The factual inquiry for determining whether a specification provides
sufficient written description for the claimed invention is whether the
specification conveys with reasonable clarity to those skilled in the art that,
as of the filing date sought, applicant was in possession of the invention as
now claimed. Vas-Cath, Inc. v. Mahurkar, 935 F.2d 1555, 1563-64 (Fed.
Cir. 1991). An applicant shows possession of the claimed invention by
describing the claimed invention with all of its limitations using such
descriptive means as words, structures, figures, diagrams, and formulas that
fully set forth the claimed invention. Lockwood v. Am. Airlines, Inc., 107
F.3d 1565, 1572 (Fed. Cir. 1997).

FINDINGS OF FACT
We find the following facts by a preponderance of the evidence:
1. Appellant’s affidavit, dated July 24, 2003, introduces a ledger of
payments made to Mr. Finkelstein which the Appellant asserts were for
software development work done for Appellant’s system. (Aff ¶ 7).
2. The ledger of payments exhibit lists only one entry prior to May 28,
1998 which is check entry #2212 in the amount of $500.00.
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3. The ledger of payments exhibit lists entries subsequent to check
#2212 in excess of fifty payments to Mr. Finkelstein ending as late as
January 14, 2000.
4. Appellant’s affidavit, dated July 24, 2003, introduces a cover sheet
from Ladas & Perry which states that a first draft copy of an application for
an automated gemstone appraisal system and method for producing an
automated gemstone report is enclosed. No copy, redacted or otherwise of
the referenced draft application is provided with the Declaration.
5. The Examiner found that Aggarwal discloses laboratory grading
data including cut type, weight, color, etc. (see col. 1, l. 62 to col. 2, l. 60
and col. 14, l. 16 to col. 16, l. 27). (Answer 4).
6. The Specification describes that the “system needs to be able to
make an adjustment based on the particular lab generating the laboratory
certificate for the gemstone.” (Specification 11:30-33).
7. The Examiner found with respect to claim 17 that “Aggarwal does
not teach adjusting price value based on jeweler pricing adjustment. Vanier
teaches jewelers entering appraised value of gemstone appraised valued
being stored in a database, the value being high from which there is a
substantial discount.” (Answer 6).
8. The Examiner concluded from (FF 7) that “[i]t would have been
obvious to one of ordinary skill in the art at the time of the invention to
appraise the gemstone according to jeweler price, from which the gemstone
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was purchased or sold, since different retail stores pay different price for the
gemstones. (Answer 6-7).
9. The Examiner found with respect to claims 21 and 22 that:
Aggarwal does not teach the processing device
adapted to adjust the pricing estimate based on a
laboratory identifier or retail outlet identifiers.
Vanier teaches the pricing of gemstone for
insurance purpose. Vanier teaches user key in
information with respect to the owner and the
characteristics of the gemstone. Vanier teaches
[an] insurance company using the database of
appraised value and characteristics of the gemstone
to reflect any increased value of the gemstones
overtime, which provides valuable information to
[the] insurance company.
(Answer 7).
10. The Examiner concluded from (FF 9) that:
Therefore it would have been obvious to one of
ordinary [skill] in the art at the time of the
invention to implement Vanier's appraisal method
in Aggarwal's grading method for the intended use
of providing valuable information to [an] insurance
company in order to [provide] insurance coverage
for the gemstone. It also would have been obvious
to include different price estimate for each type of
retailers based on the jewelry market, which is also
based on the grading quality, in order to insure the
gemstone appropriately, based on the price paid by
buyer.
(Answer 7).
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11. Vanier discloses an adjustment feature which recognizes a
discount in an appraisal in that a:
[J]eweller goes through the necessary steps to
capture the appropriate final optical image and key
in the information with respect to the owner and
the characteristics of the gemstone. The jeweller
also enters his appraised value of the gemstone.
This combined information is then downloaded via
the modem to the national database and in
particular, the appraisal data indicated as 9 in FIG.
3. The computer associated with the appraisal data
9 can compare the characteristics of the gemstone
and the appraised value of the gemstone with
industry standards or averages maintained by the
database. The appraised value is normally
accepted, however, if it departs significantly from
industry standards or industry averages, the
appraisal can be flagged. The most common case
is that the appraised value may be somewhat high,
as the jewelry market typically has a relatively
high retail price from which there is a substantial
discount…. This database of appraised values and
characteristics of the gemstones can be used by the
insurance company to reflect any increased value
of the gemstones over time.
(col. 6, ll. 45-66).
12. The Examiner found that the claims fail the 35 U.S.C. § 112, first
paragraph, written description requirement because:
Claim 1 recites, “an input device adapted to
receive a gemstone laboratory grading certificate
via a remote communication device[”]
Applicant[‘s] specification teaches gemstone data
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received from a user, being typed by a user.
Therefore the newly added feature is considered
new matter. Applicant's specification also does not
teach the input device receiving gemstone
laboratory grading certificate. The specification
teaches the input device receiving data contained
on the various lab certificates associated with
gemstone or which provides specific information
about each gemstone. The specification does not
teach receiving a certificate, thus this added feature
is also a new matter.
(Answer 3).
13. The Specification discloses:
The remote communication system 20,
allows the processing device 14 to remotely
communicate with both the input device 12 and the
output device 16. In the preferred embodiment the
remote communication system 20 communicates
over a shared public network, like the internet. In
order for the devices to remotely communicate, the
elements are connected to the remote
communication system via communication access
modules 22 and 24.
(Specification 6:22-30).
14. The Specification describes gemstone data as being synonymous
with lab certificate information in that it states “the gemstone data received
102, corresponds to the data contained on the various lab certificates
typically associated with each gemstone. The gemstone data the system
preferably uses includes cut type, weight (carats), color, clarity, cut
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proportions, fluorescence, and the identity of the lab generating the
gemstone data. (Specification 9:8-13).
15. Vanier discloses using information with respect to the owner and
the characteristics of the gemstone to fingerprint the stone and create a
record of it. (Col. 5, ll. 14-23).
16. U.S. Patent Application Serial No. 09/455643, filed on
12/07/1999, now U.S. Patent No. 6,239,867 issued to Aggarwal claims
priority from Provisional Application 60/068033, filed on 12/18/1997.
17. Provisional Application 60/068033 discloses a “data processor
215 for processing and storage; database and analytical software specifically
designed for the gem grading system analyze these images and extract
pertinent information from them to produce a appraisal report.”
(Specification 9:12-15)

ANALYSIS
We affirm the rejections of claims 1-18 and 20-22 under 35 U.S.C. §
102 (e), 35 U.S.C. § 103(a) and 35 U.S.C. § 101.
A. 35 U.S.C. § 102(e) Arguments
Initially, we note that the Appellant argues claims 1, 2, 4-6, 8, 9, and
11-14 together as a group. Correspondingly, we select representative claim
1 to decide the appeal of these claims, with the remaining claims standing or
falling with claim 1.
Appellant argues that “Aggarwal addresses the problem of producing
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an objective measurement of a gemstone quality factor from the gemstone
itself, whereas the claimed method and system produces an objective price
estimate by adjusting existing subjective gemstone data.” (Appeal Br. 6).
We disagree with Appellant.
The Examiner found that Aggarwal discloses laboratory grading data
including cut type, weight, color, etc. (FF 5). Appellant does not contest
this finding with Aggarwal1. (Appeal Br. 10). Rather, Appellant’s challenge
is made to the context of the data being analyzed, namely that the data in
Aggarwal is objective data, whereas that in Appellant’s system is subjective
(Appeal Br. 5). However, a review of claim 1 reveals that on its face, this
claim recites objective or empirical data associated with the grading
certificate, namely, cut type, weight, color, clarity, and cut proportions,
wherein the data for cut proportions include an objective measurable value
for at least one of depth percentage, table percentage, girdle thickness,
crown height, crown angle, pavilion depth, pavilion angle, culet amount,
and type of finish. Moreover, the processing device of claim 1 makes no
mention of a subjective analysis as argued by Appellant, instead this claim
element only requires that the evaluation is “based at least upon the data
included on the gemstone laboratory grading certificate”, which as found
supra, is empirical data.

1 Appellant contests the Aggarwal provisional application only to the extent
of not disclosing computing a price estimate for use in an evaluation report
based upon data on the gemstone laboratory grading certificate. (Appeal
Br.10).

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Second, Appellant attempts to distinguish over the prior art based on
the content of the information which is being handled by the system. We
decline to accept this distinction because it is based on nonfunctional
descriptive material which cannot distinguish the invention from the prior
art. See In re Lowry, 32 F.3d 1579, 1582-83 (Fed. Cir. 1994). Therefore, we
are not persuaded by Appellant’s arguments on this point.
B. 35 U.S.C. § 103(a) Arguments
Appellant asserts error in the rejection of claim 17 which recites in
pertinent part, adjusting the indexed list price value based on a jeweler
pricing adjustment for generating said baseline price estimate.
Claim 17 thus requires a jeweler pricing adjustment. The Examiner
found that Vanier meets this limitation because the system of Vanier
discounts a jeweler appraisal if it is too high (FF 11). We agree with the
Examiner. We find that since Vanier discloses a database which has
adjusted index price values based on a jeweler’s somewhat high appraisal
derived from a jewelry market which has relatively high retail prices from
which there are substantial discounts, the required jeweler pricing
adjustment is met. Appellant’s arguments that claim 17 requires that the
adjustment be “based on the identity of the jeweler” (Appeal Br. 7) “fail
from the outset because . . . they are not based on limitations appearing in
the claims . . .,” and are not commensurate with the broader scope of claim 1
which merely recites a jeweler pricing adjustment for generating said
baseline price estimate. In re Self, 671 F.2d 1344, 1348 (CCPA 1982).
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Article claims 21 and 22 recite in pertinent part adjusting a price
estimate based on a laboratory identifier from a gemstone laboratory
grading certificate or a retail outlet identifier.
The Examiner found that Vanier teaches using information with
respect to the owner and the characteristics of the gemstone to fingerprint
the stone (FF 15), and then adjusts the price of the gemstone based on this
information. (FF 9,11).
Appellant however asserts:
At best, Vanier teaches consideration of the
accuracy of an estimate of a gemstone based on a
market rise in the value of a gemstone
characteristic or type. However, this is different
from teaching an adjustment and even if this
disclosure did teach an adjustment (which
Applicant submits that it does not) this adjustment
is unrelated to a particular retail outlet or
laboratory, and thus, still fails to anticipate
pending claims 21-22.
(Appeal Br. 8).
We agree with the Examiner.
We find that Vanier similarly adjusts in its database the price estimate,
e.g., the jeweler’s appraisal, using national pricing standards and market
values (FF 11) based on the record of the stone or its fingerprint. Thus,
insofar as the system is concerned, Vanier similarly conducts an additional
evaluation over that of the jeweler’s to adjust for a flagged higher than
normal appraisal.
Representative claim 3 recites in pertinent part said pricing estimate
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includes a separate price estimate for each of a plurality of different types of
retail outlets. Appellant argues that “Vanier also fails to teach using a
gemstone laboratory grading certificate.” (Appeal Br. 9). Insofar as
Appellant seeks a disclosure of a certificate in the prior art, we find, as our
analysis above of claim 1 concluded, that Aggarwal discloses laboratory
grading data including cut type, weight, color, etc. (FF 5). Such factors are
similar, if not identical, to the fundamental elements of the certificate
enumerated in claim 1, and thus this data collectively is read as a certificate
(FF 14).
C. Non-provisional Reference Arguments
Appellant asserts that Aggarwal is not a reference based on the
combined effects of two points: 1) that Aggarwal has been overcome by the
submission of the Malenkoff Declaration which allegedly swears behind the
effective filing date of May 28, 1998 of Aggarwal US 6,239,867; and 2) that
the provisional application 60/068033 on which Aggarwal US 6,239,86 is
based does not support the subject matter of the claims.
1. We are not persuaded by Appellant’s showing of facts in the
Malenkoff Declaration to be sufficient in character and weight as to establish
diligence from conception to reduction to practice prior to the effective date
of the Aggarwal reference. Rather, we find that the evidence presented in
the Exhibits appended to the Declaration, while it may be effective to
establish conception, nevertheless fails to assert any facts of due diligence
from the alleged time of conception date. Thus, it cannot support conception
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of the invention prior to the effective date of the reference coupled with due
diligence from a prior date to a subsequent reduction to practice or to the
filing of the application.
The only entry which can be found in the exhibit appended to the
Declaration prior to May 28, 1998 is one check entry #2212 which is for
$500.00, only a small fraction of the total amount which the ledger states
was ultimately paid to the developer (FF 2). The subsequent entries number
in excess of fifty payments to Mr. Finkelstein ending as late as January 14,
2000 (FF 3). While Appellant also submitted in the Affidavit a cover sheet
with letterhead “Ladas & Perry” which states that a first draft copy of an
application for an automated gemstone appraisal system and method for
producing an automated gemstone report is enclosed (FF 4), we find no
copy, redacted or otherwise, of such a draft application is provided with the
Declaration (FF 4). Moreover, there is no evidence of reasonable diligence
shown by establishing that the attorney worked reasonably hard on the
application in question during the continuous critical period. Bey v.
Kollonitsch, 806 F.2d 1024, 1027 (Fed. Cir. 1986).
2. Claim 1 recites a pricing estimate for use in an evaluation report,
based at least upon the data included on the gemstone laboratory grading
certificate. Appellant argues that:
While the Aggarwal provisional mentions the
phrase "monetary value" and "aesthetic value"
when discussing evaluation of gemstone qualities,
the Aggarwal provisional only describes
determining gemstone quality factors, such as
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color, clarity, cut shape, brilliance, etc. Moreover,
while these features may be related to the
monetary value of a gemstone, the Aggarwal
provisional fails to specifically disclose computing
a price estimate.
(Appeal Br. 10).
We are not persuaded by Appellant’s argument that because the
provisional application of Aggarwal only establishes monetary values based
on gemstone qualities, and Appellant’s claimed pricing estimate is not met.
This is because both terms represent value calibrated to currency based on
particular qualities of the involved gemstone. Second, Aggarwal’s
provisional application 60/068033 discloses a system for producing an
appraisal report. (FF 16, 17). We find that an appraisal inherently includes a
valuation of property which meets the claim requirement. Thus, with respect
to this claim element, we find that provisional application 60/068033 on
which Aggarwal US 6,239,867 is based, does support the subject matter of
the claims.
D. 35 U.S.C. 112, First Paragraph Rejection
The Examiner found that the Specification does not teach the input
device receiving the data via a remote communication device. (FF 12).
Appellant argues however that “Figure 2 and the corresponding specification
at page 6, lines 15 - page 7, line 27 support receiving a gemstone laboratory
grading certificate via a remote communication device.” (Appeal Br. 11).
We disagree with the Examiner. A review of the cited portions of the
Specification show that the remote communication system 20 allows the
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processing device 14 to remotely communicate with both the input device 12
and the output device 16 over a shared public network, like the internet (FF
13). We find that this disclosure conveys with reasonable clarity to those
skilled in the art that, as of the filing date sought, applicant was in
possession an input device as claimed, such as found with any Internet
compatible device.
The Examiner also found that the Specification does not teach
receiving a certificate (FF 12). We disagree with the Examiner. We find
that the term “certificate” as used in the claims serves merely as a collective
term defined within the claims as including cut type, weight, color, clarity,
and cut proportions wherein the data for cut proportions include an objective
measurable value for at least one of depth percentage, table percentage,
girdle thickness, crown height, crown angle, pavilion depth, pavilion angle,
culet amount, and type of finish. Since the Specification provides a basis for
these items and ties them to what is comprised collectively in certificate
information (FF 14), we therefore find error in the Examiner’s rejection of
the claims based 35 U.S.C. § 112, first paragraph.
E. 35 U.S.C. § 101 rejection
The Examiner rejected claims 15-18 and 20 under 35 U.S.C. § 101
because the claimed invention is directed to non-statutory subject matter.
The test to determine whether a claimed process recites patentable
subject matter under § 101 is whether: (1) it is tied to a particular machine
or apparatus, or (2) it transforms a particular article into a different state or
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thing. In re Bilski, 545 F.3d 943, 961-62 (Fed. Cir. 2008) (en banc).
Prong 1: Machine or apparatus test:
The only mention in claim 15 of a machine is found in the preamble
which recites in pertinent part, “A computerized method of producing a
gemstone evaluation report, without the presence of the actual gemstone
being required….” We find that while the word “computerized” is initially
recited in the preamble, it is not thereafter fully incorporated into the body of
the claim so as to breathe life and breath into it by setting forth the complete
combination. Corning Glass Works v. Sumitomo Elec. U.S.A., Inc., 868 F.2d
1251, 1257 (Fed. Cir. 1989). Field of use recitations are typically found in
the preamble of claims, and the weight given them largely depends on how
the recitation is subsequently used in the body of the claim. Pitney Bowes,
Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1305 (Fed. Cir. 1999). In other
words, “if the preamble merely state[s] a purpose or intended use and the
remainder of the claim completely defines the invention independent of the
preamble,” it does not constitute a limitation. Lipscomb’s Walker on
Patents, 3rd Edition, Vol. 3, § 11.11 at p. 361 (citing Marston v. J.C. Penney
Co., 353 F.2d 976, 986 (4th Cir. 1965)); see also Rowe v. Dror, 112 F.3d
473, 478 (Fed. Cir. 1997). Thus, claim 15 and those claims depending
therefrom fail the first prong of the Bilski test.
Prong 2: Transformation
Appellant argues that “the pending claims call for data that represents
physical and tangible objects (gemstones) and the raw data is transformed
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into a gemstone pricing estimate used on a gemstone evaluation report,” and
thus satisfies the transformation test. (Reply Br. 4). We disagree with
Appellant. In order for Appellant’s claims to pass muster with the
transformation test, it is necessary to show that the claims involve the
transformation of a physical object or substance, or electronic signal
representative of any physical object or substance. See Bilski, 545 F.3d at
964. For this to happen, the claims would have had to physically alter the
gemstone into a different state or thing, or a signal representing the
characteristics of the stone would need to be altered. Neither occurs here
because, as found supra, there is no system in which the signals can be
altered nor can value, the item being manipulated, be considered a physical
object-it is a concept.
Appellant also argues there is a significant post solution activity
enumerated in the claims. However the closest Appellant comes to
identifying such an activity is to assert that his data is gemstone specific and
is not drawn only to a field of use qualifier. (Reply Br. 4). This argument
fails to enumerate an action or activity, but rather focuses only on the
content of the data being manipulated.
We thus affirm the rejection of claims 15-18 and 20 under 35 U.S.C.
§ 101.
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CONCLUSIONS OF LAW
We conclude the Appellant has not shown that the Examiner erred in
rejecting claims 15-18 and 20 under 35 U.S.C. § 101 because the claimed
invention is directed to non-statutory subject matter.
We conclude the Appellant has shown that the Examiner erred in
rejecting claims 1-18 and 20-22 under 35 U.S.C. § 112, first paragraph, as
failing to comply with the written description requirement.
We conclude the Appellant has not shown that the Examiner erred in
rejecting claims 1-14 under 35 U.S.C. § 102(e) as being anticipated by
Aggarwal.
We conclude the Appellant has not shown that the Examiner erred in
rejecting claims 3, 10 and 17 under 35 U.S.C. § 103(a) as being unpatentable
over Aggarwal in view of Vanier.

We conclude the Appellant has not shown that the Examiner erred in
rejecting claim 20 under 35 U.S.C. § 103(a) as being unpatentable over
Aggarwal in view of Zale.
Appeal 2009-010063
Application 09/871,867

23
DECISION
The decision of the Examiner to reject claims 1-18 and 20-22 is

AFFIRMED

mls

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