Ex Parte Thiesson et al

Board of Patent Appeals and Interferences

Aug 25, 2008

10463145 (B.P.A.I. Aug. 25, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte BO THIESSON, CHRISTOPHER A. MEEK,
DAVID M. CHICKERING, and DAVID E. HECKERMAN
____________

Appeal 2008-1055
Application 10/463,145
Technology Center 2100
____________

Decided: August 25, 2008
____________

Before JAMES D. THOMAS, JOSEPH L. DIXON,
and CAROLYN D. THOMAS, Administrative Patent Judges.
J. THOMAS, Administrative Patent Judge.

DECISION ON APPEAL
This is appeal under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 1 through 31. We have jurisdiction under 35 U.S.C.
§ 6(b).
Appeal 2008-1055
Application 10/463,145

As best representative of the disclosed and claimed invention,
independent claim 1 is reproduced below:
1. A system that facilitates predicting values of time observation data
in a time series, comprising:

a component that receives a subset of time observation data that
includes observations of at least one entity, the time observation data
comprising at least one selected from the group consisting of discrete time
observation data and continuous time observation data; and
an autoregressive, moving average cross-predictions (ARMAxp)
model that predicts values of the time observation data, the ARMAxp model
includes at least one variable that corresponds to the observations associated
with the at least one entity and conditional variance of each continuous time
tube variable is fixed to a small positive value.

The following reference is relied on by the Examiner:
Wold US 5,949,678 Sep. 7, 1999

Claims 1 through 31 stand rejected under 35 U.S.C. § 102(b) as being
anticipated by Wold.
Rather than repeat verbatim the positions of the Appellants and the
Examiner, reference is made to the Brief and Reply Brief for Appellants’
positions, and to the Answer for the Examiner’s positions.

OPINION
For the reasons set forth by Appellants, principally in the Reply Brief,
we reverse the rejection of each independent claim 1, 12, 22, and 27 under
35 U.S.C. § 102 and their respective dependent claims. With respect to each
of these independent claims, the positions set forth at pages 2 and 3 of the
2
Appeal 2008-1055
Application 10/463,145

Reply Brief essentially repeat those set forth in a corresponding manner in
the principal Brief on appeal. Of particular note is the requirement of each
independent claim of a so-called autoregressive moving average cross-
prediction (ARMAxp) model.
At page 7 of the Answer, the Examiner responds to the argument that
Wold does not disclose the claimed ARMAxp model by urging that portions
of columns 9 and 11 respectively teach an autoregressive moving average
for prediction and validation model. In turn, page 3 of the Reply Brief
persuasively argues that the cross validation approach used in Wold is not
equivalent to a cross prediction scheme even though Appellants recognize
that, as urged by the Examiner, Wold does teach an ARMA-type
autoregressive moving average approach. We agree with these views
expressed at page 3 of the Reply Brief by Appellants and the conclusion that
cross-validation as described in Wold is distinct from the cross predictions
of the claimed ARMAxp model within the anticipation rejection before us.
Therefore, since each independent claim requires this feature, we reverse the
rejection of them and their respective dependent claims.

NEW REJECTIONS UNDER 37 C.F.R. § 41.50(b)
Claims 22 and 23 are rejected under the enablement provision of
35 U.S.C. § 112, first paragraph, since these claims recite a single means.
Since there is only one recited “means” among these two claims, these
claims cover every conceivable means for achieving the desired result. The
Specification, however, only disclosed those means known to Appellants.
See in re Hyatt, 708 F.2d 712, 714 (Fed. Cir. 1983).
3
Appeal 2008-1055
Application 10/463,145

In like manner, all claims on appeal, claims 1 through 31, stand
rejected under 35 U.S.C. § 101, as being directed to a nonstatutory subject
matter.
In the paragraph bridging pages 6 and 7, and in the paragraph bridging
pages 17 and 18 of the Specification as originally filed the term
“component” is stated to refer to a computer-related entity, software,
software in execution, an object, an executable, a thread of execution, and a
program among other possible broadly definable definitions. In turn,
representative figure 1 of the disclosed invention illustrates a time series
prediction “system” 100 which depicts a data receiving component and a
prediction model component. Therefore, the “system” of independent
claims 1 and 22 clearly comprises a software system entity and not hardware
embodiments since the system is not recited in these claims to be a machine
or otherwise recite a machine or computer implemented approach.
Corresponding method independent claim 12 has features
substantially identical to system independent claim 1 which does not recite a
computer implemented method. Indeed, even if the method of independent
claim 12 may be fairly stated to produce a concrete, useful, and tangible
result, the process and results are operations by and upon abstract data
constructs or recitations of mere data structures themselves that may be
performed by a human.
Independent claim 27 directly recites a data packet as a data construct
or a data structure per se. Because all the claims recite the ARMAxp model,
the claims directly recite a mathematical model or algorithm per se. We
know of no authority which permits this nor know of any authority which
4
Appeal 2008-1055
Application 10/463,145

permits the naked, direct claiming per se of abstract data constructs as in a
data packet of claim 27 or of a computer program otherwise claimed. Here,
there is no transformation of any underlying tangible subject matter to a
different state or thing. Note the reasoning in In re Cosmiskey, 499 F.3d
1365, 1377-79 (Fed. Cir. 2007). These considerations flow through to the
dependent claims of the respective independent claims 1, 12, and 22.
In summary, we have reversed the rejection of claims 1 through 31
under 35 U.S.C. § 102. Within the provisions of 37 C.F.R. § 41.50(b), we
have instituted two new grounds of rejection. These include the first
rejection of claims 22 and 23 as being single means claims proscribed by the
enablement provision of 35 U.S.C. § 112, first paragraph. The second
rejection is a rejection of all claims on appeal, claims 1 through 31, as being
directed to non-statutory subject matter within 35 U.S.C. § 101.
This decision contains new grounds of rejection pursuant to 37 C.F.R.
§ 41.50(b) (2007). 37 C.F.R. § 41.50(b) provides "[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 the 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. . . .
5
Appeal 2008-1055
Application 10/463,145

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).

REVERSED
37 C.F.R. § 41.50(b)

pgc

AMIN TUROCY & CALVIN, LLP
24TH FLOOR, NATIONAL CITY CENTER
1900 EAST NINTH STREET
CLEVELAND, OH 44114
6