Ex Parte Sundermeyer et al

Board of Patent Appeals and Interferences

Sep 4, 2009

10690214 (B.P.A.I. Sep. 4, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte MICHAEL J. SUNDERMEYER and NARCISO B. JARAMILLO
____________

Appeal 2008-005736
Application 10/690,214
Technology Center 2100
____________

Decided: September 4, 2009
____________

Before JAMES D. THOMAS, JAY P. LUCAS,
and STEPHEN C. SIU, Administrative Patent Judges.
THOMAS, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
This is an appeal under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 1-31. We have jurisdiction under 35 U.S.C. § 6(b).
We vacate the rejections before us under 35 U.S.C. § 102(b) and
35 U.S.C. § 103(b), and we institute new grounds of rejection within the
provisions of 37 C.F.R. 41.50(b).
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Application 10/690,214

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INVENTION
The present invention maintains a Web site that includes browsing to
a Web page to be edited, automatically downloading a source file for the
Web page including related files associated with display of the Web page,
editing the source file, and automatically publishing the edited source file to
a file transfer server associated with the Web site including the related files
associated with the display of the Web page. (Spec. 21, Abst.)

ILLUSTRATIVE CLAIM
Below is reproduced independent claim 21:
21. A Web page editor comprising:

a graphical interface (GI) for receiving interaction from a user;

a Web browser displayed to said user in a main window of said GI;

an edit indicator, associated with said display of said Web browser,
presented to said user on said GI, wherein said edit indicator controls
execution of retrieval logic;

an edit screen replacing said Web browser in said main window
responsive to said user selecting said edit indicator, wherein said user makes
edits to said Web page; and

a publish indicator, associated with a display of said edit screen,
presented to said user on said GI, wherein said publish indicator controls
execution of said upload logic.

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PRIOR ART AND EXAMINER’S REJECTIONS
The Examiner relies on the following references as evidence of
anticipation and unpatentability:
GlobalScape, CuteFTP Pro Technical Overview, White Paper, (2001),
published on the internet at least by August 14, 2002, last downloaded by the
Examiner on March 17, 2006, available at
http:llweb.archive.orglweb1200208141335091www.globalscape.comlsuppo
rtlmanu, als.shtml, pages i-ii and 1-17, [hereinafter CuteFTP].

Altova Inc. & Altova GmbH, XML Spy 4.0 Manual, copyright 1998-2001,
September 10, 2001, Chapter 3, consisting of pages 91-286, [hereinafter
XML Spy].

Claims 1-19 stand rejected under 35 U.S.C. § 102(b) as being
anticipated by Cute FTP. Claims 20-31 stand rejected under 35 U.S.C.
§ 103(a). As evidence of obviousness as to claim 20, the Examiner relies
upon XML Spy alone, with the edition of Cute FTP for claims 21-31.

FINDINGS OF FACT (FF)
1. Appellants’ assessment of the prior art in the background portion
of the Specification as filed states:
Web sites and Web pages typically comprise a Web server, that serves
the visual and data content to the user's browser many times in a
format, such as hypertext markup language (HTML), and a file
transfer server, that provides read and write-access to the files that
servers are usually conceptualized as separate and independent
machines, they, in fact, are typically software applications, which
often time run on the same computer. The underlying Web files are
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usually stored on that computer or a storage device accessible by that
computer, while the Web server and file transfer server interact with
those files in different ways. Web servers typically allow read-only
access to the files through HTML browsers, compared to the
read/write-access usually allowed by the file transfer servers.

[Para. 0004].

2. The initial line of paragraph [0022] characterizes the present
invention as a “browse-edit paradigm.”

ANALYSIS
We vacate the rejections under 35 U.S.C. § 102(b) and 35 U.S.C.
§ 103 because we conclude that claims 1-31 are “barred at the threshold by
§ 101.” In re Comiskey, 554 F.3d 967, 973 (citing Diamond v. Diehr, 450
U.S. 175, 188)(1981). Therefore, the following new grounds of rejection are
set forth in this opinion within the provisions of 37 C.F.R. 41.50(b).

New Rejection under 35 U.S.C. § 101
Statutory subject matter comprises a machine, a manufacture, a
process, or a composition of matter as permitted within 35 U.S.C. § 101.
Moreover, our reviewing court has stated that “[t]he four categories [of
§ 101] together describe the exclusive reach of patentable subject matter. If
the claim covers material not found in any of the four statutory categories,
that claims falls outside the plainly expressed scope of § 101 even if the
subject matter is otherwise new and useful.” In re Nuijten, 500 F.3d 1346,
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Application 10/690,214

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1354 (Fed. Cir. 2007), reh’g en banc denied, 515 F.3d 1361 (Fed. Cir.
2008), cert. denied, __ U.S.__, 127 S. Ct. 70 (2008). Accord In re
Ferguson, 2009 WL 565074, (Fed Cir.2009). This latter case held that
claims directed to a “paradigm” are non-statutory under 35 U.S.C. § 101 as
representing an abstract idea.
With this background in mind, claims 1 through 31 are rejected under
35 U.S.C. § 101.
As noted in finding of fact 2, Appellants characterize their invention
as a “browse-edit paradigm” which is consistent with the proscription noted
In re Ferguson. As such, the direct claiming of a “Web page editor” of
independent claim 21 on appeal recites subject matter that is considered not
to be statutory within 35 U.S.C. § 101. Such an editor is also not one of the
permitted statutory categories of invention within Section 101.
To the extent any independent claim 1, 11, 20, and 21 on appeal
recites or otherwise makes reference to a web browser or file transfer server
or web server, finding of fact 1 plainly indicates that the art considers these
to be software applications themselves. Therefore, each independent claim
on appeal either directly or indirectly recites software per se, which has not
been indicated in the case law we cited earlier in this opinion to be statutory
subject matter as recited. Some of these independent claims directly require
human steps or manipulations which are also proscribed. The claimed
graphical user interface (GUI) in the preamble of independent claim 20
directly relates to non-tangible, labeled, information/images which are
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inclusive of excluded abstract intellectual ideas or concepts. The same may
be said of the graphical interface (GI) of independent claim 21 on appeal as
well as its apparent inclusion as a software entity per se. Independent claim
21 further recites directly indicators and screens as well. These all relate to
data structures which are merely information abstractions.
For method independent claims 1 and 20 on appeal, there is no
recitation of a machine or a transformation of an article in accordance with
In re Bilski, 545 F.3d 943, 959-60 (Fed. Cir. 2008) (en banc). The Supreme
Court’s “machine-or-transformation test, properly applied, is the governing
test for determining patent eligibility of a process under § 101.” Id. at 956.
“A claimed process is surely patent-eligible under § 101 if: (1) it is tied to a
particular machine or apparatus, or (2) it transforms a particular article into a
different state or thing.” Id. at 954. The features of automatically
downloading and automatically publishing relate to human initiated actions
that are performed by the above-noted software applications from our
excerpt of Appellants’ background of the invention statement in finding of
fact 1. Additionally, the “Web page editor” of independent claim 21 is also
not recited as a machine. It is a software entity, a “browse-edit paradigm.”
The recited source files of independent claim 1 are not considered to be
articles or tangible articles but merely abstractions of data per se.
As to independent claim 11 on appeal, the claimed computer program
product appears to indirectly recite Appellants’ “browse-edit paradigm”
concept we noted in finding of fact 2 and is directly recited in the body of
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this claim to “comprise” various “code for” performing certain
functionalities. As such, Appellants are directly claiming the computer
program code for performing the recited functions. Software code is an idea
without physical embodiment; it is intangible. The preamble of independent
claim 11 directly relates to a computer program logic that ambiguously
appears to relate to the “code” recited in the body of this claim. The
computer readable medium of the preamble does not recite that the medium
is a tangible medium.

New Rejection under the Enablement provision of 35 U.S.C. § 112, first
paragraph
As to the enablement issue, the specification of the patent must teach
those skilled in the art how to make and use the claimed invention without
undue experimentation. Genentech, Inc. v. Novo Nordisk A/S, 108 F.3d
1361, 1365 (Fed. Cir.), cert. denied, 118 S.Ct. 397 (1997). This same case
indicates that the scope of the claims must bear a reasonable correlation to
the scope of enablement provided by the disclosure. Enablement is also not
precluded even if some experimentation is necessary, although the amount
of experi-mentation needed must not be unduly excessive. Hybritech, Inc. v.
Monoclonal Antibodies, Inc., 802 F.2d 1367, 1384 (Fed. Cir. 1986), cert.
denied, 480 U.S. 947 (1987).
With this background, claims 1 through 31 are rejected under 35
U.S.C. § 112, first paragraph, enablement provision.
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Appellants’ disclosed invention is based upon a functional description
of desired results and, indeed, may be fairly characterized as a concept
invention. The various portions of Figure 1 are characterized as screen shots
that are derived from underlying software components that are directly
recited in independent claim 11 on appeal, for example, and directly recited
in independent claims 20 and 21 as well, but which are based upon non-
disclosed computer code. As noted earlier, independent claim 11 directly
recites the code itself and independent claim 1 indirectly recites the
functionality/results of it. Significantly, there is no computer code disclosed
at all on which to base the claimed “computer program product” of claim 11
as well as the functionalities recited in the other claims. The claimed “code”
of claim 11 cannot be derived from the broad concepts set forth in flowchart
Figure 3 without undue experimentation.
The mere incorporation by reference of the three related applications
noted at the top of Specification page 1 in paragraph [0001] is of no help
since they are not specifically taught here to detail the disclosed basis or the
functionality broadly recited in the independent claims on appeal. The
disclosures of them have not been specifically integrated with what is
disclosed in this application but have been merely passively mentioned.
Essentially, Appellants have said to the person of ordinary skill in the art, go
figure out yourself how to make and use the claimed invention rather than
specifically teach the artisan how to make and use the claimed invention.

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New Rejection under the second paragraph of 35 U.S.C. § 112
Claims 1-31 are rejected under the second paragraph of 35 U.S.C.
§ 112 as being indefinite.
Beginning with independent claim 11, substantial ambiguity exists as
to whether the claimed computer program product is embodied on a tangible
medium. The computer program product appears to be ambiguously recited
in the body of the claimed as computer code as well as computer program
logic. Ambiguities exist as to which whether this computer program logic is
the code itself or some additional functionality. There is no clear manner in
which to determine the scope of meaning to be attributed to the computer
readable medium and the computer program product recitations. Because
the claimed functionalities among all claims on appeal lack a sufficient
description of the disclosed basis underlying them, all claims are considered
to be indefinite as well.

SUMMARY AND DECISON
Because claims 1-31 fail at the outset to meet subject matter
requirements within 35 U.S.C. § 101, we have vacated the outstanding
rejections under 35 U.S.C. § 102(b) and 35 U.S.C. § 103. On the other hand,
within the provisions of 37 C.F.R. 41.50(b), we have instituted three new
grounds of rejection of claims 1-31. These include a rejection under
35 U.S.C. § 101, a separate rejection under the enablement provision of
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35 U.S.C. § 112, first paragraph, as well as a separate rejection under the
second paragraph of 35 U.S.C. § 112.
In addition to vacating the Examiner’s rejection(s) of one or more
claims, this decision contains new grounds of rejection pursuant to 37 C.F.R.
§ 41.50(b). 37 C.F.R. § 41.50(b) provides that “[a] new ground of rejection
pursuant to this paragraph shall not be considered final for judicial review.”
37 C.F.R. § 41.50(b) also provides that Appellant, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new ground of rejection to
avoid termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new evidence relating
to the claims so rejected, or both, and have the matter
reconsidered by the examiner, in which event the proceeding
will be remanded to the examiner. . . .

(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same record. . . .

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No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).

VACATED
37 C.F.R. § 41.50(b)

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