Ex Parte Phenix

Board of Patent Appeals and Interferences

Jul 19, 2010

10667816 - (D) (B.P.A.I. Jul. 19, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
10/667,816 09/22/2003 John Phenix 14846-21 2173
7590 07/19/2010
Michael B. Johannesen, Esq.
Lowenstein Sandler, P.C.
65 Livingston Avenue
Roseland, NJ 07068
EXAMINER
RADTKE, MARK A
ART UNIT PAPER NUMBER
2165
MAIL DATE DELIVERY MODE
07/19/2010 PAPER
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte JOHN PHENIX
____________________

Appeal 2009-002724
Application 10/667,816
Technology Center 2100
____________________

Before JOHN A. JEFFERY, LEE E. BARRETT, and THU A. DANG,
Administrative Patent Judges.

DANG, Administrative Patent Judge.

DECISION ON APPEAL1

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.

Appeal 2009-002724
Application 10/667,816

I. STATEMENT OF THE CASE
Appellant appeals from the Examiner’s final rejection of claims 1, 3-
5, and 7-9 under 35 U.S.C. § 134(a) (2002). We have jurisdiction under
35 U.S.C. § 6(b) (2002).
We reverse.

A. INVENTION
According to Appellant, the invention relates to the field of object-
oriented software, and, more specifically, to a utility for differentiating
between two objects and storing the differences for display (Spec. 1, ll. 12-
14).

B. ILLUSTRATIVE CLAIM
Claim 1 is exemplary and is reproduced below:
1. A computer implemented method for comparing a
first object and a second object in an object-oriented operating
system comprising the steps of:

(a) determining whether the first object is equal to
the second object; and if said objects are not equal:

(b) obtaining one or more methods from said first
object and said second object;

(c) determining whether the one or more methods
from said first object are equal to the one or more methods from
said second object; and

(d) recursively performing steps (b) and (c) until
all of the methods for the first object and the second object have
been obtained;

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Application 10/667,816

(e) generating a document comprising a listing of
differences between the methods;

(f) transforming the document into a human-
readable form; and

(g) displaying the human-readable form to a user.

C. REJECTIONS
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Keller US 6,662,312 B1 Dec. 9, 2003
Mason US 6,826,716 B2 Nov. 30, 2004

Shirazi, “Recursion and Stacks,” Java Performance Tuning § 7.5
(O’Reilly Media, Inc. 2000), available at
http://proquest.safaribooksonline.com/0-596-00015-4 (“Java”).

Claims 1, 3-5, and 7-9 stand rejected under 35 U.S.C. § 101 as being
directed to non-statutory subject matter.
Claims 1, 3-5, and 7-9 stand rejected under 35 U.S.C. § 103(a) over
the teachings of Mason in view of Java and Keller.

II. ISSUES
1) Has the Examiner erred in finding that claims 1, 3-5, and 7-9 are
directed to non-statutory subject matter?
2) Has the Examiner erred in concluding that Mason in view of Java
and Keller would have taught or suggested “determining whether the first
object is equal to the second object” and “if said objects are not equal…
obtaining one or more methods from said first object and said second
object” as required by claim 1.
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Application 10/667,816

III. FINDINGS OF FACT
The following Findings of Fact (FF) are shown by a preponderance of
the evidence.
Mason
1. Mason discloses testing Enterprise Web Applications to verify their
correctness, reliability, availability, and security (col. 1, ll. 12-17).
2. The method includes finding 422 in a deployment descriptor for the
Enterprise JavaBean (EJB) module 404 one or more elements 412 having nested sub-elements 414
having values equal to the first 406 sub-element value
(col. 11, ll. 30-34; Fig. 4).

VI. ANALYSIS
35 U.S.C. § 101
Though the Examiner finds that “[t]he claims are rejected as falling
under the judicial exception of an abstract idea … not statutory within the
meaning of 35 U.S.C. 101” (Ans. 3), “an applicant may show that a process
claim satisfies § 101 either by showing that his claim is tied to a particular
machine, or by showing that his claim transforms an article” into a different
state or thing. See Gottschalk v. Benson, 409 U.S. 63, 70 (1972).
Claim 1 recites a “computer implemented method” to compare “a first
object and a second object in an object-oriented operating system.” We find
that comparing objects on a computer is a method that requires performance
on a computer. Thus, we conclude that claim 1 is “tied to” a machine, i.e., a
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Application 10/667,816

computer. Accordingly, we agree with Appellant that the computer-
implemented method of claim 1 satisfies 35 U.S.C. § 101.
Though claim 1 requires an algorithm of determining whether the
objects are equal, the claim also requires obtaining methods from the objects
to determine whether the methods are equal, generating a document listing
the differences between the methods, and then transforming the document
into human-readable form to be displayed. The claimed method, if allowed,
would not patent an abstract idea or pre-empt any other uses of the
mathematical formula, but rather give a limited right to exclude of the
claimed computer-implemented method to the Appellant.
For the foregoing reasons, we cannot sustain the rejection of claim 1
and claims 3-5 and 7-9 standing therewith under 35 U.S.C. § 101.
35 U.S.C. § 103(a)
Appellant contends that “Mason describes a system for testing various
parameters of Java Web applications to determine if the applications
succeed” (App. Br. 7), and thus Mason does not disclose “‘determining
whether the first object is equal to the second object; and if said objects are
not equal,’ or ‘obtaining one or more methods from said first object and said
second object’” (id.). Appellant further contends that the sections of Mason
cited by the Examiner “has nothing to do with testing the equality of
methods of two objects to be tested” (App. Br. 8).
Though the Examiner finds that “[b]oth the invention of Mason and
the claimed invention operate on the Java operating system” and that “both
inventions deal with the same problem (comparing two objects) and arrive at
the same solution” (Ans. 9-10), we disagree with the Examiner that Mason
discloses “determining whether the first object is equal to the second object”
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Application 10/667,816

and “if said objects are not equal . . . obtaining one or more methods from
said first object and said second object” as required by claim 1.
In particular, Mason discloses testing applications (FF 1), wherein a
sub-elements of EJB module is compared another sub-element value of a
quality of service (QOS) element (FF 2). Though we find that the sub-
element values may comprise methods of an object, and thus agree with the
Examiner that Mason at least suggests “determining whether the one or more
methods from said first object are equal to the one or more methods from
said second object” as required in claim 1, we agree with Appellant that
Mason does not disclose “‘determining whether the first object is equal to
the second object; and if said objects are not equal,’ or ‘obtaining one or
more methods from said first object and said second object’” (App. Br. 7).
That is, even if Mason’s sub-element values that are compared are the
methods of a first object and a second object as required by claim 1, such
first object and the second object of Mason were not determined to be equal
before the methods were obtained from the objects. We find that the
sections of Mason referenced by the Examiner are silent as to any
determination of whether the objects are equal in order to obtain the
methods, as required by claim 1.
Java and Keller do not cure the deficiencies of Mason. The Examiner
has not shown, and we do not find, that the combination of Mason, Java and
Keller teaches or would have reasonably suggested the argued limitations.
We, therefore, conclude the positions of the Examiner are untenable.
Because we agree with at least one of the Appellant’s contentions, we
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cannot sustain the obviousness rejection of claim 1 and claims 3-5 and 7-9
standing therewith. Accordingly, we cannot sustain the obviousness
rejection of claims 1, 3-5 and 7-9.

V. CONCLUSION
We conclude that the Appellant has shown that the Examiner erred in
determining the method recited in claims 1, 3-5, and 7-9 is not patent-
eligible subject matter under 35 U.S.C. § 101.
We also conclude that the Appellant has shown that the Examiner
erred in finding that the combination of Mason in view of Java and Keller
would have suggested “determining whether the first object is equal to the
second object” and “if said objects are not equal… obtaining one or more
methods from said first object and said second object” as required by claim
1.

VI. DECISION
We have not sustained the Examiner's rejection with respect to any
claim on appeal. Therefore, the Examiner’s decision rejecting claims 1, 3-5,
and 7-9 is reversed.

REVERSED

peb

MICHAEL B. JOHANNESEN, ESQ.
LOWENSTEIN SANDLER, P.C.
65 LIVINGSTON AVENUE
ROSELAND, NJ 07068
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