Ex Parte Steinberg et al

Patent Trial and Appeal Board

Sep 3, 2015

10977194 (P.T.A.B. Sep. 3, 2015)

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.
10/977,194 10/29/2004 Joel S. Steinberg JOSZ 200002US01 8971
27885 7590 09/04/2015
FAY SHARPE LLP
1228 Euclid Avenue, 5th Floor
The Halle Building
Cleveland, OH 44115
EXAMINER
CARLOS, ALVIN LEABRES
ART UNIT PAPER NUMBER
3715
MAIL DATE DELIVERY MODE
09/04/2015 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 PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte JOEL S. STEINBERG and HAROLD LARSON
____________________

Appeal 2013-000519
Application 10/977,194
Technology Center 3700
____________________

Before MICHAEL L. HOELTER, LYNNE H. BROWNE, and
MICHELLE R. OSINSKI, Administrative Patent Judges.

OSINSKI, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Joel S. Steinberg and Harold Larson (Appellants) appeal under 35
U.S.C. § 134 from the Examiner’s final decision rejecting claims 1–3 and 5–
24. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
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THE CLAIMED SUBJECT MATTER
Claims 1, 12, and 20 are the independent claims on appeal. Claim 1,
reproduced below, is illustrative of the claimed subject matter on appeal.

1. A method of teaching mathematical operations comprising:
forming a vertical line to produce an image on a fixed
medium;
positioning a plurality of points along said vertical line,
each point representing a numerical value equal to a successive
positive or negative whole number power of two (2);
identifying a desired numerical value; and
adding one or more lines perpendicular to the vertical
line from at least one of the plurality of points along the vertical
line to transform the image on the fixed medium from a vertical
line to a numerical notation form in response to the identified
desired numerical value, creating a pattern specific to said
numerical value, the perpendicular lines being of equal length
and volume and having a value corresponding only to the value
of the point from which it extends, wherein a multiple lines
may only be at a particular point temporarily during
manipulation, and wherein two perpendicular lines extending
from the same point along the vertical line are equivalent to one
perpendicular line extending from the next successive point
along the vertical line;
representing a number value by the sum of the value of
the perpendicular lines extending from the points along the
vertical line;
increasing the numerical value of the numerical notation
form by repeating a lower numerical notation form and adding
it to the vertical line;
decreasing the numerical value of the numerical notation
form by removing a lower numerical notation form from the
vertical line; and
teaching a user to perform a mathematical operation
through manipulation of said numerical notation system
method.

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EVIDENCE
The Examiner relied on the following evidence in rejecting the claims
on appeal:
Stibal
MacLaurin
US 3,461,573
A Treatise of Algebra, in
Three Parts 4–5
Aug. 19, 1969
1756
REJECTIONS
I. Claims 1–3 and 5–24 stand rejected under 35 U.S.C. § 101 as being
directed to non-statutory subject matter. Final Act. 2.
II. Claims 1, 3, 5–10, and 21–24 stand rejected under 35 U.S.C. § 103(a)
as being obvious over Stibal. Id. at 3–6.
III. Claims 2 and 11–20 stand rejected under 35 U.S.C. § 103(a) as being
obvious over Stibal and MacLaurin. Id. at 6–13.
OPINION
Rejection I
The Examiner rejected claims 1–3 and 5–24 under 35 U.S.C. §101 as
being directed to non-statutory subject matter, namely, an abstract idea.
Final Act. 2. As part of the analysis, the Examiner utilized the “machine-or-
transformation test,” which the Supreme Court has instructed is “a useful
and important clue, an investigative tool, for determining whether some
claimed inventions are processes under § 101,” but “is not the sole test for
deciding whether an invention is a patent-eligible ‘process.’” Bilski v.
Kappos, 130 S. Ct. 3218, 3227 (2010); see Final Act. 2. In particular, the
Examiner determined that the claimed method is “not positively tied to a
particular machine or device nor transform[s] a particular article into a
different state or thing.” Final Act. 2; see also id. at 13.
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Appellants argue that the claims satisfy the machine prong of the
machine-or-transformation test because “the claims are tied to the fixed
medium, which . . . constitutes a machine or apparatus,” as well as to any
apparatus that would be needed to mark the fixed medium with a vertical
line. App. Br. 7–8. Despite the relatively broad definition of “machine”
annunciated in In re Ferguson,1 it is unclear how the claimed “fixed
medium,” which is broad enough to include a simple piece of paper, consists
of parts or is otherwise a mechanical device, such that it constitutes a
machine. In addition, we note that claim 1 does not make any reference to
any particular apparatus that would be used to mark the fixed medium. Even
assuming arguendo that the recited “fixed medium” is a machine, the
generality of the claimed “fixed medium,” the fact that the fixed medium is
merely an object on which the method of teaching mathematical operations
is executed,2 and the fact that the fixed medium contributes only nominally
or insignificantly to the execution of the claimed method,3 all weigh against
eligibility. See Manual of Patent Examining Procedure (MPEP) (9th ed.,
Mar. 2014) § 2106(II)(B)(1)(a). We are not persuaded by Appellants’

1 “[A] machine is a concrete thing, consisting of parts, or of certain devices
and combination of devices. This includes every mechanical device or
combination of mechanical powers and devices to perform some function
and produce a certain effect or result.” In re Ferguson, 558 F.3d 1359, 1364
(Fed. Cir. 2009) (quoting In re Nuijten, 500 F.3d 1346, 1355 (Fed. Cir.
2007) (internal quotation marks omitted)).
2 See Final Act. 13 (explaining that “forming a vertical line to produce an
image on a fixed medium as recited in claim 1 could be perform[ed]
mentally.”).
3 See Final Act. 2 (explaining that “the involvement of the machine . . . must
not merely be insignificant extra-solution activity”).
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arguments and agree with the Examiner that there is insufficient recitation of
a machine to meet the machine-or-transformation test. Final Act. 2.
Appellants further argue that the claims satisfy the transformation
prong of the machine-or-transformation test. In particular, Appellants argue
that the fixed medium is transformed from merely including a vertical line to
including a numerical notation form. App. Br. 6. “‘Transformation’ of an
article means that the ‘article’ has changed to a different state or thing.
Changing to a different state or thing usually means more than simply using
an article . . . .” MPEP § 2106(II)(B)(1)(b). Recording something on a
fixed medium is akin to simple use of the fixed medium, rather than the type
of change of the fixed medium that results in a different function or use of
the fixed medium as exemplified in subject matter described in earlier
decisions of our reviewing court. See In re Bilski, 545 F.3d 943, 962 (Fed.
Cir. 2008) (en banc)) (quoting Gottschalk v. Benson, 409 U.S. 63, 70 (1972)
(quoting Corning v. Burden, 56 U.S. 252, 267-68 (1854)) (“[T]he arts of
tanning, dyeing, making waterproof cloth, vulcanizing India rubber,
smelting ores . . . are instances, however, where the use of chemical
substances or physical acts, such as temperature control, changes articles or
materials. The chemical process or the physical acts which transform the
raw material are, however, sufficiently definite to confine the patent
monopoly within rather definite bounds.”). We do not agree with Appellants
that adding markings to the vertical line on the fixed medium transforms the
fixed medium.
Appellants additionally argue that the claimed method “transform[s] a
number in a standard numerical representation, such as Arabic, to the
claimed numerical notation form.” App. Br. 7. “An ‘article’ includes a
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physical object or substance” or “electronic data that represents a physical
object or substance,” and the physical object or substance “must be
particular, meaning it can be specifically identified.” MPEP
§ 2106(II)(B)(1)(b). A number in a standard numerical representation is not
particular and does not represent a physical object or substance. To the
extent Appellants are also arguing that the image on the fixed medium is
transformed (see Reply Br. 3), the image is not an article that is or represents
a physical object or substance. We are not persuaded by Appellants’
arguments and agree with the Examiner that there is insufficient recitation of
transformation to meet the machine-or-transformation test. Final Act. 2.
Although the machine-or-transformation test remains a useful tool for
determining patent eligibility, it is not dispositive,4 and we note that § 101
case law has changed significantly since the briefing was submitted by
Appellants and the Examiner in 2012. The Supreme Court has set forth “a
framework for distinguishing patents that claim laws of nature, natural
phenomena, and abstract ideas from those that claim patent-eligible
applications of those concepts.” Alice, 134 S. Ct. 2347, 2355 (2014) (citing
Mayo, 132 S. Ct. at 1294). According to that framework, we must first
determine whether the claims at issue are directed to one of those concepts
(i.e., laws of nature, natural phenomena, and abstract ideas). Id. If so, we
must secondly “consider the elements of each claim both individually and
‘as an ordered combination’ to determine whether the additional elements
‘transform the nature of the claim’ into a patent-eligible application.” Id.

4 See Mayo Collaborative Servs. v. Prometheus Labs, Inc., 132 S. Ct. 1289,
1303 (2012) (the machine-or-transformation test does not “trump” the
exclusions to patentable subject matter set forth in Bilski).
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The Supreme Court characterizes the second step of the analysis as “a search
for an ‘inventive concept’ –i.e., an element or combination of elements that
is ‘sufficient to ensure that the patent in practice amounts to significantly
more than a patent upon the [ineligible concept] itself.”’ Id.
The Examiner determined that the step of forming a vertical line to
produce an image on a fixed medium could be performed mentally. Final
Act. 13. This determination supports the Examiner’s conclusion that the
claims are directed to an abstract idea. Id. at 2. Our reviewing court, relying
on Supreme Court precedent, has “consistently ‘refused to find processes
patentable when they merely claimed a mental process standing alone and
untied to another category of statutory subject matter[,] even when a
practical application was claimed.”’ CyberSource Corp. v. Retail Decisions,
Inc., 654 F.3d 1366, 1372 (Fed. Cir. 2011) (quoting In re Comiskey, 554
F.3d 967, 980 (Fed. Cir. 2009)). Steps that can be performed in the human
mind, or by a human using pen and paper,5 are mental processes that are not
patent-eligible under § 101. See id. (holding that a method for verifying the
validity of a credit card transaction over the Internet to be non-statutory
subject matter as an abstract idea capable of being performed in the human
mind or by a human using a pen and paper).6 Because we determine that the
steps of Appellants’ method claims can be performed by a human using pen
and paper, we determine that Appellants’ method claims are directed to the

5 In light of this case law, we are not persuaded by Appellants’ arguments
that production of an image on a fixed medium precludes the claimed steps
from being a mental process. See Reply Br. 3.
6 See Cybersource, 654 F.3d at 1372 (“It is clear that unpatentable mental
processes are the subject matter of claim 3. All of claim 3’s method steps
can be performed in the human mind, or by a human using a pen and
paper.”).
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mental process or abstract intellectual concept of teaching mathematical
operations. See Final Act. 2. Mental processes or abstract intellectual
concepts are not patentable. Parker v. Flook, 437 U.S. 584, 589 (1978);
Gottschalk v. Benson, 409 U.S. 63, 67-68 (1972).
Having determined that the claims are directed to a patent-ineligible
mental process or abstract intellectual concept, we must secondly consider
the elements of the claims individually and as an ordered combination to
determine whether the additional elements of the claims transform the nature
of the claims into a patent-eligible application. As recognized by the Federal
Circuit in Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 715 (Fed. Cir.
2014), the machine-or-transformation test can be a “useful clue” in the
second step of the Alice framework. We agree with the Examiner that the
claims do not satisfy either prong of the machine-or-transformation test for
the reasons described above. Moreover, the recited steps are simply steps
for manipulating and/or recording numerical data, which could be performed
mentally or by a human with pen and paper, and thus, are insufficient to
supply the inventive concept needed to transform the claims into a patent-
eligible application.
Considering the steps of independent claims 1, 12, and 20 as an
ordered combination adds nothing to the concept of teaching mathematical
operations. In other words, the steps, when viewed as a whole, add nothing
significant beyond the sum of their parts taken separately. Accordingly, in
connection with the second step of the framework set forth in Alice, we
determine that Appellants’ method claims 1, 12, and 20 do not contain an
“inventive concept,” i.e., an element or combination of elements that is
significantly more than a patent on the ineligible concept itself.
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We have also considered Appellants’ argument that the claims of the
present application are similar to issued U.S. Patent No. 6,639,139 (App. Br.
8) or that Stibal is evidence of the statutory subject matter of the present
application (Reply Br. 3). The Court of Customs and Patent Appeals,
predecessor court to the Court of Appeals for the Federal Circuit, held that
“[e]ach case is determined on its own merits. In reviewing specific
rejections of specific claims, this court does not consider allowed claims in
other applications or patents.” In re Gyurik, 596 F.2d 1012, 1018 n. 15
(CCPA 1979) (citations omitted). As our reviewing court directs, we will
not consider the allowed claims in other patents when determining whether
the present claims are directed to non-statutory subject matter. Accordingly,
we are not persuaded of error by the Examiner.
We have also considered Appellants’ separate arguments directed to
the recitation of “a paper medium” in claim 21 and “writing instrument” in
claims 22–24. Even when these terms are expressly recited, the recited steps
remain directed to the mental process or abstract intellectual concept of
manipulating and/or recording numerical data, which can be performed by a
human with pen and paper, and thus are insufficient to transform the claims
into a patent-eligible application.
For these reasons, we agree with the Examiner that claims 1, 12, and
20, and claims 2, 3, 5–11, 13–19, and 21–24, which depend therefrom, are
directed to a patent-ineligible abstract idea and we sustain the Examiner’s
rejection of claims 1–3 and 5–24 under 35 U.S.C. § 101.

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Rejections II and III
The Examiner rejects independent claim 1 as obvious over Stibal.
Final Act. 3–6. With respect to the limitation of “adding one or more lines
perpendicular to the vertical line from at least one of the plurality of points
along the vertical line [each point representing a numerical value] . . . , the
perpendicular lines . . . having a value corresponding only to the value of the
point from which it extends,” the Examiner finds that Stibal teaches this
subject matter at column 7, lines 40–66 and Figure 10. Id. at 3–4.
Appellants contend that Stibal merely teaches that any lines (e.g., unit
bars) added to a vertical line have a value corresponding to their length,
rather than a value corresponding only to the value of the point from which
they extend as required by the claim. App. Br. 10; Reply Br. 4. For
example, a unit bar has a value of 10 when its length is 10 units, and a unit
bar has a value of 5 when its length is 5 units. Id.; Stibal, Fig. 10. As
argued by Appellants, “the 10 unit bar extends, at best, from a point with a
value of 0 or 1. This can also be seen in FIGURE 6 in which a 9 unit bar
extends from 1.” Id.
We agree with Appellants that Stibal does not teach added lines have
a value corresponding only to the value of the point from which they extend,
as set forth in the claims. Rather, lines added from one of a plurality of
points have different values corresponding to the length of the line. That is,
a line added to a particular point has a first value in one instance and a
second value in another instance depending on the length of the line, even
when added to the same point. This precludes the lines from having a “value
corresponding only to the value of the point from which it extends” as set
forth in the claims. App. Br., Claims App. (emphasis added).
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The Examiner has not established by a preponderance of the evidence
that Stibal teaches the recited limitation of independent claim 1 of “adding
one or more lines perpendicular to the vertical line from at least one of the
plurality of points along the vertical line [each point representing a
numerical value]. . . , the perpendicular lines . . . having a value
corresponding only to the value of the point from which it extends.” As
such, the Examiner’s conclusion of obviousness of the subject matter of
independent claim 1 is based on an erroneous finding as to the scope and
content of Stibal.
Independent claims 12 and 20 recite the same above-referenced
limitation as claim 1, and the Examiner’s rejection of independent claims 12
and 20 are based on the same erroneous finding that Stibal teaches lines or
flags having values corresponding only to the numerical value of the points
from which they extend or are drawn. The Examiner’s additional reference
to Stibal’s Figure 6 and column 6, lines 10–43 (Final Act. 7–8, 11) in
connection with independent claims 12 and 20 does not remedy the
deficiency of Stibal described above. Moreover, the Examiner does not
explain how MacLaurin would remedy the deficiency of Stibal.
For the foregoing reasons, Appellants have shown error by the
Examiner in concluding that the subject matter of claim 1 would have been
obvious over Stibal, and that the subject matter of claims 12 and 20 would
have been obvious over Stibal and MacLaurin. Accordingly, we do not
sustain, under 35 U.S.C. § 103(a), the rejection of claims 1, 3, 5–10, and 21–
24 as unpatentable over Stibal, nor the rejection of claims 2 and 11–20 as
unpatentable over Stibal and MacLaurin.

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DECISION
The Examiner’s decision to reject claims 1–3 and 5–24 under
35 U.S.C. § 101 as being directed to non-statutory subject matter is
AFFIRMED.
The Examiner’s decision to reject claims 1–3 and 5–24 under
35 U.S.C. § 103(a) is REVERSED.
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
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