Ex Parte O et al

Patent Trials and Appeals Board

Sep 27, 2013

09740201 - (D) (P.T.A.B. Sep. 27, 2013)

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
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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).

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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).
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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
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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
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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
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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
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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.

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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.

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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). See 37 C.F.R.
§ 1.136(a)(1)(iv).

AFFIRMED-IN-PART

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