Ex Parte Schimpf et al

Patent Trial and Appeal Board

Jan 16, 2013

11431380 (P.T.A.B. Jan. 16, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte BRIAN C. SCHIMPF, EDITH H. STERN,
ROBERT C. WEIR, and BARRY E. WILLNER
1

____________________

Appeal 2011-005139
Application 11/431,380
Technology Center 3600
____________________
Before, ANTON W. FETTING, BIBHU R. MOHANTY, and
KEVIN F. TURNER, Administrative Patent Judges.

TURNER, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF CASE
2

Appellants appeal under 35 U.S.C. § 134 from a rejection of claims 1-
6, 8-19, 21-32, and 34-39. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.

THE INVENTION

1
IBM Corporation is the real party in interest.
2
Our decision will make reference to the Appellants‟ Appeal Brief (“App.
Br.,” filed August 10, 2010) and Reply Brief (“Reply Br.,” filed January 7,
2011), and the Examiner‟s Answer (“Ans.,” mailed November 8, 2010).
Appeal 2011-005139
Application 11/431,380

2
Appellants‟ disclosure relates to a method and system for inspecting
indicators of events that are derived from event messages that are generated
by transaction entities. (Spec. ¶ [0001].)
Claim 1, reproduced below, is illustrative of the claimed subject
matter:
1. A method for inspecting at least one indicator of an event,
comprising:
enabling a token to be received by a transaction entity, said token
corresponding to an account of a user of an aggregating entity, wherein said
token is configured such that said aggregating entity can utilize said token to
uniquely identify said account;
communicating to said transaction entity, at least one type of event of
interest, wherein occurrences of events of interest detected by said
transaction entity are reported by said transaction entity to said aggregating
entity;
obtaining at least one indicator from said account of said aggregating
entity, said at least one indicator adapted to be created by said aggregating
entity based upon at least one event message received from said transaction
entity, wherein each indicator contains sufficient information to allow said
user to at least identify that a corresponding event of interest has occurred
and each indicator only includes text that does not violate a predetermined
security and does not disclose the identity of either said user or said
transaction entity that communicated the event message; and
inspecting said at least one indicator;
wherein:
said event message comprises said token, which is adapted to be used
by said aggregating entity to identify said account; and
said event message corresponds to an occurrence of an event of at
least one type of event of interest to be reported by said transaction entity to
said aggregating entity.
(App. Br., Claims Appendix 20.)
Appeal 2011-005139
Application 11/431,380

3
REJECTIONS
The prior art references relied upon by the Examiner in rejecting the
claims are:
Ballinger 2006/0015932 A1 Jan. 19, 2006
Taylor 2007/0135099 A1 Jun. 14, 2007

Appellants respond to the following rejections:
Claims 1-6, 8-19, and 21-26 rejected under 35 U.S.C. § 101 because the
claimed subject matter is directed to non-statutory subject matter.
3

Claims 1-6, 8-19, 21-32, and 34-39 rejected under 35 U.S.C. § 112,
second paragraph, as being indefinite.
4

Claims 1-6, 8-19, 21-32, and 34-39 rejected under 35 U.S.C. § 103(a) as
unpatentable over Taylor and Ballinger.

ISSUES
Did the Examiner err in rejecting claims 1-6, 8-19, and 21-26 as
directed to non-statutory subject matter under 35 U.S.C. § 101?
Did the Examiner err in interpreting the “indicator” of independent
claims 1, 14, and 27 to be non-functional descriptive material, and as such
err in rejecting claims 1-6, 8-19, 21-32, and 34-39 under 35 U.S.C. § 103(a)
as unpatentable over Taylor and Ballinger based on this interpretation?

3
Initially, the Examiner rejected claims 27-32 and 34-39 under 35 U.S.C.
§ 101 as being directed to non-statutory subject matter, however, the
rejection of these additional claims was withdrawn by the Examiner in the
Examiner‟s Answer. (See Ans. 5.)
4
We note that the final rejection did not identify any specific rejections of
the claims under 35 U.S.C. § 112.
Appeal 2011-005139
Application 11/431,380

4
FINDING OF FACT
Taylor is directed to a technique for instant message history display
which includes combining message histories for multiple different
messaging services. (¶ [0006].)

ANALYSIS
Claims 1-6, 8-19, and 21-26 stand rejected under 35 U.S.C. § 101 as having
subject matter directed to non-statutory subject matter.
Claims 1-6 and 8-13
The Examiner asserts claims 1-6 and 8-13 are directed to non-
statutory subject matter. (Ans. 8.) Specifically, the Examiner finds
independent method claim 1 fails to recite at least one significant step
performed by, or tied to a particular machine and additionally fails to
transform the underlying subject matter to a different state or thing. (Ans. 8-
9.)
In response, Appellants do not argue that claim 1 is tied to a particular
machine, but instead assert that claim 1 transforms a particular article into a
different state or thing. (App. Br. 13; Reply Br. 5.) In particular, Appellants
contend in the claim that “physical tangible events are transformed into
event messages that did not exist prior to the event occurring and this
message is then transmitted,” satisfies the second prong of the machine-or-
transformation test. We cannot agree with Appellants.
The Supreme Court clarified in Bilski that while the machine-or-
transformation test “is not the sole test for deciding whether an invention is a
patent-eligible „process' under § 101,” it remains a “useful and important
Appeal 2011-005139
Application 11/431,380

5
clue or investigative tool.” Bilski v. Kappos, 130 S. Ct. 3218, 3221 (2010).
However, the only factors presently being considered in front of us are the
two machine-or-transformation factors, in which we find both weigh against
the patent eligibility of independent claim 1.
Accordingly, we are not persuaded by Appellants‟ argument that
claim 1 transforms a physical object or thing. While we agree with
Appellants that claim 1 may “transform” events into event messages that did
not exist prior to the event occurring, we cannot agree with Appellants that
“events,” as presently claimed, are “articles” that represent a physical object
or substance. Instead, we find that the steps of independent claim 1 do little
more than change one type of information into another type of information.
Mere “manipulation of basic mathematical constructs [i.e.,] the paradigmatic
'abstract idea',” has not been deemed a transformation. Cybersource v.
Retail Decisions, 654 F.3d 1366, 1372 n.2, (Fed. Cir. 2011)(quoting In re
Warmerdam, 33 F.3d 1354, 1355, 1360 (Fed. Cir. 1994).
Therefore, we sustain the Examiner‟s rejection of claims 1-6 and 8-13
under 35 U.S.C. § 101 as directed to non-statutory subject matter.

Claims 14-19 and 21-26
The Examiner also rejected independent claim 14, and its dependent
claims, under 35 U.S.C. § 101 as encompassing software per se. (Ans. 10.)
In response, Appellants assert that claim 14 pertains to a physical system or
apparatus not drawn merely to software embodiments. (App. Br. 13-14;
Reply Br. 5-6.)
Appeal 2011-005139
Application 11/431,380

6
We are not persuaded by Appellants‟ argument and agree with the
Examiner that the “module to enable,” “module to communicate,” “module
to obtain,” and “module to inspect,” recited by system claim 14, are not
structure or hardware necessary to the performance of their respective
functions, but rather software components, under the broadest reasonable
interpretation commensurate with the Specification. (See Spec. at ¶ [0006].)
While these “modules” may be implemented on computer hardware,
Appellants‟ Specification describes that the “modules” may take the form of
software, and there is no other recitation provided by the claim which would
instantiate any of the instructions contained within these “modules.” (Id.)
“Abstract software code is an idea without physical embodiment.”
Microsoft Corp. v. AT&T Corp., 550 U.S. 437, 449 (2007).
Accordingly, Appellants have failed to persuade us that independent
claim 14, and its dependent claims 15-19 and 21-26, are not merely software
per se, under the broadest reasonable interpretation in light of the
Specification. As such, we sustain the Examiner‟s rejection of claims 14-19,
and 21-26 under 35 U.S.C. §101 as being directed to non-statutory subject
matter.

Claims 1-6, 8-19, 21-32, and 34-39 rejected under 35 U.S.C. § 112, second
paragraph, as being indefinite.
As an initial matter, we do not find the Examiner‟s Answer to contain
any grounds of rejection directed to the second paragraph of 35 U.S.C.
§ 112. While the Examiner implies that the term “sufficient,” is a relative
term which renders independent claims 1, 14, and 27 indefinite (Ans. 20-21),
Appeal 2011-005139
Application 11/431,380

7
the Examiner fails to make a proper rejection to that effect. In fact, the only
discussion of indefiniteness is found in the Response to Arguments section
of the Examiner‟s Answer. (See Ans. 17-21.) Therefore, in the absence of
such a formal rejection, we make no decision with respect to the Examiner‟s
discussion of indefiniteness.
However, to the extent the Examiner has raised this issue, we do not
agree with the Examiner that the term “sufficient” is a relative term, such
that it renders independent claims 1, 14, and 27 indefinite. To the contrary,
we find that the use of “sufficient” reasonably apprises one of ordinary skill
in the art of its scope based on the language of the independent claims. To
that effect, we find Examiner‟s questions go to the scope of the claims,
rather than to the definiteness of their claim scope. Breadth of a claim is not
to be equated with indefiniteness. In re Miller, 441 F.2d 689 (CCPA 1971);
See also Metabolite Labs., Inc. v. Lab. Corp. of Am. Holdings, 370 F.3d
1354, 1366, (Fed. Cir. 2004) (internal citations omitted) (“[t]he requirement
to „distinctly‟ claim means that the claim must have a meaning discernible to
one of ordinary skill in the art when construed according to correct
principles. Only when a claim remains insolubly ambiguous without a
discernible meaning after all reasonable attempts at construction must a
court declare it indefinite”).

Appeal 2011-005139
Application 11/431,380

8
Claims 1-6, 8-19, 21-32, and 34-39 rejected under 35 U.S.C. § 103(a) as
unpatentable over Taylor and Ballinger.
Independent claims 1, 14, and 27
Appellants argue inter alia that the combination of Taylor and
Ballinger fails to teach or suggest:
obtaining at least one indicator from said account of said
aggregating entity, said at least one indicator adapted to
be created by said aggregating entity based upon at least
one event message received from said transaction entity,
wherein each indicator contains sufficient information to
allow said user to at least identify that a corresponding
event of interest has occurred and each indicator only
includes text that does not violate a predetermined
security and does not disclose the identity of either said
user or said transaction entity that communicated the
event message . . . .
(App. Br. 15; Reply Br. 10.)
To address this limitation, the Examiner relies on the instant
messaging service taught by Taylor. (Ans. 23-24; See also FF.) In doing so,
the Examiner interprets the “indicator” of claims 1, 14, and 27 to be non-
functional descriptive material, and as such, gives no weight to the
additional recitation of claims 1, 14, and 27 which recite “wherein each
indicator contains sufficient information to allow said user to at least identify
that a corresponding event of interest has occurred and each indicator only
includes text that does not violate a predetermined security and does not
disclose the identity of either said user or said transaction entity that
communicated the event message.” (Ans. 23.)
In response, Appellants contend that the Examiner erred in asserting
that the “indicator” recited by independent claims 1, 14, and 27 is directed to
Appeal 2011-005139
Application 11/431,380

9
non-functional descriptive material. (App. Br. 15-16.) Specifically,
Appellants argue that “the indicator obtained from the aggregating entity
must be structured such that information within the indicator clearly informs
a user about the event‟s occurrence but does not reveal the identity of the
transaction entity or the identity of the user nor does it violate a
predetermined security,” and thus, is directed to functional language which
must be given patentable weight. (Reply Br. 8-11.)
We are persuaded by Appellants‟ argument and agree with Appellants
that the “indicator,” as recited by independent claims 1, 14, and 27, is
structured such that the indicator contains “sufficient information” to “at
least identify that a corresponding event of interest has occurred,” “only
includes text that does not violate a predetermined security,” and “not
disclose the identity of either said user or said transaction entity that
communicated the event message.” (See App. Br. 16; Reply Br. 11.) In
making this determination, we find that the independent claims require an
“indicator [to] contain[ ] sufficient information,” and this “sufficient
information” is functionally interrelated to the structure of the indicator, to
an extent that the structure of the indicator depends on the limitations “at
least identify[ing] that a corresponding event of interest has occurred,” “only
includ[ing] text that does not violate a predetermined security,” and “not
disclos[ing] the identity of either said user or said transaction entity that
communicated the event message.” Thus, we find a structural and functional
relationship exists between how the “indicator” of claims 1, 14, and 27 is
created by the aggregating entity, to the extent that the indicator is structured
Appeal 2011-005139
Application 11/431,380

10
to include “sufficient information” altered by these additional limitations in
order to achieve the utility of the invention.
Accordingly, we find the Examiner erred in failing to give patentable
weight to the “indicator” of independent claims 1, 14, and 27, to the extent
discussed above, and as such, and as the Examiner failed to show how all of
the elements of those claims were taught or suggested by the cited art, we
cannot sustain the Examiner‟s rejection of claims 1-6, 8-19, 21-32, and 34-
39 rejected under 35 U.S.C. § 103(a) as unpatentable over Taylor and
Ballinger.

CONCLUSIONS
We conclude that the Examiner did not err in rejecting claims 1-6, 8-
19, and 21-26 as directed to non-statutory subject matter under 35 U.S.C.
§ 101.
We conclude that the Examiner erred in interpreting the “indicator” of
independent claims 1, 14, and 27 to be non-functional descriptive material,
and as such, erred in rejecting claims 1-6, 8-19, 21-32, and 34-39 under 35
U.S.C. § 103(a) as unpatentable over Taylor and Ballinger.

DECISION
We affirm the Examiner‟s rejection of claims 1-6, 8-19, and 21-26.
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).

Appeal 2011-005139
Application 11/431,380

11
AFFIRMED-IN-PART

alw