Ex Parte Roehrle et al

Board of Patent Appeals and Interferences

Jun 20, 2011

11193815 (B.P.A.I. Jun. 20, 2011)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte BURKHARD ROEHRLE and PIERRE HORVATH
____________________

Appeal 2009-011113
Application 11/193,815
Technology Center 2100
____________________

Before ALLEN R. MacDONALD, ROBERT E. NAPPI,
and MARC S. HOFF, Administrative Patent Judges.

MacDONALD, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2009-011113
Application 11/193,815

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STATEMENT OF CASE
Introduction
Appellants appeal under 35 U.S.C. § 134 from a final rejection of
claims 1-30. We have jurisdiction under 35 U.S.C. § 6(b).
Exemplary Claim
Exemplary claim 1 under appeal reads as follows:
1. A method for software release validation, comprising:
providing a plan of record comprising entity information for a
software application associated with a plurality of platforms, and planning
information for a plurality of releases of the software application,
providing a set of rules comprising at least a first object representing
an instance of an entity type, a second object, and an operator for expressing
a date dependency between the first object and the second object,
detecting an event,
validating the plan of record against the set of rules responsively to
the event.

Rejections on Appeal
The Examiner rejected claims 12-30 under 35 U.S.C. § 101 as being
directed to nonstatutory subject matter.
The Examiner rejected claims 1-30 under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Robin (US 2005/0114829 A1), Barnes
(US 6,950,802 B1), and Dromgold (US 2007/0150327 A1).
Appellants’ Contentions
1. Appellants contend that the Examiner erred in rejecting claims
12-22 under 35 U.S.C. § 101 because “[c]laims 12 and 17 (from
which claims 13-16 and 18-22 depend) are directed to a system
comprising computer apparatus. Apparatus is a machine, which is
a statutory category, 35 U.S.C. § 101.” (App. Br. 6).
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Application 11/193,815

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2. Appellants contend that the Examiner erred in rejecting claims
23-29 under 35 U.S.C. § 101 because “[c]laim 23 (from which
claims 24-29 depend) is directed to a computer-readable storage
medium. A storage medium is either a product (manufacture) or a
component of a machine, both of which are statutory categories.”
(App. Br. 8).
3. Appellants contend that the Examiner erred in rejecting claim 30
under 35 U.S.C. § 101 because “[c]laim 30 recites a system
comprising computer apparatus” and “claim 30 defines statutory
subject matter.” (App. Br. 10).
4. Appellants contend that the Examiner erred in rejecting the claims
under 35 U.S.C. § 103(a) because the Examiner has not presented
sufficient fact finding to show that the cited references, separately
or in combination, describe or render obvious every element of any
of the claims. For example, Appellants specifically contend that
“[t]he Examiner does not explain, and the Appellants cannot
discern, how any of the rules in Figs. 20, 22; and 24 comprises
objects representing the Printing Team and the Lead Team.” (App.
Br. 13-14).
Issues on Appeal
Did the Examiner err in rejecting claims 12-30 as being directed to
nonstatutory subject matter?
Did the Examiner err in rejecting claims 1-30 as being obvious
because the Examiner’s fact finding does not show that the cited references,
separately or in combination, describe or render obvious the argued
limitations?
Appeal 2009-011113
Application 11/193,815

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ANALYSIS
Appellants present numerous arguments as to why the Examiner has
erred. (App. Br. 6-20). As to both rejections, although we do not agree with
all of Appellants’ arguments, we agree with Appellants’ overall contention
that the Examiner has erred.
As to the rejections under § 101, although we do not agree with
Appellants’ arguments to the effect that an apparatus is automatically
statutory subject matter under 35 U.S.C. § 101, we do agree with
Appellants’ contention that the reasoning set forth by the Examiner does not
demonstrate that any of claims 12-30 are directed to nonstatutory subject
matter. We note the dissent infra, but find no such analysis by the
Examiner.
As to the rejections under § 103, although we do not agree with all of
Appellants’ arguments, we do agree with Appellants’ contention that the
reasoning set forth by the Examiner does not demonstrate that any of claims
1-30 are unpatentable. The rejection under § 103 is essentially a laundry list
of sections in the references that the Examiner alleges correspond to
limitations in the claims without providing a clear and complete explanation
as to why these sections render obvious the claimed invention.

CONCLUSIONS
(1) Appellants have established that the Examiner erred with respect
to the rejection of claims 12-30 under § 101.
(2) Appellants have established that the Examiner erred with respect
to the rejection of claims 1-30 under § 103(a).
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Application 11/193,815

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(3) On this record, claims 1-30 have not been shown to be
unpatentable.
DECISION1
The Examiner’s rejections of claims 1-30 are reversed.

REVERSED

1 We have decided the appeal before us. However, should there be further
prosecution of these claims, the Examiner’s attention is directed to recently
issued guidance from the Director and our reviewing courts.
Should there be further prosecution with respect to claims 1-30, the
Examiner’s attention is directed to Ariad Pharms., Inc. v. Eli Lilly & Co.,
598 F.3d 1336 (Fed. Cir. 2010) (en banc), and Supplementary Examination
Guidelines for Determining Compliance with 35 U.S.C. 112 and for
Treatment of Related Issues in Patent Applications, 76 Fed. Reg. 7162,
7170-71 (Feb. 9, 2011).
Should there be further prosecution with respect to claim 30, the
Examiner’s attention is directed to Aristocrat Techs. Austl. Pty Ltd. v. Int’l
Game Tech., 521 F.3d 1328 (Fed. Cir. 2008), and Supplementary
Examination Guidelines for Determining Compliance with 35 U.S.C. 112
and for Treatment of Related Issues in Patent Applications, 76 Fed. Reg. at
7167-68.
Should there be further prosecution with respect to claims 23-29, the
Examiner’s attention is directed to In re Nuijten, 500 F.3d 1346 (Fed. Cir.
2007), and Subject Matter Eligibility of Computer Readable Media, 1351
OFFICIAL GAZETTE U.S. PAT. & TRADEMARK OFF. 212 (Feb. 23, 2010).
Should there be further prosecution with respect to claims 1-12, the
Examiner’s attention is directed to Bilski v. Kappos, 130 S. Ct. 3218 (2010),
and Interim Guidance for Determining Subject Matter Eligibility for Process
Claims in View of Bilski v. Kappos, 75 Fed. Reg. 43922, 43922-28 (Jul. 27,
2010).
Appeal 2009-011113
Application 11/193,815

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HOFF, Administrative Patent Judge, concurring-in-part.

I would sustain the rejection of claims 23-29 under § 101 as being
directed to nonstatutory subject matter. Independent claim 23 recites merely
“[a] computer-readable storage medium containing a set of instructions for
software release validation.” The claim does not affirmatively require the
performance of any of the instructions recited. Nothing in claim 23 defines
any structural and functional interrelationships between the instructions (the
“data structure”) and other claimed aspects of the invention which permit the
data structure’s functionality to be realized. See In re Warmerdam, 33 F.3d
1354, 1361 (Fed. Cir. 1994).

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