Ex Parte Sawyer

Board of Patent Appeals and Interferences

Feb 13, 2012

11264619 (B.P.A.I. Feb. 13, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte JON R. SAWYER
____________

Appeal 2009-012254
Application 11/264,619
Technology Center 2100
____________

Before ERIC S. FRAHM, GREGORY J. GONSALVES, and BRUCE R.
WINSOR, Administrative Patent Judges.

GONSALVES, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2009-012254
Application 11/264,619

2
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from the final rejection
of claims 1-25. (App. Br. 3.) We have jurisdiction under 35 U.S.C. § 6(b).
We affirm-in-part.
The Disclosed Invention
Exemplary claim 1 follows:
1. A computer readable medium having embodied thereon a
program, the program being executable by a computing device
for performing a method for providing an allowed input range
in a user interface window, the method comprising:
receiving a document transferred between a server and a
user interface, wherein the document comprises a set of data
objects and at least one rule for the allowed input range; and
creating the user interface window to correspond to a
selected one of the set of data objects and the at least one rule
for the allowed input range;
wherein the user interface window provides the allowed
input range for the selected one of the data objects,
wherein the allowed input range is determined by the
selected one of the data objects received from the document and
the at least one rule received from the document.
Exemplary claim 16 follows:
16. A method for providing an allowed input range in a user
interface, the method comprising:
Appeal 2009-012254
Application 11/264,619

3
receiving a document from a server at the user interface,
the document having a set of data objects, and at least one rule
for the allowed input range;
receiving a selected one of the data objects from the
document in a window creator;
obtaining the at least one rule in the document using the
window creator; and
creating a user interface window with the window
creator, wherein the user interface window provides the allowed
input range for input fields of the selected one of the data
objects based on attributes of the selected one of the data
objects and the at least one rule transmitted to the window
creator.

The Examiner rejected claims 1-15 under 35 U.S.C. § 101 as being
directed to non-statutory subject matter. (Ans. 3-4.)
The Examiner rejected claims 1-25 under 35 U.S.C. § 102(b) as being
anticipated by Kougiouris (U.S. Pat. Pub. 2004/0039993 A1). (Ans. 4-16.)

ISSUES
Appellant’s responses to the Examiner’s positions present the
following issues:
1. Does the “medium” recited in independent claim 1 encompass forms
such as propagation and transmission media that are directed to non-
statutory subject matter?
Appeal 2009-012254
Application 11/264,619

4
2. Did the Examiner properly establish that Kougiouris anticipates
claims 1-25?1

ANALYSIS
Issue 1 – The Non-Statutory Subject Matter Rejections of Claims 1-15
The Examiner rejected claims 1-15 because the claimed “medium”
encompasses forms such as propagation and transmission media that are
directed to non-statutory subject matter under 35 U.S.C. § 101. (Ans. 3-4.)
Our reviewing court has found that transitory, propagating signals are
not within any of the four statutory categories (process, machine,
manufacture, or composition of matter). Therefore, a claim directed to
computer instructions embodied in a signal is not statutory under 35 U.S.C.
§ 101. In re Nuijten, 500 F.3d 1346, 1357 (Fed. Cir. 2007). “A transitory,
propagating signal [however] . . . is not a ‘process, machine, manufacture, or
composition of matter.’ [These] four categories define the explicit scope
and reach of subject matter patentable under 35 U.S.C. § 101; thus, such a
signal cannot be patentable subject matter.” Id. Moreover, “[a] claim that
covers both statutory and non-statutory embodiments . . . embraces subject
matter that is not eligible for patent protection and therefore is directed to
non-statutory subject matter.” U.S. Patent & Trademark Office, Interim

1 The Examiner also objected to claims 1-15 for failing to provide proper
antecedent basis (Ans. 3) and Appellant addressed that objection. (App. Br.
8-10.) But that objection relates to a petitionable matter and not to an
appealable matter. See In re Schneider, 481 F.2d 1350, 1356-57 (CCPA
1973) and In re Mindick, 371 F.2d 892, 894 (CCPA 1967). Thus, the relief
sought by the Appellant would have been properly presented by a petition to
the Commissioner instead of by appeal to this Board. Accordingly, we will
not consider this issue.
Appeal 2009-012254
Application 11/264,619

5
Examination Instructions for Evaluating Subject Matter Eligibility Under 35
U.S.C. § 101, Aug. 2009, at 2.
Claim 1 recites a “computer-readable medium.” Claim 1 given its
broadest reasonable interpretation, does not preclude the “computer readable
medium” from being transitory. Accordingly, we construe claim 1 as
embracing a transitory propagating signal, and, therefore, directed to non-
statutory subject matter. Thus, we sustain the Examiner’s rejections of
claim 1 as well as the claims that depend therefrom (i.e., claims 2-15) under
35 U.S.C. § 101 as being directed to non-statutory subject matter.

Issue 2 – Anticipation Rejections of Claims 1-25
The Examiner rejected claims 1-25 under 35 U.S.C. § 102(b) as being
anticipated by Kougiouris. (Ans. 4-20.) Appellant argues that the Examiner
did not establish that the claims are anticipated because the Examiner relies
on two mutually exclusive embodiments to support his rejection: one
embodiment involving an application from a markup language GUI and
another embodiment involving a Virtual Basic Program. (App. Br. 12-14;
Reply Br. 2-4.) We agree. An Examiner may not pick and choose various
teachings from a cited reference in furthering an anticipation rejection.
In an anticipation rejection, “it is not enough that the prior art
reference . . . includes multiple, distinct teachings that [an ordinary] artisan
might somehow combine to achieve the claimed invention.” Net MoneyIN,
Inc. v. VeriSign, Inc., 545 F.3d 1359, 1371 (Fed. Cir. 2008). Rather, the
reference must “clearly and unequivocally disclose the claimed [invention]
or direct those skilled in the art to the [invention] without any need for
picking, choosing, and combining various disclosures not directly related to
Appeal 2009-012254
Application 11/264,619

6
each other by the teachings of the cited reference.” Id. (quoting In re Arkley,
455 F.2d 586, 587 (CCPA 1972)). Thus, while “[s]uch picking and
choosing may be entirely proper in the making of a 103, obviousness
rejection . . . it has no place in the making of a 102, anticipation
rejection.” Arkley, 455 F.2d at 587-88.
Because the Examiner improperly picked and chose teachings from
two different embodiments so support the anticipation rejections, we do not
sustain those rejections.

DECISION
We affirm the Examiner’s decision rejecting claims 1-15 as being
directed to non-statutory subject matter and reverse the Examiner’s decision
rejecting claims 1-25 as anticipated.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED-IN-PART

msc