Ex Parte Naelon et al

Patent Trial and Appeal Board

Jan 28, 2013

11427129 (P.T.A.B. Jan. 28, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte ASHLEY THOMAS NAELON and
KENNETH SCOTT WIGGINS
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Appeal 2010-003102
Application 11/427,129
Technology Center 2100
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Before DENISE M. POTHIER, JEFFREY S. SMITH, and
STANLEY M. WEINBERG, Administrative Patent Judges.

WEINBERG, Administrative Patent Judge.

DECISION ON APPEAL

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Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 1-25. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
Claims 1, 6, 9-14, 20, 21, and 23-25 stand rejected under 35 U.S.C.
§ 103(a) as obvious over Mikurak (US 2006/0178918 A1; published Aug.
10, 2006) in view of Tracy (US 2003/0050718 A1; published March 13,
2003) and further in view of Blom (US 2007/0230707 A1; published Oct. 4,
2007).1
Claims 2 and 8 stand rejected under 35 U.S.C. § 103(a) as obvious
over Mikurak, Tracy, and Blom and further in view of Berry (US
2005/0240446 A1; published Oct. 27, 2005).
Claims 3 and 7 stand rejected under 35 U.S.C. § 103(a) as obvious
over Mikurak, Tracy, and Blom and further in view of Willey (US
2006/0212386 A1; published Sept. 21, 2006).
Claims 4, 5, 15, 16, and 22 stand rejected under 35 U.S.C. § 103(a) as
obvious over Mikurak, Tracy, and Blom, and further in view of Reinhardt
(US 5,673,006; issued Sept. 30, 1997).
Claims 17 and 18 stand rejected under 35 U.S.C. § 103(a) as obvious
over Mikurak, Tracy, and Blom and further in view of Ben-Salha (US
2008/0029242 A1; published Feb. 7, 2008).
Claim 19 stands rejected under 35 U.S.C. § 103(a) as obvious over
Mikurak, Tracy, Blom, Reinhardt, and Ben-Salha.
Claim 25 also stands rejected under 35 U.S.C. §101 for being directed
to non-statutory subject matter.

1 Throughout this opinion, we refer (1) to the Appeal Brief filed June 9,
2006; and (2) the Examiner’s Answer mailed September 25, 2009.
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STATEMENT OF THE CASE
Appellants’ invention is a system and method for developing
standards and related procedures for an organization. The standards and
procedures are scored and compared to threshold scores. Each standard is
linked to the rule on which it is based and each procedure is linked to the
standard it supports. Spec. ¶ 0005.
Independent claim 1is illustrative with key disputed limitations
emphasized:
1. A standard and procedure rationalization system for
rationalizing a proposed standard and a proposed procedure, wherein
the standard relates to one or more actions required to be enforced by
an organization based on a rule applicable to the organization, the
system comprising:
a computer-readable medium having computer-readable
instructions embodied therein;
a processor configured to execute the computer-readable
instructions stored on the computer-readable medium, said computer-
readable instructions comprising:
a module for scoring the proposed standard;
a module for scoring the proposed procedure; and
a module linking the proposed standard to the rule
and linking the proposed procedure to the proposed
standard; and
a memory device operatively connected to the processor and
comprising a database configured for storing the at least one standard
and the at least one procedure such that the standard and procedure
are linked to one another.

THE OBVIOUSNESS REJECTION OVER
MIKURAK, TRACY, AND BLOM
The Examiner finds that Mikurak teaches every recited feature of
representative claim 1 except for a module for scoring the proposed
standard; a module for scoring the proposed procedure; a module linking the
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proposed standard to the rule and linking the proposed procedure to the
proposed standard; and a database configured for storing the at least one
standard and the at least one procedure such that the standard and procedure
are linked to one another. Ans. 5:6-11. The Examiner finds that the
secondary references teach the features that Mikurak does not teach and that
it would have been obvious to combine the references to obtain the claimed
device. Ans. 5-6.
Appellants contend that Mikurak does not disclose a proposed
standard that relates to one or more actions required to be enforced by an
organization (Br. 7:2-24); and that the other references do not teach the
features that are missing in Mikurak. Br. 7:27-9:16.

ISSUES
Under § 103, does the combination of Mikurak, Tracy, and Blom
teach all of the features recited in claim 1?

ANALYSIS
THE STANDARD RELATES TO ONE OR MORE ACTIONS
REQUIRED TO BE ENFORCED BY AN ORGANIZATION

Although Appellants agree that Mikurak teaches security standards
and that procedures should be developed and implemented, they contend that
Mikurak does not teach a standard that “relates to one or more actions
required to be enforced by an organization based on a rule applicable to the
organization,” with particular emphasis on the required implementation of
the standard. Br. 7:17-23.
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Because the referenced recitation is in claim 1’s preamble and does
not appear elsewhere in claim 1, the recitation concerning the standard
relating to one or more actions required to be enforced by an organization is
entitled to little weight because it recites an intended use. See In re Otto,
312 F.2d 937, 938 (CCPA 1963). In Otto, the claims were directed to a core
member for hair curlers and a process of making a core member for hair
curlers. The Court held that the intended use of hair curling was of no
significance to the structure and process of making. See also Catalina
Marketing Int’l, Inc. v. Coolsavings.com, Inc., 289 F.3d 801, 808 (Fed. Cir.
2002). In Catalina Marketing, the Court stated that “a preamble limits the
invention if it recites essential structure or steps” and that the preamble
limits claim scope when the preamble is essential to understand limitations
or terms in the claim body.
Here, the claim is directed to a standard and a system (including
modules, memory, and database) for rationalizing the standard. The
intended use of the standard (actions required to be enforced) is of no
significance to the claimed standard and system because the body of the
claim does not act on the actions required to be enforced, such that the
preambular limitation to the “actions” is essential to understanding the
recitations in the claim body. In addition, deletion of the disputed limitation
would not affect the claimed structure. We therefore conclude that the
disputed phrase merely recites an intended use and that Mikurak is capable
of having a standard that relates to an action required to be enforced by an
organization.
In any event, the Examiner finds that Mikurak ¶ 2583 teaches this
limitation. Ans. 19-20, Argument III. Appellants do not respond or rebut
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this finding. We find that the Examiner’s finding is reasonable and we agree
with the Examiner.
MODULE FOR SCORING THE PROPOSED STANDARD
The Examiner finds that Mikurak teaches standards, that Tracy
teaches scoring a proposed standard, and that it would have been obvious to
combine the Tracy teaching in the Mikurak system because it would allow
enhancement of fine tuning the system. (Ans. 5:12-13, 17-19, and Ans. 19-
20, Arguments II and IV). Appellants agree that Tracy teaches a predefined
standard, but contends that Tracy does not teach scoring the standard or
scoring the specific features as arranged and recited in the claim. Br. 8:1-5.
Appellants’ argument is not persuasive because one cannot show
nonobviousness by attacking references individually where the rejections are
based on combinations of references. See In re Keller, 642 F.2d 413, 426
(CCPA 1981); In re Merck & Co., Inc., 800 F.2d 1091, 1097 (Fed. Cir.
1986).
MODULE FOR SCORING THE PROPOSED PROCEDURE
The Examiner finds that the combination of Tracy and Blom teach
this limitation and that it would have been obvious to combine the Blom
teaching in the Mikurak system because it would allow for improvement of
the invention by incorporating proposed procedures. Ans. 6, 22-23,
Arguments VII and VIII. Appellants’ arguments (Br. 9:1-16) are not
persuasive because they have argued the references individually, rather than
arguing the combination relied upon by the Examiner. Keller, supra; Merck,
supra.

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A DATABASE CONFIGURED FOR STORING THE AT LEAST ONE
STANDARD AND THE AT LEAST ONE PROCEDURE SUCH THAT
THE STANDARD AND PROCEDURE ARE LINKED TO ONE
ANOTHER

The Examiner finds that the combination of Mikurak and Tracy teach
this limitation and that it would have been obvious to combine the Tracy
teaching in the Mikurak system because it would allow enhancement of fine
tuning the system. Ans. 5:12-19 and Ans. 20-22, Arguments V and VI.
Appellants contend that Mikurak paragraph 1184 does not teach linking a
proposed standard and a proposed procedure. Br. 8:17-25. The Examiner,
however, finds that this limitation is taught by paragraph 1184’s discussion
of matching. Ans. 22:1-2. Appellants do not respond to the Examiner’s
finding. In addition, Appellants argue the references individually, rather
than arguing the combination relied upon by the Examiner. Br. 8:8-10-13,
24-26. Keller, supra; Merck, supra. Consequently, Appellants’ arguments
are not persuasive.
We are therefore not persuaded that the Examiner erred in rejecting
(1) representative claim 1; (2) independent claims 9 and 25 for similar
reasons; and (3) claims 6, 10-14, 20, 21, 23, and 24 not separately argued
with particularity.
Accordingly, we will sustain the Examiner’s rejection of claims 1, 6,
9-14, 20, 21, and 23-25.
THE REMAINING ART REJECTIONS
Claims 2-5, 7, 8, 15-19, and 22
We will also sustain the rejections of claims 2-5, 7, 8, 15-19, and 22
which have been rejected as obvious over Mikurak, Tracy, Blom, and
various additional references because the references have been argued
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individually and the claims have not been argued separately with
particularity. Br. 9-11.
THE § 101 REJECTION OF INDEPENDENT CLAIM 25
The Examiner concludes that because claim 25 does not recite any
hardware components, claim 25 is software per se. Ans. 4. Alternatively,
the Examiner concludes that Appellants’ Specification states that
propagation discussed in paragraph 31 of the disclosure is not limited to a
computer medium. Ans. 19.
Appellants argue that claim 25 uses permissible means-plus-function
language to recite the structure of their apparatus and that their Specification
describes various structures for performing the functions recited in claim 25,
including hardware. Br. 6.
Independent claim 25 recites, in pertinent part, an apparatus
comprising means for scoring a proposed standard, means for mapping a
proposed procedure to the proposed standard, means for scoring the
proposed procedure, and means for linking the proposed standard to a rule
and linking the proposed procedure to the proposed standard. We find that
35 U.S.C. § 112, ¶ 6 has been invoked with respect to claim 25. See
Biomedino L.L.C. v. Waters Techs. Corp., 490 F.3d 946, 950 (Fed. Cir.
2007). As such, the means-plus-function limitations in claim 25 must be
construed 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).
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Claim 1 recites these same “means for” recitations as modules.
Appellants describe that the term, “module,” can correspond to a software
application. See Spec. ¶ 0028. Similarly, we find that these “means for”
limitations in claim 25 can broadly, but reasonably correspond to modules or
are software application. Notably, claim 25 recites an “apparatus” or some
structure that comprises the “means for” limitations. Yet, in light of the
disclosure, the breadth of the term, “apparatus” includes a computer usable
or readable storage medium including program instructions (i.e., the “means
for” limitations.”
For example, the Specification discloses that
a computer program which implements parts of the invention
through the use of a system like that illustrated in Fig. 1 can
take the form of a computer program . . . residing on a . . .
computer readable storage medium . . . The medium may also
be a stream of information being retrieved when the computer
program product is “downloaded” through the Internet. . . The
computer-usable or computer-readable medium may be, for
example but not limited to, an electronic, magnetic, optical,
electromagnetic, infrared, or semiconductor system, apparatus,
device, or propagation medium.

Spec. ¶ 0031. This paragraph of the Specification describes these
implementations in the alternative. Thus, the stream of information as well
as the electronic, magnetic, optical, electromagnetic, and infrared
propagation medium are all alternatives to computer hardware. The clear
import of this discussion is that the invention, including the broadly recited,
“apparatus,” can exist solely as signals, which are not patentable subject
matter under § 101. In re Nuijten, 500 F.3d 1346, 1357 (Fed. Cir. 2007).
Reading independent claim 25 in light of the Specification, the recited
“apparatus” encompasses a signal that performs the recited operations.
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Therefore, when read in light of the Specification, claim 25 includes both
statutory subject matter (means-plus-function limitations stored on a
diskette) and non-statutory subject matter (means-plus-function limitations
conveyed by a signal).
According to USPTO guidelines, such claims must be amended to
recite solely statutory subject matter. See Subject Matter Eligibility of
Computer Readable Media, 1351 Off. Gaz. Pat. Office 212 (Feb. 23, 2010);
see also Manual of Patent Examining Procedure (“MPEP”) §
2106(IV)(C)(2)(2)(a), Rev. 6, Sept. 2007 (“[A] claim 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.”)
For the foregoing reasons, independent claim 25 does not recite
statutory subject matter under 35 U.S.C. § 101.
Accordingly, we will sustain the Examiner’s § 101 rejection of
independent claim 25.

CONCLUSION
Under § 103, the Examiner did not err in rejecting claims 1-25 and the
Examiner did not err in also rejecting claim 25 under § 101.

DECISION
The Examiner’s decision rejecting claims 1-25 is affirmed.

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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). See 37 C.F.R.
§ 1.136(a)(1)(iv) (2010).

AFFIRMED

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