Ex Parte O et alDownload PDFPatent Trial and Appeal BoardSep 27, 201309740201 (P.T.A.B. Sep. 27, 2013) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte CIAN E. O’MEARA, MICHAEL BROSNAN, PAUL KELLY, DEREK HYLAND, and DAMIAN KILLEEN ____________ Appeal 2012-005110 Application 09/740,201 Technology Center 3600 ____________ Before HUBERT C. LORIN, ANTON W. FETTING, and BIBHU R. MOHANTY, Administrative Patent Judges. LORIN, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Cian E. O’Meara, et al. (Appellants) seek our review under 35 U.S.C. § 134 (2002) of the final rejection of claims 1-23 and 35. We have jurisdiction under 35 U.S.C. § 6(b) (2002). Appeal 2012-005110 Application 09/740,201 2 SUMMARY OF DECISION We AFFIRM-IN-PART.1 THE INVENTION Claim 1, reproduced below, is illustrative of the subject matter on appeal. 1. A computer-implemented method of allocating a location-related order to one of a plurality of mobile agents, said method being carried out by an ordering server programmed to carry out the steps of the method, which comprise: a) maintaining a current order record identifying a first location and first time at which each agent is expected to become free to fulfill a new order; b) maintaining a prioritized listing of locations including both scheduled locations which an agent is currently due to visit and unscheduled locations which said agent is not currently due to visit, with locations in said listing being prioritized to rank both the scheduled and unscheduled locations for said agent according to availability of the agent to reach each location after said first time, said availability having been calculated for each location irrespective of whether or not said agent is currently due to visit a particular location in said listing; c) receiving said location-based order and recording the location and time at which said order is to be fulfilled; 1 Our decision will make reference to the Appellants’ Appeal Brief (“App. Br.,” filed Aug. 11, 2011) and Reply Brief (“Reply Br.,” filed Feb. 09, 2012), and the Examiner’s Answer (“Ans.,” mailed Dec. 9, 2011), as well as the prior decision in Appeal 2008-004382 (“Decision,” mailed Nov. 6, 2009). Appeal 2012-005110 Application 09/740,201 3 d) determining from said prioritized listing of locations a suitable agent to fulfill said order; and e) allocating said order to said suitable agent. THE REJECTIONS The following rejections are before us for review: 1. Claims 1-23 are rejected under 35 U.S.C. § 101 as being directed to non-statutory subject matter. 2. Claim 35 is rejected under 35 U.S.C. § 101 as being directed to non- statutory subject matter. ISSUE Has the Examiner presented a prima facie case that claims 1-23 recite patent-ineligible subject matter? FINDINGS OF FACT We rely on the Examiner’s factual findings stated in the Answer. Additional findings of fact may appear in the Analysis below. ANALYSIS The rejection of claims 1-23 under 35 U.S.C. § 101 as being directed to non- statutory subject matter. We last saw this application in Appeal 2008-004382. At that time we entered a new ground of rejection of certain method claims on appeal under 35 U.S.C. § 101 as being directed to non-statutory subject matter. We Appeal 2012-005110 Application 09/740,201 4 determined that the claimed process did not meet the “Bilski machine-or- transformation test” (In re Bilski, 545 F.3d 943, 961 (Fed. Cir. 2008) (en banc)), the prevailing test at that time for determining whether a claimed process was patent eligible under § 101. The test for determining whether a claimed process is patent eligible under § 101 has evolved since then but whether a claimed process meets the machine and/or transformation prong of that test continues to be a factor when making that determination. The method claims in Appeal 2008-004382 contained the phrase “computer-implemented.” With respect to representative claim 1, we stated: Claim 1 does not recite a particular machine per se. Rather, the claim recites the phrase “computer-implemented” in the preamble. This indicates to those of skill reading the claim that the steps in the claimed process are to be effected or carried out via the use of a computer. Whether an indication in a preamble of a process claim to the effecting or carrying out of subsequent process steps via a computer is sufficient to tie the process to a “particular” machine and thereby satisfy the machine prong of the Bilski machine-or-transformation test for a claimed process to pass §101 muster is an open legal question. But we find that, in this case, the recitation of the phrase “computer- implemented” in the preamble of the claim is insufficient to satisfy the test. Decision 13. The situation at present is different. Claim 1 presently on appeal has been amended to include the phrase “said method being carried out by an ordering server programmed to carry out the steps of the method.” The other independent claim 23 is similarly narrowed as being drawn to a “computer- implemented method of operating an ordering server for controlling location-based orders for a plurality of mobile agents.” The question is Appeal 2012-005110 Application 09/740,201 5 whether this additional recitation of an “ordering server” renders the claimed process patent eligible under § 101. The Examiner takes the position that the additional claim recitation of an “ordering server” remains insufficient to render the claimed process patent eligible under § 101. In reaching that position, the Examiner takes the view that said additional claim recitation of an “ordering server” “occurs in the preamble. A preamble is generally not accorded any patentable weight ... .” Ans. 5. The Examiner cites our prior decision in support. This view is overstated. Our prior decision did not hold that a preamble is generally not accorded any patentable weight. Nor could we have so stated. A preamble is of no significance unless it is not necessary to give life, meaning, and vitality to a claim. It is well settled that if the body of the claim sets out the complete invention, and the preamble is not necessary to give life, meaning and vitality to the claim, then the preamble is of no significance to claim construction because it cannot be said to constitute or explain a claim limitation. Schumer v. Lab. Computer Sys., Inc., 308 F.3d 1304, 1310 (Fed. Cir. 2002) (citations, bracket, and internal quotation marks omitted). We agree with the Appellants (App. Br. 8) on that point. On the question of whether the additional claim recitation of an “ordering server” is necessary to give life, meaning, and vitality to claims 1 and 23, we find that it does. As the Appellants point out (App. Br. 8), the claim 1 method must be "carried out by an ordering server programmed to carry out the steps of the method" and the method of claim 23 describes the Appeal 2012-005110 Application 09/740,201 6 steps “of operating” (emphasis added) an ordering server. An ordering server is a required element for practicing the claimed methods, notwithstanding that this limitation to the claimed method is recited in the preamble. In reaching the position that the recitation of an “ordering server” remains insufficient to render the claimed process patent eligible under §101, the Examiner also takes the view that said additional claim recitation of an “ordering server” is insufficient recitation of a machine or transformation, and/or wherein involvement of machine, or transformation with the steps is merely nominally, insignificantly, or tangentially related to the performance of the steps, e.g., data gathering, or merely recites a field in which the method is intended to be applied. Ans. 5. The difficulty with this view is that it fails to include an underlying claim construction analysis. In reaching our earlier decision, we gave the claims their broadest reasonable construction. See e.g., Decision 16. In this way we were able to determine that the original phrase “computer-enabled” amounted to a nominal recitation of structure. Similarly, it was incumbent on the Examiner, in the first instance, to make a determination that the “ordering server” was equally a nominal recitation of structure before reaching the conclusion that the claimed process failed to be tied to a particular apparatus as a factor in determining whether the claimed process was patent-eligible under §101. “[W]hether the ... patent is invalid for failure to claim statutory subject matter under § 101[] is a matter of both claim Appeal 2012-005110 Application 09/740,201 7 construction and statutory construction.” State St. Bank & Trust Co. v. Signature Fin. Group, 149 F.3d 1368, 1370 (Fed. Cir. 1998) (emphasis added). In construing claims, claims are given their broadest reasonable interpretation consistent with the specification and in light of the specification as it would be interpreted by one of ordinary skill in the art. In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). In that regard, the Specification provides disclosure about an “ordering server” that would be interpreted by one of ordinary skill in the art as having certain characteristics. See, e.g., p. 18, ll. 29-30. These characteristics would appear to make the claim recitation “ordering server” more than a nominal recitation. In giving the claims their broadest reasonable interpretation consistent with the specification, it would appear that the methods as claimed are tied to particular machines. We do not find that, as reasonably broadly construed, that the claimed involvement of the “ordering server” is merely nominally, insignificantly, or tangentially related to the performance of the steps, as the Examiner has found. Accordingly we are not persuaded that the additional claim recitation of an “ordering server” is insufficient recitation of a machine. We do not find the two views – that the “ordering server” is (a) insignificantly recited in the preamble and (b) nominally recited structure – persuasive in finding the additional claim recitation of an “ordering server” is insufficient to render the claimed processes patent eligible under § 101. Appeal 2012-005110 Application 09/740,201 8 There being no other grounds for our consideration, we find that the Examiner has not presented a prima facie case that claims 1-23 recite patent- ineligible subject matter. The rejection of claim 35 under 35 U.S.C. § 101 as being directed to non- statutory subject matter. We will summarily affirm the rejection. According to the Appellants: By amendment filed on December 9, 2010, Applicants sought to amend claim 35 by reciting that the computer program product comprises a "non-transitory computer-readable medium". This amendment was not entered but was simultaneously indicated to be regarded as sufficient to overcome the rejection of claim 35 (see Advisory Action dated January 20, 2011). App. Br. 15. Accordingly, the rejection is not in dispute. CONCLUSIONS The rejection of claims 1-23 under 35 U.S.C. § 101 as being directed to non-statutory subject matter is reversed. The rejection of claim 35 under 35 U.S.C. § 101 as being directed to non-statutory subject matter is affirmed. DECISION The decision of the Examiner to reject claims 1-23 and 35 is affirmed- in-part. Appeal 2012-005110 Application 09/740,201 9 No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED-IN-PART hh Copy with citationCopy as parenthetical citation