Ex Parte Visser

Board of Patent Appeals and Interferences

Aug 28, 2003

08851040 (B.P.A.I. Aug. 28, 2003)

The opinion in support of the decision being entered today was not written
for publication and is not binding precedent of the Board.
Paper No. 25
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte BARNEY D. VISSER
____________
Appeal No. 2001-2403
Application No. 08/851,040
____________
ON BRIEF
____________
Before THOMAS, BARRETT and SAADAT, Administrative Patent Judges.
SAADAT, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the Examiner’s final
rejection of claims 21-26 and 28-36. Claims 1-4, 6-16 and 18-20
have been indicated as allowable in the Examiner’s answer.
We reverse.
BACKGROUND
Appellant’s invention is directed to a method for
facilitating the presentation of inventory items and for
providing access to such items.
Appeal No. 2001-2403
Application No. 08/851,040
1 The 35 U.S.C. § 102(b) rejection of claims 1-4, 6-16 and 18-36 as
being anticipated by Searcy, as stated in the final rejection (Paper No. 21,
mailed September 25, 2000), has been withdrawn by the Examiner.
2
Representative independent claim 21 is reproduced below:
21. A method for presenting inventory items, comprising:
providing at least three stores which are separated from
each other by elongate walls, each wall having a doorway, with
the doorways being aligned with each other, wherein each store
has its own outside entrance;
entering into a parking facility adjacent the outside
entrances;
selecting one of the outside entrances and entering into the
selected outside entrance directly from the parking facility;
moving to and standing in an aisle which passes through each
doorway;
looking down the aisle and visualizing at least some of the
interior of each store,
selecting an item within one of the stores; and
purchasing the item while within the store.
Claims 21-26 and 28-36 stand rejected under 35 U.S.C. § 101
as being directed to non-statutory subject matter.1
Rather than reiterate the viewpoints of the Examiner and
Appellant regarding the above-noted rejection, we make reference
to the answer (Paper No. 24, mailed April 10, 2001) for the
Examiner’s reasoning and the appeal brief (Paper No. 23, filed
February 20, 2001) for Appellant’s arguments thereagainst.
Appeal No. 2001-2403
Application No. 08/851,040
3
OPINION
The Examiner asserts that the claims are directed to non-
statutory subject matter, in particular, to a method of doing
business (final rejection, page 2). The Examiner adds that the
claims require a human to visualize how products are displayed,
which requires the thought process of a human to select a store
based on the facility layout (id.). The Examiner concludes that
“the inclusion of the human thought process in the method of
doing business fails to fall within the safe harbors of business
methods” (id.).
Appellant responds by asserting that the claims are not
drawn to a method of doing business (brief, page 5).
Additionally, Appellant asserts that the mere inclusion of a
human-performed step does not make a process claim non-statutory
(id.). Appellant further argues that since the claimed subject
matter does not include a computer algorithm, the Examiner’s
reliance on MPEP § 2106 is misplaced (brief, pages 5 & 6).
In response, the Examiner argues that the claims require the
use of human thought and movement, such as a human entering into
a parking facility (answer, page 3). The Examiner further points
out that the claims include purchasing of an item and therefore,
set forth a business method (answer, page 4). The Examiner also
Appeal No. 2001-2403
Application No. 08/851,040
4
argues that such claims must fall within the safe harbors listed
in MPEP § 2106 in order to be statutory (id.).
We disagree with the Examiner that the claims, in order to
be statutory, must fall within the required safe harbors since
the appealed claims do not recite an algorithm performed on a
computer. Furthermore, contrary to the Examiner’s position,
human involvement in performing some of the steps of the claimed
process is not enough to make the claims non-statutory. Although
processes that require humans to subjectively make a selection or
judgment may be non-statutory or indefinite, here the outcome of
the claimed process does not depend on any subjective judgments,
but rather includes objective actions by humans such as entering,
moving, looking and purchasing a selected item.
We also find that a prima facie case of non-statutory
subject matter has not been provided as the Examiner has failed
to follow the guidelines set forth in State Street Bank & Trust
Co. v. Signature Financial Group, Inc., 149 F.3d 1368, 47 USPQ2d
1596 (Fed. Cir. 1998), AT&T Corp. v. Excel Communications, Inc.,
172 F.3d 1352, 50 USPQ2d 1447 (Fed, Cir. 1999) and Ex Parte
Bowman, 61 USPQ2d 1669 (Bd. Pat. Appl. & Int. 2001)(unpublished).
The Examiner appears to have ignored that a determination of non-
statutory subject matter needs more than stating that the claimed
Appeal No. 2001-2403
Application No. 08/851,040
5
steps are directed to a method of doing business or do not fall
withing one of the safe harbors recognized for computer related
inventions. The analysis, in fact, should include a clear
delineation of whether the claimed process steps constitute a
practical application of a process which produces “a useful,
concrete and tangible result.” See State Street, 149 F.3d at
1373, 47 USPQ2d at 1600-01. The Examiner has not provided any
such analysis in support of the alleged lack of utility of the
claimed subject matter within the technological arts.
Accordingly, the rejection of claims 21-26 and 28-36 under
35 U.S.C. § 101 cannot be sustained.
Appeal No. 2001-2403
Application No. 08/851,040
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CONCLUSION
In view of the foregoing, the decision of the Examiner
rejecting claims 21-26 and 28-36 under 35 U.S.C. § 101 is
reversed.
REVERSED
JAMES D. THOMAS )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
LEE E. BARRETT ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
MAHSHID D. SAADAT )
Administrative Patent Judge )
MDS/ki
Appeal No. 2001-2403
Application No. 08/851,040
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