Ex Parte Moessner et al

Board of Patent Appeals and Interferences

Jun 25, 2008

11021591 (B.P.A.I. Jun. 25, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte RALPH MOESSNER and STEFAN THEIS
____________

Appeal 2008-1148
Application 11/021,591
Technology Center 2800
____________

Decided: June 25, 2008
____________

Before SCOTT R. BOALICK, JOHN A. JEFFERY, and MARC S. HOFF,
Administrative Patent Judges.

JEFFERY, Administrative Patent Judge.

DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134 from the Examiner’s
rejection of claims 1-8. We have jurisdiction under 35 U.S.C. § 6(b). We
affirm.

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STATEMENT OF THE CASE
Appellants invented a method and system for determining
characteristic parameters on the basis of values descriptive of a
predetermined process. The method (1) computes differences between pairs
of values in a time series; (2) determines the median value of these
computed differences; and (3) computes a trend parameter based on the
determined median value.1 Such a technique enables forecasting a process
on the basis of the series of values by correcting for outliers in the time
series. Claim 1 is illustrative:
1. A method comprising:

determining characteristic parameters on the basis of a series of m
values (H_1, H_2, ..., H_m) over time, the values being descriptive for a
predetermined process, the series having linear characteristics, the
determining including:

a) computing differences, denoted as Δ_i, between pairs of values
(H_i, H_i+p) of points (t_i, t_i+p) of the historical time series, the points
having a predetermined time distance to each other, denoted as p;

b) determining the median value, denoted as Δ_i_M, of the computed
differences Δ_i;

c) computing, on the basis of the determined median value Δ_i_M, a
trend parameter, denoted as T, T being defined as T = Δ_1_M/p.

1 See generally Spec. ¶¶ 0003-33.
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The Examiner relies on the following prior art references to show
unpatentability:
Datta US 5,748,781 May 5, 1998
Bob Fisher, Spatial Filters - Median Filter, Dept. of Artif. Intell., Univ. of
Edinburgh, United Kingdom, 1994, available at http://web.archive.org
(“Fisher”).

1. Claims 1-8 stand rejected under 35 U.S.C. § 101 as being directed to
nonstatutory subject matter.
2. Claims 1, 2, and 8 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Datta and Fisher.
Rather than repeat the arguments of Appellants or the Examiner, we
refer to the Briefs and the Answer for their respective details. In this
decision, we have considered only those arguments actually made by
Appellants. Arguments which Appellants could have made but did not make
in the Briefs have not been considered and are deemed to be waived. See 37
C.F.R. § 41.37(c)(1)(vii).

OPINION
The § 101 Rejection
We now consider the Examiner’s § 101 rejection of claims 1 through
8 -- all claims on appeal. Since Appellants separately argued the
patentability of independent claims 7 and 8 (App. Br. 12-13; Reply Br. 9),
we treat method claims 1-6 separately from claims 7 and 8.

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Claims 1-6
The Examiner takes the position that the claims as a whole recite an
abstract idea since the claims merely manipulate data via a mathematical
algorithm, namely by (1) computing differences; (2) determining median
values; and (3) finding a trend parameter. According to the Examiner, there
is no subsequent transformation outside the computer, nor are the claims
limited to a practical application.
Appellants contend that the recited method and system generates
useful, concrete, and tangible results, namely trend data and seasonal indices
data for a process (App. Br. 10). According to Appellants, both of these data
have real-world application to forecasting supply and demand for supply
chain management and similar business processes. By allowing prediction
of process development, Appellants contend, these forecasted values are
used in a tangible way to improve process performance (App. Br. 10-11;
Reply Br. 5-6).
Appellants also argue that the claimed invention does not cover every
substantial practical application of an abstract idea, but is limited to a
historical time series that describes a process. Moreover, Appellants
contend, the final results of the claimed invention do not cover every
practical use, but rather are limited to a trend parameter, seasonal indices, or
forecast values (App. Br. 11-12).
The dispositive issue before us, then, is whether Appellants have
shown that the Examiner erred in concluding that the claimed invention is
not directed to statutory subject matter under § 101. For the following
reasons, we find no such error has been shown.
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Under § 101, there are four categories of subject matter that are
eligible for patent protection: (1) processes; (2) machines; (3) manufactures;
and (4) compositions of matter. 35 U.S.C. § 101. While the scope of
patentable subject matter encompassed by § 101 is “extremely broad” and
intended to “include anything under the sun that is made by man,” it is by no
means unlimited. In re Comiskey, 499 F.3d 1365, 1375 (Fed. Cir. 2007)
(quoting Diamond v. Chakrabarty, 447 U.S. 303, 308 (1980)). For example,
laws of nature, abstract ideas, and natural phenomena are excluded from
patent protection. Diamond v. Diehr, 450 U.S. 175, 188 (1981).
It is the second exclusion noted above -- abstract ideas -- that is
relevant to the appeal before us. Thus, even though the claimed invention
may nominally recite subject matter that falls within the enumerated
categories under § 101, as Appellants indicate (Reply Br. 5), the claimed
invention still does not recite patentable subject matter if the claim as a
whole is nonetheless directed to an abstract idea.
As the U.S. Supreme Court has noted, “‘[a]n idea of itself is not
patentable[]’ …. ‘A principle, in the abstract, is a fundamental truth; an
original cause; a motive; these cannot be patented, as no one can claim in
either of them an exclusive right.’” Id. at 185 (citations omitted).
Additionally, our reviewing court recently articulated the following two
distinct aspects of abstract ideas:
First, when an abstract concept has no claimed
practical application, it is not patentable….
Second, the abstract concept may have a practical
application….In [the context of industrial
processes], the Supreme Court has held that a
claim reciting an algorithm or abstract idea can
state statutory subject matter only if, as employed
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in the process, it is embodied in, operates on,
transforms, or otherwise involves another class of
statutory subject matter, i.e., a machine,
manufacture, or composition of matter….Thus, a
claim that involves both a mental process and one
of the other categories of statutory subject matter
(i.e., a machine, manufacture, or composition) may
be patentable under § 101.

Comiskey, 499 F.3d at 1376-77 (emphasis added).

The court in Comiskey further noted:
[Section 101] does not allow patents to be issued
on particular business systems…that depend
entirely on the use of mental processes. In other
words, the patent statute does not allow patents on
particular systems that depend for their operation
on human intelligence alone….Thus, it is
established that the application of human
intelligence to the solution of practical problems is
not in and of itself patentable.

Id. at 1378-79 (emphasis added).

With these principles in mind, we turn to the claims on appeal before
us. Independent claim 1 is directed to a method of determining
characteristic parameters on the basis of a linear series of values over time,
the values descriptive for a predetermined process. This determination
includes (1) computing differences between pairs of points of the historical
time series, where the points have a predetermined time distance to each
other; (2) determining the median value of the computed differences; and (3)
computing a trend parameter on the basis of the determined median value.
Independent claim 3 recites commensurate limitations, but pertains to a
cyclic series and adds the computation of “seasonal indices.”
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Interpreting claims 1 and 3 as a whole,2 we find the processes recited
in these claims are not tied to another statutory class of subject matter (e.g., a
machine), nor do they transform the underlying subject matter to another
state or thing. Rather, the claimed processes merely compute “trend
parameters” based on the differences between points in a time series and the
median value of those differences. Also in claim 3, “seasonal indices” are
computed.
In our view, these computation methods are analogous to the
computation methods that the U.S. Supreme Court found to be unpatentable
in Gottschalk v. Benson, 409 U.S. 63 (1972) and Parker v. Flook, 437 U.S.
584 (1978). In Benson, the Court held that claims directed to a method for
converting binary-coded-decimal (BCD) numerals into pure binary numerals
for use with a general-purpose digital computer were nonstatutory under
§ 101. In reaching this conclusion, the Court found that the process claim
was “so abstract and sweeping as to cover both known and unknown uses of
the BCD to pure binary conversion.” Id. at 68. The Court further noted that
“[t]he mathematical formula involved here has no substantial practical
application except in connection with a digital computer, which means that
if the judgment below is affirmed, the patent would wholly pre-empt the
mathematical formula and in practical effect would be a patent on the
algorithm itself.” Id. at 71-72.
The Court in Flook held that a claimed method of updating the value
of an alarm limit on at least one process variable involved in a catalytic

2 See Diamond v. Diehr, 450 U.S. 175, 188 (1981) (“In determining the
eligibility of respondents' claimed process for patent protection under § 101,
their claims must be considered as a whole.”).
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conversion process was not statutory subject matter under § 101. Flook, 437
U.S. at 594-96. In reaching this conclusion, the Court in Flook noted that
the recited “alarm limit” was merely a number, and the method essentially
consisted of three steps: (1) measuring the present value of the process
variable; (2) using an algorithm to calculate an updated alarm-limit value;
and (3) adjusting the alarm limit to the updated value. Id. at 585.3 Notably,
the Court emphasized that while the claims in that case “cover[ed] a broad
range of potential uses of the method” (e.g., in the petrochemical and oil-
refining industries), the claims nonetheless did not cover every conceivable
application of the formula. Id. at 586.
Here, claims 1 and 3 effectively recite methods that compute
parameters and indices that, in our view, are so broad as to cover essentially
every substantial practical application of the abstract idea. These
computation methods effectively recite an abstract idea since they merely
involve mathematical manipulations via an algorithm as in Benson and
Flook. That a machine, such as a computer, is not even recited to implement
the computation method renders the claimed invention even more abstract
than the methods found to be nonstatutory in Benson and Flook.
Furthermore, the absence of a machine only reinforces our conclusion that
the method is nonstatutory as nothing precludes such recited computations
solely via human intelligence. See Comiskey, 499 F.3d at 1376-79.
Nevertheless, even if claims 1 and 3 did nominally recite a computer for
such computations, such “[n]ominal recitations of structure in an otherwise

3 The Court acknowledged that even though these computations could be
done by hand, the disclosure nonetheless indicated that the formula was
“primarily useful for computerized calculations producing automatic
adjustments in alarm settings.” Id. at 586.
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ineligible method fail to make the method a statutory process.” Ex parte
Langemyr, No. 2008-1495, at 20 (BPAI May 28, 2008) (Informative) (citing
Gottschalk v. Benson, 409 U.S. 63, 71-72 (1972)), available at
http://www.uspto.gov/web/offices/dcom/bpai/informative_opinions.html
(last visited June 12, 2008).
Additionally, as the Examiner indicates (Ans. 7), the mathematical
manipulations recited in the claimed invention cover a broad range of
applications. Indeed, Appellants’ Reply Brief actually reinforces this notion.
Specifically, Appellants ask why a method would suddenly become
patentable when applied to, for example, a manufacturing process, when a
claim that does not recite a manufacturing process does not (Reply Br. 8).
The short answer is pre-emption, a concept that becomes strikingly clear
when comparing the Flook and Benson cases with Diamond v. Diehr, 450
U.S. 175 (1981).
In Diehr, the claimed invention was directed to a process for curing
synthetic rubber. The Court held that a physical and chemical process for
molding precision synthetic rubber products was statutory subject matter
under § 101 because the claims involve a transformation of an article to a
different state or thing and “[i]ndustrial processes such as this are the types
which historically been eligible to received the protection of our patent
laws.” Id. at 184.
In contrast to the facts in Flook, the Court noted:
[R]espondents here do not seek to patent a
mathematical formula. Instead, they seek patent
protection for a process of curing synthetic rubber.
Their process admittedly employs a well-known
mathematical equation, but they do not seek to pre-
empt the use of that equation. Rather, they seek
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only to foreclose from others the use of that
equation in conjunction with all of the other steps
in their claimed process. These include installing
rubber in a press, closing the mold, constantly
determining the temperature of the mold,
constantly recalculating the appropriate cure time
through the use of the formula and a digital
computer, and automatically opening the press at
the proper time.

Id. at 187 (emphasis added).
Unlike the processes in Benson and Flook, the process in Diehr was
limited to a particular industrial process (i.e., a process for curing synthetic
rubber). Although this process employed a mathematical equation, the
claim nonetheless recited steps that were germane to that particular process
(i.e., installing rubber in the press, closing the mold, constantly determining
its temperature, constantly recalculating the appropriate cure time using the
formula, etc.). As such, the claimed invention in Diehr did not pre-empt the
use of the mathematical equation involved, but merely covered the use of the
equation in conjunction with the other recited steps of that particular rubber
curing process.
This distinction, in our view, cogently answers Appellants’ question
on page 8 of the Reply Brief regarding why a method suddenly becomes
patentable when applied to a manufacturing process as compared to one that
does not recite such a process. And it is this distinction that is critical in the
claims on appeal before us. Significantly, Appellants admit that the claims
are “applicable to any of a number of predetermined processes, including a
production process in a supply chain management system. However,
Appellants claim the new features of outlier correction, not the application
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of outlier correction to the fields of production process or supply chain
management” (Reply Br. 8-9; emphasis added). These sweeping statements
unequivocally asserting that the claimed invention is directed to the features
of outlier correction that are applicable to any of a number of predetermined
processes, in our view, is the very essence of pre-emption.
The fact that the recited computation method involves a series of
values over time does not change our conclusion. Limiting the method to
data points acquired over time still would pre-empt essentially every method
involving sequential data gathering steps.
We further note that claims 1 and 3 would fail even under the “useful,
concrete, and tangible result” test articulated by State St. Bank & Trust Co.
v. Signature Fin. Group, Inc., 149 F.3d 1368 (Fed. Cir. 1998) because,
among other things, the determined characteristics will merely be used at
some later time for forecasting purposes. As such, the characteristics
determined in claims 1 and 3 merely constitute an abstraction with no
practical, real-world application being claimed. Cf. Langemyr, at 27.
Furthermore, as the court in Comiskey noted, the inventions in State Street
and AT&T Corp. v. Excel Comm., Inc., 172 F.3d 1352 (Fed. Cir. 1999) were
patent-eligible “because they claimed practical applications and were tied to
specific machines.” Comiskey, 499 F.3d at 1377. In the claimed invention
before us on appeal, however, there are no such limitations.
For the foregoing reasons, Appellants have not persuaded us of error
in the Examiner’s rejection of independent claims 1 and 3. Therefore, we
will sustain the Examiner’s rejection of those claims, and dependent claims
2 and 4-6 which were not separately argued.

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Claim 7
Regarding independent claim 7, the Examiner contends that while the
claims are written in means-plus-function format, the corresponding
structure in the Specification can include an embodiment that is solely
software (i.e., a computer program per se) and is therefore nonstatutory
(Ans. 3, 4, 6-8).
Appellants argue that the corresponding structure in the Specification
includes “structural components that may be located inside a computer,
outside a computer, a combination thereof, or unrelated to a computer.”
This structure, Appellants contend, includes software tangibly embodied in a
machine-readable storage device (App. Br. 13; Reply Br. 9).
It is undisputed that claim 7 recites a system with limitations recited in
means-plus-function format. The issue before us, then, is whether
Appellants have shown that the Examiner erred in finding that the structure
in the Specification that corresponds to these means-plus-function
limitations is not limited to statutory subject matter under § 101. For the
following reasons, we find that no such error has been shown.
Means-plus-function claim language must be construed in accordance
with 35 U.S.C. § 112, ¶ 6 by “look[ing] to the specification and
interpret[ing] that language in light of the corresponding structure, material,
or acts described therein, and equivalents thereof, to the extent that the
specification provides such disclosure.” In re Donaldson Co., Inc., 16 F.3d
1189, 1193 (Fed. Cir. 1994) (en banc).
The Specification notes the following:
The present techniques can be implemented in
digital electronic circuitry, or in computer
hardware, firmware, software, or in combinations
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of them. Apparatus of the invention can be
implemented in a computer program product
tangibly embodied in a machine-readable storage
device for execution by a programmable
processor….The invention may be implemented in
one or several computer programs that are
executable in a programmable system, which
includes at least one programmable processor
coupled to receive data from, and transmit data to,
a storage system, at least one input device, and at
least one output device, respectively….A computer
may include one or more mass storage devices for
storing data….Storage devices suitable for tangibly
embodying computer program instructions and
data include all forms of non-volatile memory….

(Spec. ¶ 0055; emphasis added)

As this passage indicates, the invention can be implemented in a
number of alternative forms, (i.e., digital electronic circuitry, or in computer
hardware, firmware, software, or in combinations of them). Notably, the
passage unequivocally describes these implementations in the alternative.
Thus, the software implementation is an alternative with respect to the
combination of software and computer hardware or firmware. The clear
import of this discussion is that the invention can exist solely in software.
While the Specification does indicate that storage devices can tangibly
embody computer program instructions as Appellants indicate (Reply Br. 9),
this implementation is merely an alternative -- it does not preclude other
alternatives such as the software-only implementation.
As such, the breadth of the alternatives in Paragraph 0055 of the
Specification simply does not preclude a nonstatutory, software-only
embodiment. Reciting descriptive material per se (e.g., data structures and
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computer programs), however, is nonstatutory. See In re Warmerdam, 33
F.3d 1354, 1360-61 (Fed. Cir. 1994); see also MPEP § 2106.01 (noting that
functional descriptive material is nonstatutory when claimed as descriptive
material per se). Therefore, we agree with the Examiner that the structure in
the Specification that corresponds to these means-plus-function limitations is
not limited to statutory subject matter under § 101.4
For the foregoing reasons, Appellants have not persuaded us of error
in the Examiner’s rejection of independent claim 7. Therefore, we will
sustain the Examiner’s rejection of that claim.

Claim 8
Regarding independent claim 8, Appellants argue that the claim
recites functional descriptive material recorded on a machine-readable
medium -- subject matter that is statutory under the Interim Guidelines5
(App. Br. 13). The Examiner, however, notes that that the claim calls for a
“machine-accessible medium” -- not a “machine-readable medium” -- and
could therefore be drawn to a different class of medium. In any event, the
Examiner contends, the claim nonetheless effectively preempts all practical
applications of the mathematical algorithm (Ans. 8-9; emphasis added).

4 See MPEP § 2106(IV)(C)(2)(2)(a) (“Claims that can be read so broadly as
to include statutory and nonstatutory subject matter must be amended to
limit the claim to a practical application.”).
5 See Interim Guidelines for Examination of Patent Applications for Patent
Subject Matter Eligibility, U.S. Patent & Trademark Office, 1300 Off. Gaz.
142 (2005), available at
http://www.uspto.gov/web/offices/com/sol/og/2005/week47/patgupa.htm
(last visited June 18, 2008).
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The issue before us, then, is whether Appellants have shown that the
Examiner erred in finding a “machine-accessible medium” containing
instructions that, when executed, cause a machine to determine characteristic
parameters as claimed is nonstatutory under § 101. For the following
reasons, we find that no such error has been shown.
First, we agree with the Examiner that a “machine-accessible
medium” is not a “machine-readable medium” and could therefore be drawn
to a different class of medium. For example, a “machine-accessible
medium” could merely be, among other things, writable and not readable.
Simply put, so long as a machine can somehow access the medium – a
capability that goes well beyond the ability for a machine to read the
medium – the medium is “machine-accessible.”
The plain meaning of the terms “access” and “accessible” confirms
this point. The term “access” is defined, in pertinent part, as “the ability,
right, or permission to approach, enter, speak with, or use; admittance….”6
Furthermore, the term “accessible” is defined, in pertinent part, as “…easy
to approach, reach, enter, speak with, or use.”7 Based on these definitions, a
“machine-accessible medium” is therefore a medium that is easy for a
machine to use – a much broader concept than a medium that is readable. In
short, a usable (i.e., accessible) medium is not the same as a readable
medium. As such, we find Appellants’ argument that a machine-accessible
medium is equivalent to a machine-readable medium since no practical

6 Dictionary.com Unabridged (v 1.1), at
http://dictionary.reference.com/browse/access (last visited June 18, 2008).
7 Dictionary.com Unabridged (v 1.1), at
http://dictionary.reference.com/browse/accessible (last visited June 18,
2008).
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memory device exists that is accessible only by writing (Reply Br. 9) is
unavailing. We find that a machine-accessible medium need not be
readable, only usable.
Nevertheless, irrespective of whether a machine-accessible medium or
machine-readable medium were recited in claim 8, for reasons similar to
those we noted previously in connection with claims 1 and 3, claim 8 still
covers (i.e., pre-empts) every substantial practical application of the abstract
idea. That is, the claim is so broad that it is directed to the abstract idea
itself, rather than a practical implementation of the idea. See, e.g., Ex Parte
Johnson, No. 2007-3877, 2008 WL 2195264, at *12 (BPAI May 27, 2008)
(non-precedential) (holding claims 6-11 directed to “machine-accessible
medium” nonstatutory under § 101 as the claims pre-empted every
substantial practical application of an abstract idea); see also Ex parte
Langemyr, No. 2008-1495, at 28 (BPAI May 28, 2008) (Informative)
(“Simply placing instructions on a computer readable medium, wherein the
instructions are designed to perform mere manipulations of abstract ideas,
should not convert an otherwise nonstatutory method into patentable subject
matter.”). We therefore find claim 8 is likewise directed to nonstatutory
subject matter.
For the foregoing reasons, Appellants have not persuaded us of error
in the Examiner’s rejection of claim 8. Therefore, we will sustain the
Examiner’s rejection of that claim.
Since we find that no claim on appeal recites statutory subject matter
under § 101, our decision is therefore dispositive with respect to
patentability of all claims on appeal. Since these claims are “barred at the
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threshold by § 101[,]” see Diehr, 450 U.S. at 188, we need not reach the
question of whether claims 1, 2, and 8 would have been obvious under
§ 103. See also Comiskey, 499 F.3d at 1368 (declining to reach obviousness
rejection on appeal after concluding claims were nonstatutory under § 101);
In re Rice, 132 F.2d 140, 141 (CCPA 1942) (finding it unnecessary to reach
rejection based on prior art after concluding claims were directed to
nonstatutory subject matter); Ex parte Zhang, No. 2007-2568, 2008 WL
281182, at *4 (BPAI Feb. 1, 2008) (non-precedential) (declining to address
anticipation and obviousness rejections after finding claims were directed to
nonstatutory subject matter under § 101).

DECISION
We have sustained the Examiner's rejection under § 101 with respect
to all claims on appeal. Therefore, the Examiner’s decision rejecting claims
1-8 under § 101 is affirmed.
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

KIS

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