Ex Parte Matichuk

Patent Trial and Appeal Board

Dec 11, 2012

10132172 (P.T.A.B. Dec. 11, 2012)

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.
10/132,172 04/26/2002 Bruce Matichuk 062A.0003.U1(US) 1144
29683 7590 12/11/2012
HARRINGTON & SMITH
4 RESEARCH DRIVE, Suite 202
SHELTON, CT 06484-6212
EXAMINER
NGUYEN, TAN D
ART UNIT PAPER NUMBER
3689
MAIL DATE DELIVERY MODE
12/11/2012 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 PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte BRUCE MATICHUK
____________________

Appeal 2011-005776
Application 10/132,172
Technology Center 3600
____________________

Before ANTON W. FETTING, MEREDITH C. PETRAVICK, and
NINA L. MEDLOCK, Administrative Patent Judges.

MEDLOCK, Administrative Patent Judge.

DECISION ON APPEAL
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STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 1-6, 8, and 10-21. We have jurisdiction under 35 U.S.C.
§ 6(b).

STATEMENT OF THE DECISION
We AFFIRM-IN-PART.1

BACKGROUND
Appellant’s invention relates to a system and method for
automatically creating a process model having a graphical representation
(Spec. 1, ll. 12-14).
Claim 1, reproduced below, is representative of the subject matter on
appeal:
1. A system comprising:
a planner configured to generate automatically a plurality
of plans, each of the plans comprising at least one initial
condition and at least one goal, each of the plans further
comprising at least one path describing how to achieve the at
least one goal when starting from the at least one initial
condition, wherein each of the at least one initial conditions and
each of the at least one goals includes a business rule
expression, wherein a first one of the plans comprises a first
one of the initial conditions, wherein a second one of the plans
comprises the first initial condition, wherein the first plan
comprises a first one of the goals, wherein the second plan
comprises the first goal, wherein the first plan between the first
initial condition and the first goal comprises a first one of the

1 Our decision will make reference to the Appellant’s Appeal Brief (“Br.,”
filed September 7, 2010) and the Examiner’s Answer (“Ans.,” mailed
November 24, 2010).
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paths, and wherein the second plan comprises a second different
one of the paths between the first initial condition and the first
goal;
a graphics engine configured to receive the plans from
the planner; to convert the plans into a process model; and to
generate a graphical representation of the process model; and
a data storage device configured to store data generated
by at least one of the planner and the graphics engine.

THE REJECTIONS
The following rejections are before us for review:
Claims 8, 10-16, 20, and 21 stand rejected under 35 U.S.C. § 101 as
being directed to non-statutory subject matter.
Claims 1-6, 8, and 10-21 stand rejected under 35 U.S.C. § 102(e) as
anticipated by, or in the alternative, under 35 U.S.C. § 103(a) as obvious
over Feyereisen (US 6,289,277 B1, iss. Sep. 11, 2001).
Claims 2, 3, 5, 11, and 12 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Feyereisen in view of Park (US 2003/0167249 A1,
pub. Sep. 4, 2003).

ANALYSIS
Non-Statutory Subject Matter
Independent claims 8, 16, and 20 and dependent claims 10-15 and 21
Appellant contends that the Examiner erred in rejecting independent
claims 8, 16, and 20 and their respective dependent claims under 35 U.S.C.
§ 101 because the claims satisfy the machine-or-transformation test. More
particularly, Appellant contends that the phrase “drawing the graphical
representation of the process model with the graphical editor” in claim 8 ties
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the claimed method to a particular machine, and that a machine also is
inherent in the recitation in claim 16 of “drawing the graphical
representation of the process model on a display” and the recitation in claim
20 of “generating a graphical representation of the process model” (Br. 10-
13). The Examiner maintains that the claim language does not include the
required tie, and that the method claims can be carried out manually, e.g., by
drawing the graphical representation on a sheet of paper or a board (Ans. 5-
7). We agree with the Examiner.
Each of independent claims 8, 16, and 20 recites “obtaining planning
data from a planning system,” “using the planning data to create a graphical
representation of a process model,” and “drawing [or generating] the
graphical representation of the process model.” Claim 8 recites that the
graphical representation of the process model is drawn “with the graphical
editor.” Claim 16 and dependent claim 21 recite that the graphical
representation is drawn “on a display.” However, none of these steps refers
to a specific machine by reciting structural limitations to any apparatus. Nor
do the claims recite any specific operations that would cause a machine to be
the mechanism to perform these steps.
The Specification explicitly states that a graphical editor, as recited in
claim 8, may be “known, commercially available software” (Spec. 15, ll. 6-
8). And we agree with the Examiner that a display, as recited in claim 16,
need not be a machine but can be any device or tool that can be used for
displaying an image, e.g., a board, sheet of paper, etc. (Ans. 16). We also
agree with the Examiner that a machine is not required to create node data,
which is recited in dependent claim 10 (Ans. 16).
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Under the broadest reasonable interpretation, independent claims 8,
16, and 20 and dependent claims 10-15 and 21 read on a mental process that
can be performed in the human mind, or by a human using a pen and paper.
As such, the claims are directed to non-statutory subject matter. See
CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1372 (Fed. Cir.
2011) (holding a method for verifying the validity of a credit card
transaction over the Internet to be nonstatutory as an abstract idea capable of
being performed in the human mind or by a human using a pen and paper);
In re Comiskey, 554 F.3d 967, 979 (Fed. Cir. 2009) (“[M]ental processes or
processes of human thinking standing alone are not patentable even if they
have practical application.”).
For the foregoing reasons, we will sustain the Examiner’s rejection of
claims 8, 10-16, 20, and 21 under 35 U.S.C. § 101.

Anticipation/Obviousness
Independent claim 1 and dependent claims 2-6
Appellant argues that the Examiner erred in rejecting claim 1 under
35 U.S.C. § 103 because Feyereisen fails to disclose or suggest that “each of
the at least one initial conditions and each of the at least one goals includes a
business rule expression” (Br. 15-22). The Examiner maintains that the
rejection is proper and cites Feyereisen at column 2, lines 40-45 as
disclosing this feature (Ans. 11 and 17).
Feyereisen is directed to a system for producing aircraft flight plans,
taking into account weather and other factors that may influence route
planning, e.g., traffic congestion, closure of runways, etc., see Feyereisen,
col. 1, ll. 57-67, and describes at column 2, lines 40-45, on which the
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Examiner relies, that flight plans are optimized to minimize “a cost function
that includes fuel, flight length, and/or other factors in the presence of
hazards or other constraints.”
Although claims should be given their broadest reasonable
interpretation during examination, claims must be interpreted as one of
ordinary skill in the art would in light of the Specification. See In re
Cortright, 165 F.3d 1353, 1358 (Fed. Cir. 1999) (“Although the PTO must
give claims their broadest reasonable interpretation, this interpretation must
be consistent with the one that those skilled in the art would reach.”); In re
Sneed, 710 F.2d 1544, 1548 (Fed. Cir. 1983) (“It is axiomatic that, in
proceedings before the PTO, claims in an application are to be given their
broadest reasonable interpretation consistent with the specification and that
claim language should be read in light of the specification as it would be
interpreted by one of ordinary skill in the art.”).
Here, Appellant’s Specification describes that “[w]hen building
process models with business rules, the rules are used to specify the action
that will be taken in response to every possible event that can occur within a
system” (Spec. 10, ll. 3-6). The Specification further explains:
Each task within a process may be given inputs in the
form of [a] business rule expression. The business rule
expression may be a first-order expression, such as a Boolean
logic statement where the model state variables are either true
or false. The Boolean logic statement may collect or refer to a
single state variable or sets of state variables. Alternatively, the
business rule expression may be a simpler requirement, such as
a listing of variables. Likewise, the goal or result of a task is
some type of business rule expression describing required or
possible results from the execution of the task.
(Spec. 11, l. 23 – 12, l. 5). See also, e.g., Spec. 16, ll. 16-29, and fig. 7.

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In our view, one of ordinary skill in the art would understand from the
Specification that a business rule is decisional logic (implementing the
policies and practices of a business organization) that determines and
controls the process path, i.e., the action to be taken, at each step in the
process that includes a business rule expression. We agree with Appellant
that one of ordinary skill, on reading the Specification, would not consider
“plans to minimize a cost function that includes fuel, flight length, and/or
other factors in the presence of hazards or other constraints,” as disclosed in
Feyereisen to be a business rule expression, as that term is used in the
Specification, that relates either to the initial condition in Feyereisen, i.e., the
departure location of the aircraft, or the goal, i.e., the destination location
(Br. 21). Instead, the cost function, at best, relates to considerations to be
taken into account along the flight path, i.e., between the departure location
and the arrival location, that may affect the route taken between these two
points (Br. 17).
The initial condition in Feyereisen is the location of departure, which
is a single location. Similarly, the goal in Feyereisen is a single arrival
location. Feyereisen does not disclose that the departure location or the
arrival location includes a business rule expression. In other words,
Feyereisen does not disclose any decisional logic that would affect, i.e.,
change, either the departure location or the arrival location. Instead,
Feyereisen only describes that the route taken between these two points may
vary in order to minimize costs based on the presence of hazards or other
constraints.
In view of the foregoing, we will not sustain the Examiner’s rejection
of independent claim 1 under 35 U.S.C. § 102(e), or in the alternative, under
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35 U.S.C. § 103(a). We also will not sustain the Examiner’s rejection of
dependent claims 2-6.

Independent claims 8, 16, 17, 18, 19, and 20 and dependent claims 10-15
and 21
Independent claims 8, 16, 17, 18, 19, and 20 include language
substantially identical to claim 1. Therefore, we will not sustain the
Examiner’s rejection of claims 8, 16, 17, 18, 19, and 20 under 35 U.S.C.
§ 102(e), or in the alternative, under 35 U.S.C. § 103(a) for the same reasons
as set forth above with respect to claim 1. We also will not sustain the
Examiner’s rejection of dependent claims 10-15 and 21.

Dependent claims 2, 3, 5, 11, and 12
Dependent claims 2, 3, 5, 11, and 12 depend ultimately from one of
independent claims 1 and 8. The Examiner has not established on this
record that Park cures the deficiencies of Feyereisen as set forth above.
Therefore, we will not sustain the Examiner’s rejection of claims 2, 3, 5, 11,
and 12 under 35 U.S.C. § 103(a) for the same reasons as set forth above with
respect to claims 1 and 8.

DECISION
The Examiner’s rejection of claims 8, 10-16, 20, and 21 under
35 U.S.C. § 101 is affirmed.
The Examiner’s rejection of claims 1-6, 8 and 10-21 under 35 U.S.C.
§ 102(e), or in the alternative, under 35 U.S.C. § 103(a) is reversed.
The Examiner’s rejection of claims 2, 3, 5, 11, and 12 under 35 U.S.C.
§ 103(a) is reversed.
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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).

AFFIRMED-IN-PART

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