Ex Parte Vogel

Board of Patent Appeals and Interferences

Nov 21, 2011

11517080 (B.P.A.I. Nov. 21, 2011)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte JOSEPH HENRY VOGEL
____________________

Appeal 2010-005339
Application 11/517,080
Technology Center 3600
____________________

Before: ANTON W. FETTING, JOSEPH A. FISCHETTI, and BIBHU R.
MOHANTY, Administrative Patent Judges.

FISCHETTI, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF CASE
Appellant seeks our review under 35 U.S.C. § 134 from the
Examiner’s final rejection of claims 1, 6, 11, and 12. We affirm.

THE CLAIMED INVENTION
Appellant claims a web-based system and method for controlling use
of academic texts (Specification 1:7-8). Claims 1, 6, 11, and 12 illustrate the
claimed subject matter:
1. An unauthorized copying - prevention system for texts,
the system comprising:
a web-based system;
a copy-prevention module in the web-based system, the
module having a plurality of lines of computer code that
implements a copy preventing method;
a discussion board for a particular course that uses a
particular academic text by a particular teaching professional
wherein the academic text including a trademark;
a module having a plurality of lines of computer code
that require the particular teaching professional to incorporate
the discussion board into a syllabus of the particular course in
order to adopt the particular text in the syllabus and a module
having a plurality of lines of computer code that requires a
student to participate in the discussion board for the particular
course in order to receive a predetermined percentage of the
final grade for the particular course;
a module having a plurality of lines of computer code
that requires the student to one of purchase a new copy of the
academic text and remit a separate payment when establishing
acquisition of the academic text that is not a new copy in order
to gain access to the discussion board and not forfeit the
predetermined percentage of the final grade as established in
the licensee's syllabus; and
a module having a plurality of lines of computer code
that distributes a portion of the net income from a percentage of
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student purchases to beneficiaries who enhance the academic
freedom otherwise lost by adoption of the system.

6. An unauthorized copying-prevention computer-
implemented method for texts, the method comprising:
providing a web-based system that includes a copy-
preventing module that controls the unauthorized copying of
academic texts, wherein the web-based system is used by a
student who is enrolled in a particular course that uses a
particular academic text, a professor that teaches the particular
course with the particular academic text and a publisher that
publishes the particular academic text;
providing a discussion board for a particular course that
uses a particular academic text by a particular teaching
professional wherein the academic text including a trademark;
requiring the particular teaching professional to
incorporate the discussion board into a syllabus of the particular
course in order to adopt the particular text in the syllabus and
requiring a student to participate in the discussion board for the
particular course in order to receive a predetermined percentage
of the final grade for the particular course;
requiring the student to one of purchase a new copy of
the academic text and remit a separate payment when
establishing acquisition of the academic text that is not a new
copy in order to gain access to the discussion board and not
forfeit the predetermined percentage of the final grade as
established in the licensee's syllabus; and
distributing a portion of a percentage of the student
purchases to beneficiaries who enhance the academic freedom
otherwise lost by adoption of the system.

11. An unauthorized copying-prevention computer-
implemented method for texts, the method comprising:
providing, on a web-based system, a discussion board for
a particular course that uses a particular academic text by a
particular teaching professional, the academic text including a
trademark;
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requiring the particular teaching professional to
incorporate the discussion board into a syllabus of the particular
course in order to adopt the particular text in the syllabus;
requiring a student to participate in the discussion board
for the particular course in order to receive a predetermined
percentage of the final grade for the particular course;
requiring the student to purchase a new copy of the
academic text or remit a separate payment when establishing
acquisition of the academic text that is not a new copy in order
to gain access to the discussion board and not forfeit the
predetermined percentage of the final grade as established in
the licensee's syllabus; and distributing a percentage of the
student purchases to beneficiaries who enhance the academic
freedom otherwise lost by adoption of the system.

12. An unauthorized copying-prevention computer-
implemented method for texts, the method comprising:
performing a computer-based search for a citation to a
trademarked academic text in a plurality of course syllabi; and
requesting, for each citation of the trademarked academic
text in each syllabus, that a teaching professional associated
with the course syllabus agree to a license to use the
trademarked academic text in the course syllabus.

REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Stefik
Drimmer
US 5,629,980
US 6,790,045 B1
May 13, 1997
Sep. 14, 2004

REJECTIONS
The following rejections are before us for review.
The Examiner rejected claims 1, 6, 11, and 12 under 35 U.S.C. § 101
as claiming unpatentable subject matter.
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The Examiner rejected claims 1 and 6 under 35 U.S.C. § 112 Second
Paragraph as indefinite.
The Examiner rejected claims 1, 6, 11, and 12 under 35 U.S.C.
§ 103(a) over Drimmer and Stefik.

ISSUES
Did the Examiner err in rejecting claims 1, 6, and 11 under 35 U.S.C.
§ 101 as reciting ineligible subject matter, since claim 1 recites a system that
can has a web-based server as a component, and claims 6 and 11 recite
methods with at least one step performed in conjuction with a web-based
system?
Did the Examiner err in rejecting claims 1 and 6 under 35 U.S.C.
§ 112 Second Paragraph as indefinite for claiming humans, since the claim
requires computer code that requires actions of a human?
Did the Examiner err in rejecting claims 6, 11, and 12 under 35 U.S.C.
§ 103(a) on the basis that some claim limitations are merely statements of
intended use, but the claims each recite a method, not an apparatus?

FINDINGS OF FACT
We find the following facts by a preponderance of the evidence.
1. Drimmer discloses code that requires the particular teaching
professional to incorporate the discussion board into a syllabus of the
particular course because “the instructor terminal 14 or the data
processing system 18 determines whether the particular student, who
asked the question, has participated in all of the relevant student
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communications associated with the relevant course module.” (Col. 11
ll. 26-30).
2. Drimmer discloses a technique for requiring a student to perform an
action before access is granted, by instructing the student in the
requirement, in that the system “instructs the student based on a referral
to a reference publication or another reference source related to the
question. The reference publication may represent a textbook ...” (Col.
11 ll. 50-55).
3. Stefik discloses a system for purchasing rights to use a digitally-
encoded book (Col. 17 ll. 9-12).

ANALYSIS
Rejection under Section 101
Claim 1
The Examiner rejected claim 1 because the claimed “discussion board
could encompass human beings and is therefore non-statutory.” (Ans. 8).
Appellant argues the claim “also recites a web-based system that
includes a number of modules that have a plurality of lines of computer code
including a copy-prevention module. Thus, the elements of claim 1 (which
define the invention as a whole as set forth in claim 1) clearly do not
encompass a human” (Appeal Br. 8).
Claim 1 is for a system that requires a web-based system. We find in
a web-based system you must have more than software per se, because a
web, upon which a web-based system is based, is physical, in addition to
software, in that it requires computers and routers and telecommunications
equipment to operate. Therefore a web-based system here must include a
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specially-programmed computer, and this computer is recited in the claim so
inextricably connected to a discussion board and the associated functions
which occur by claim recitation on it so as not to be an abstraction. See
Bilski v. Kappos, 130 S.Ct. 3218, 3227 (June 2010). Whether humans might
operate such a discussion board as found by the Examiner is not pertinent to
the analysis. Such human operators could not be considered as within the
scope of the actual phrase “discussion board” as that term is used in the art
of social networking. We therefore reverse the rejection of claim 1 under
Section 101, because it recites patent-eligible subject matter.
Claims 6 and 11
The Examiner rejected independent method claims 6 and 11 because
each “does not positively recite any structure upon which the method is
being performed, nor is there any physical transformation occurring.” (Ans.
8, 9, 10).
Appellant argues the step of providing a web-based system “is
important in that i[t] clearly recites a specific machine (the web-based
system) ...” (Appeal Br. 10, 11).
We are persuaded by Appellants' argument, for much the same
reasons as to the web-based system, set forth at claim 1. In the context of
these two method claims, we find that by providing a web-based system or
providing, on a web-based system, the methods are tied to a particular
machine of the specially-programmed computer. As such, we further find
that the computer is recited in the claim so inextricably connected to a
discussion board and the associated functions which occur by claim
recitation on it so as not to be an abstraction. See Bilski v. Kappos, 130
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S.Ct. 3218, 3227 (June 2010). We therefore find that claims 6 and 11 recite
eligible subject matter, and reverse the rejection of these claims under
Section 101.
Claim 12
The Examiner rejected independent method claim 12 for reasons
similar to claims 1, 6, and 11.
Appellant argues the claim “recites performing a computer-based
search for a citation” (Appeal Br. 13).
We are not persuaded by Appellants' argument, because we find the
computer-based search is insignificant extra-solution activity in that it is
merely the addition of a data-gathering step which “cannot convert the
unpatentable method to patentable subject matter.” In re Grams, 888 F.2d
835, 839 (Fed. Cir. 1989). The claim does not specify the nature of the
search and thus could be no more than a text message to someone over a
computer requesting such a search. Next, we find the remaining claim
limitation of requesting someone agree to a license represents a purely
mental human step which merely uses the input from the search as a basis to
make a request. The claim therefore recites a method step which is pre-
empted by mental thought. Bilski at 3231.

Rejection under Section 112 Second Paragraph
The Examiner rejected claims 1 and 6 as indefinite because they
“recite the requirement of a teaching professional and of a student. It is not
clear how computer code is capable of accomplishing this task.” (Ans. 12).
Appellant argues “the ‘teaching professional’ and ‘student’ are not a
requirement of the claim” because “computer code requires the teaching
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professional to perform a certain action and requires the student to
participate in the discussion board ...” (Appeal Br. 14).
We agree with the Appellant that the claim does not require a human.
Rather, the claim requires use by individuals having certain specialties who
can perform the required tasks implemented by computer code to perform
the required actions, and is therefore not indefinite. We therefore cannot
sustain the rejection as set forth by the Examiner.
However, as we set forth in the Section 103 analysis, below, we find
portions of independent method claims 6, 11, and 12 recite “in order to”
claim limitations that the Examiner incorrectly considered as statements of
intended use.

Rejection under Section 103
Claim 1
Appellant argues neither Drimmer nor Stefik discloses code that
requires the student to one of purchase a new copy of the academic text and
remit a separate payment when establishing acquisition of the academic text
that is not a new copy in order to gain access to the discussion board.
(Appeal Br. 18).
We agree. Although we find Drimmer discloses instructing the
student by reference to a textbook (FF 2), and we find that a system that
“instructs” is one way of requiring, we do not find either Drimmer or Stefik
disclosing requiring the student to make a purchase or remit a payment. We
do not interpret the words after the in order to clauses to be mere functional
language, but instead that they constitute functions configured by code
whose resulting function is, inter alia, purchasing or remitting. In the case
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of the required purchase, it must be performed in order that the system be
able to distribute a portion of a percentage of the student purchases which is
not disclosed or made obvious by Drimmer or Stefik. We therefore cannot
sustain the rejection of claim 1 under Section 103.
Claims 6 and 11
Independent claims 6 and 11 recite methods requiring the student to
one of purchase a new copy of the academic text and remit a separate
payment when establishing acquisition of the academic text that is not a new
copy in order to gain access to the discussion board and not forfeit the
predetermined percentage of the final grade as established in the licensee's
syllabus.
The Examiner rejected the claim over Drimmer and Stefik, but
asserted in order to gain access to the discussion board and not forfeit the
predetermined percentage of the final grade as established in the licensee's
syllabus “is a statement of intended use. ‘While features of an apparatus
may be recited either structurally or functionally, claims directed to an
apparatus must be distinguished ...’” (Ans. 16-18).
Appellant argues “claim 6 is a method claim so that MPEP 2114 does
not apply” (Appeal Br. 22). Appellant goes on to argue that several
limitations of the method claim are not disclosed by Drimmer or Stefik.
(Appeal Br. 21-22).
We agree with Appellant, because claims 6 and 11 are method claims,
not apparatus claims, and thus the claim language cannot be considered
functional language because the claim is a required by the method. We also
find that, although Drimmer discloses reference to a textbook (FF 2), and
Stefik discloses purchase of usage rights for the digitally-ended book (FF 3),
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neither even together Drimmer nor Stefik disclose the claim requirement
requiring the student to one of purchase a new copy of the academic text and
remit a separate payment when establishing acquisition of the academic text
that is not a new copy in order gain access to the discussion board and not
forfeit the predetermined percentage of the final grade as established in the
licensee's syllabus, as similarly set forth above at claim 1. We therefore
cannot sustain the rejection of either claim.
Claim 12
Appellant argues “Neither Drimmer nor Stefik discloses ‘performing a
computer-based search for a citation to a trademarked academic text in a
plurality of course syllabi’” (Appeal Br. 27).
We agree with Appellant, because we do not find this limitation
disclosed or made obvious by the combination of Drimmer and Stefik. We
therefore cannot sustain the rejection.

CONCLUSIONS OF LAW
The Examiner erred in rejecting claims 1, 6, and 11 under 35 U.S.C.
§ 101 as reciting ineligible subject matter.
The Examiner did not err in rejecting claim 12 under 35 U.S.C. § 101
as reciting ineligible subject matter.
The Examiner erred in rejecting claims 1 and 6 under 35 U.S.C. § 112
Second Paragraph.
The Examiner erred in rejecting claims 1, 6, 11, and 12 under 35
U.S.C. § 103(a) over Drimmer and Stefik.

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DECISION
For the above reasons, the Examiner’s rejections of claims 1, 6, and
11 are REVERSED. The Examiner’s rejection of claim 12 under 35 U.S.C.
§ 101 is AFFIRMED. The Examiner’s rejection of claim 12 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

MP