Ex Parte NGO et al

Patent Trial and Appeal Board

Oct 9, 2014

11844224 (P.T.A.B. Oct. 9, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte DUNG NGO, GRANT I. CAMPBELL, and BETH MCGREEVY1
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Appeal 2012-004899
Application 11/844,224
Technology Center 2100
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Before ERIC B. GRIMES, ULRIKE W. JENKS, and
TINA E. HULSE, Administrative Patent Judges.

HULSE, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 involving claims relating to
creating a trouble ticket pertaining to an information technology (IT)
incident. The Examiner rejected the claims at issue as lacking patentable
subject matter, as anticipated, and as obvious. We have jurisdiction under
35 U.S.C. § 6(b).
We affirm-in-part.

1 Appellants identify the Real Party in Interest as Hewlett-Packard
Development Company, LP. (Appeal Br. 2.)
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STATEMENT OF THE CASE
In many enterprises, an Information Technology (IT) organization is
charged with maintaining the operability of the IT assets of the organization.
(Spec. ¶ 5.) When an IT asset malfunctions, or some other incident occurs,
IT personnel can be alerted about the incident through the generation of
“trouble tickets.” (Id. ¶ 6.) The trouble ticket typically includes a worklog
that permits entry of information in diary (i.e., free-flow) form. (Id.)
Typical free-flow worklogs, however, can become lengthy and difficult to
read. (Id. ¶ 7.) Accordingly, the Specification states that the invention
provides a manner “for creation of a trouble ticket having a running worklog
that is configured in a manner to increase its readability and usability.” (Id.
¶ 11.)
Claims 1–20 are on appeal. (Appeal Br. 4.)
Claim 1 is illustrative and is reproduced below:
1. Apparatus for generating a ticket related to an IT,
Information Technology, system incident, said apparatus
comprising:
a work log display generator configured to generate a
displayable worklog in which information related to the
IT system incident is includable, the worklog forming
part of the ticket; and
an anchor link generator configured to generate at least a
first anchor link associated with a corresponding at least
first portion of the information related to the IT system
incident that is includable in the displayable worklog
generated by said worklog display generator, the first
anchor link forming a first table of content entry
associate with the corresponding at least first portion of
the information.
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The claims stand rejected as follows:
A. Claims 1–15 and 20 under 35 U.S.C. § 101 (Ans. 5–6);
B. Claims 1–14, 16–18, and 20 under 35 U.S.C. § 102(b)
over Jones (Ans. 6–9);2
C. Claims 15 and 19 under 35 U.S.C. § 103(a) over Jones
and Fish (Ans. 9–10).3

DISCUSSION
A. Rejection Under 35 U.S.C. § 101
The Examiner rejected claims 1–15 and 20 as being directed to
nonstatutory subject matter.4 The Examiner concluded that the claims do
not fall within a statutory category under 35 U.S.C. § 101. Appellants
respond, arguing that claims 1 and 20 both recite hardware devices (i.e., a
machine) and therefore constitute patentable subject matter. (Appeal Br.
12–13.)
Although the U.S. Supreme Court has since issued guidance regarding
§ 101 in, for example, Mayo Collaborative Services v. Prometheus
Laboratories, Inc., 132 S. Ct. 1289, 1293 (2012) and Alice Corp. Pty. Ltd. v.
CLS Bank Int’l, 134 S. Ct. 2347, 2355 (2014), we need not address any

2 Jones et al., US 6,687,335 B1, issued Feb. 3, 2004.
3 Fish, US 2007/0088625 A1, published Apr. 19, 2007.
4 We note the Examiner did not reject claims 16–19. Should there be further
prosecution of this application, the Examiner may wish to review these
claims for compliance under 35 U.S.C. § 101 in light of the recently issued
preliminary examination instructions on patent eligible subject matter. See
“Preliminary Examination Instructions in view of the Supreme Court
Decision in Alice Corporation Pty. Ltd. v. CLS Bank International, et al.,”
Memorandum to the Examining Corps, June 25, 2014.
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purported changes in the law to affirm the Examiner’s decision. We are
persuaded that the Examiner did not err in finding that claims 1–15 and 20
encompass patent ineligible subject matter under § 101 and are therefore
unpatentable.
Subject to certain exceptions, an inventor may obtain a patent for “any
new and useful process, machine, manufacture, or composition of matter, or
any new and useful improvement thereof.” See 35 U.S.C. § 101. As the
Examiner notes, the “apparatus” comprised of a “work log display
generator” and an “anchor link generator” in claim 1, and the “user interface
apparatus” comprised of a “work log display generator” and a “content table
generator” in claim 20 are not machines or manufacture. (Ans. 5–6.)
Rather, the Examiner states that the limitations “appear to be software.”
(Ans. 10.)
We agree with the Examiner. Nothing in these claim limitations
suggests that the “generator” limitations necessarily “exist in some physical
or tangible form,” as required for each of the statutory categories except
process claims. See Digitech Image Techs., LLC v. Elecs. for Imaging, Inc.,
758 F.3d 1344, 1348–49 (Fed. Cir. 2014) (defining a machine, manufacture,
and composition of matter under § 101) (citation omitted).
Appellants argue that the “user interface apparatus” limitation in
claim 20 “implies physical devices and machines.” (Appeal Br. 11.)
Similarly, Appellants argue that the “apparatus” limitation in claim 1 “is
meant to include hardware.” (Id. at 13.) Appellants also rely on the
Specification for support, arguing that the Specification states that the
“apparatus” of the claims requires hardware. (Id. at 12–13.)
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We agree with Appellants that certain embodiments described in the
Specification suggest that the “apparatus” and “user interface apparatus” can
include hardware. But the Specification also states that “apparatus 18 is
functionally represented, implementable in any desired manner, including
algorithms executable by processing circuitry.” (Spec. ¶ 32) (emphasis
added.) Thus, the Specification makes clear that the claimed “apparatus” of
claim 1 may be software (i.e., an “algorithm executable by processing
circuitry”). Moreover, the Specification teaches that the “apparatus” of
claim 1 includes the claimed “user interface apparatus” of claim 20. (See
Fig. 1, showing user interface 20 within apparatus 18.)
“A claim that covers both statutory and non-statutory embodiments
(under the broadest reasonable interpretation of the claim . . . ) embraces
subject matter that is not eligible for patent protection and therefore is
directed to non-statutory subject matter.” MPEP § 2106(I) (8th ed., rev.
2012); cf. In re Lintner, 458 F.2d 1013, 1015 (CCPA 1972) (citation
omitted) (“Claims which are broad enough to read on obvious subject matter
are unpatentable even though they also read on nonobvious subject
matter.”). Because the scope of claims 1 and 20 encompasses software not
tied to any hardware or a nontransitory computer readable medium, we
conclude that the claims are directed to nonstatutory subject matter.
Accordingly, we affirm the Examiner’s rejection of claims 1 and 20 under
§ 101.
Because Appellants did not argue separately the patentability of
claims 2–15, we affirm the Examiner’s rejection of these claims under § 101
for the same reasons. 37 C.F.R. § 41.37(c)(1)(vii).

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B. Rejection Under 35 U.S.C. § 102(b) over Jones
The Examiner rejected claims 1–14, 16–18, and 20 as anticipated by
Jones. (Ans. 6–9.) Jones relates to a user interface to facilitate telephone
circuit maintenance and testing. (Jones, 1:12–13.) More specifically, Jones
relates to a user interface that “integrates disparate maintenance and testing
applications and systems into a single common control interface.” (Id. at
1:13–16.)
a. Claims 1–14 and 16–18
The Examiner states that Jones teaches a ticket linked to a work log,
and that Jones discloses an operating system that links logical data objects.
(Ans. 6–7.) Appellants assert that Jones does not teach or suggest “‘at least
a first anchor link associated with a corresponding at least first portion of the
information related to the IT system incident’ in which ‘the first anchor link
form[s] a first table of content entry associate with the corresponding at least
first portion of the information.’” (Appeal Br. 14.) We agree with
Appellants.
As the Examiner notes, claim 1 requires that the anchor link: (1) is
associated with a portion of information related to the IT system incident;
and (2) forms a table of content entry associated with the information. (Ans.
11.) The Examiner then states that Jones’s Line Record Display identifier is
associated with information related to an IT system incident, and that
Jones’s OSSOI window is a list of time-sequenced activities. (Id., citing
Jones, 10:46–49, 11:5–10.) Accordingly, the Examiner concludes “that the
OSSOI window is comparable to the table of contents claimed; and that the
Jones’ Line Record Display identifier is comparable to the link anchor.” (Id.
at 12.)
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The Examiner’s conclusion, however, is not consistent with the claim
language. Claim 1 requires an anchor link that is associated with
information related to the IT system incident and that forms a first table of
content entry. Thus, under the Examiner’s rationale, if the Line Record
Display identifier discloses the anchor link that is associated with the IT
system incident, then the Line Record Display identifier must also form the
table of content entry. The Examiner has not shown this, and instead cites
the OSSOI window as disclosing the table of content entry. Thus, as
Appellants note, the Examiner “concedes, that to access this information, if
available at all, [Jones] requires the user to access multiple sources from
different windows.” (Reply Br. 8.)
As our reviewing court’s predecessor stated, for anticipation, the prior
art reference “must clearly and unequivocally disclose the claimed
compound or direct those skilled in the art to the compound without any
need for picking, choosing, and combining various disclosures not directly
related to each other by the teachings of the cited reference.” In re Arkley,
455 F.2d 586, 587 (CCPA 1972); see also Net MoneyIN, Inc. v. VeriSign,
Inc., 545 F.3d 1359, 1371 (Fed. Cir. 2008) (holding that “unless a reference
discloses within the four corners of the document not only all of the
limitations claimed but also all of the limitations arranged or combined in
the same way as recited in the claim, it cannot be said to prove prior
invention of the thing claimed, and, thus, cannot anticipate under 35 U.S.C.
§ 102”). Because the Examiner has failed to show that Jones teaches each
limitation of claim 1—as arranged in claim 1—we reverse the Examiner’s
rejection of claim 1 and its dependent claims 2–15 under § 102(b).
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Independent claim 16 is a method claim with the same “first anchor
link” limitation as claim 1. Thus, for the same reasons as claim 1, we
reverse the Examiner’s rejection of claim 16 and its dependent claims 17–19
under § 102(b).
b. Claim 20
Claim 20 recites a user interface apparatus for facilitating generation
of a ticket worklog comprising a worklog generator and “a content table
generator configured to generate a table of contents that identifies successive
parts of the work log formed of the log-entry information, each entry of the
table of contents linkable to a corresponding part of the work log.”
The Examiner rejected claim 20 as anticipated by Jones “using the
same rationale” as claim 1. (Ans. 9.) Appellants assert that Jones does not
teach the “content table generator” limitation of claim 20. Appellants
contend that Jones teaches that “either the ticket or the worklog, individually
and separately, may be accessed without teaching that a table of contents is
linked to a corresponding part of the work log.” (Appeal Br. 20.)
We are persuaded by Appellants’ argument. As Appellants note,
Jones teaches that from the “WFA/C Screens By Ticket” window, a user can
select the “WFA/C Work log (OSSLOG)” (Jones, 16:33–47), which “shows
a detailed account of activities on an order or trouble report” (id. at 17:20–
23). Nothing in this disclosure, however, teaches or suggests that the
OSSLOG constitutes a table of contents, as required by claim 20. That is,
the OSSLOG does not “identif[y] successive parts of the work log formed of
the log-entry information,” as required by the claim. Nor do entries in the
OSSLOG appear to be “linkable to a [different] corresponding part of the
work log.”
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We, therefore, find that the Examiner has not established that Jones
teaches the “content table generator” limitation of claim 20 and reverse the
rejection of claim 20 under § 102(b).

C. Rejection Under 35 U.S.C. § 103(a) over Jones and Fish
The Examiner rejected claims 15 and 19 as unpatentable over Jones
and Fish. (Ans. 9–10.) Claims 15 and 19 depend from claims 1 and 16,
respectively, and further recite a spell-checker or spell-checking function.
Because Jones does not explicitly teach spell checking, the Examiner only
relied on Fish as disclosing this feature. (Id.)
Because the Examiner has not shown that Fish cures the deficiencies
of Jones explained above, we conclude that the Examiner has failed to
satisfy the prima facie burden of establishing claims 15 and 19 are
unpatentable as obvious over Jones and Fish, for the reasons stated above.

CONCLUSION
We affirm the Examiner’s rejection of claims 1–15 and 20 under
35 U.S.C. § 101 for lack of patent eligible subject matter.
We reverse the Examiner’s rejection of claims 1–14, 16–18, and 20
under 35 U.S.C. § 102(b) as anticipated by Jones.
We reverse the Examiner’s rejection of claims 15 and 19 under
35 U.S.C. § 103(2) as obvious over Jones and Fish.
SUMMARY
The decision of the Examiner rejecting claims 1–20 is affirmed-in-
part.
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TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).

AFFIRMED-IN-PART

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