10094874 (B.P.A.I. May. 18, 2011)

Ex Parte Watrous

Board of Patent Appeals and InterferencesMay 18, 2011

10094874 (B.P.A.I. May. 18, 2011)

UNITED STATES PATENT AND TRADEMARKOFFICE 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. 10/094,874 03/11/2002 Leslie P. Watrous WATROU-38539 6058 26252 7590 05/18/2011 KELLY LOWRY & KELLEY, LLP 6320 CANOGA AVENUE SUITE 1650 WOODLAND HILLS, CA 91367 EXAMINER SEREBOFF, NEAL ART UNIT PAPER NUMBER 3626 MAIL DATE DELIVERY MODE 05/18/2011 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 BOARD OF PATENT APPEALS AND INTERFERENCES ____________ Ex parte LESLIE P. WATROUS ____________ Appeal 2009-011217 Application 10/094,874 Technology Center 3600 ____________ Before HUBERT C. LORIN, JOSEPH A. FISCHETTI, and BIBHU R. MOHANTY, Administrative Patent Judges. MOHANTY, Administrative Patent Judge. DECISION ON APPEAL Appeal 2009-011217 Application 10/094,874 2 STATEMENT OF THE CASE The Appellant seeks our review under 35 U.S.C. § 134 (2002) of the final rejection of claims 2-16 and 19-23 which are all the claims pending in the application. We have jurisdiction under 35 U.S.C. § 6(b) (2002). SUMMARY OF THE DECISION We REVERSE. THE INVENTION The Appellant’s claimed invention is directed to a process for inspecting, certifying, and repairing roofs (Spec. 2:15-17). Claim 20, reproduced below with the numbering in brackets added, is representative of the subject matter of appeal. 20. A process for granting a whole roof certification for a predetermined certification period for a preexisting roof, comprising the steps of: [1] inspecting the roof to determine if the roof will be in sufficient condition to be repaired during the certification period if the roof leaks during the certification period; [2] inspecting the roof to determine if the roof in its current condition leaks, [3] and if it is determined that the roof leaks in its current condition: i) preparing an estimate of the repairs needed to fix the roof leak; ii) approving the repairs; and iii) completing the approved repairs so that the roof does not leak; inspecting the roof to determine whether the roof has a Appeal 2009-011217 Application 10/094,874 3 likelihood of leaking during the certification period, and [4] if it is determined that the roof has a likelihood of leaking during the certification period: i) preparing an estimate of the repairs needed to place the roof in condition so that it does not have a likelihood of leaking during the predetermined certification period; ii) approving the repairs; and iii) completing the approved repairs; and granting a whole roof certification for the preexisting roof for the predetermined certification period. THE REJECTIONS The Examiner relies upon the following as evidence in support of the rejections: Cassella US 3,791,097 Feb. 12, 1974 Davis US 4,317,996 Mar. 2, 1982 The following rejections are before us for review: 1. Claims 2-16 and 19-23 are rejected under 35 U.S.C. § 101 as being directed to non-statutory subject matter. 2. Claims 2-16 and 19-23 are rejected under 35 U.S.C. § 112, second paragraph, as being indefinite. 3. Claims 2-16 and 19-231 are rejected under 35 U.S.C. § 103(a) under Davis and Cassella. 1 The Examiners Answer at pages 14-15 refers to claim 24 in this rejection but this is presumed to be a typographical error meant to be claim 23. The Appeal 2009-011217 Application 10/094,874 4 THE ISSUES At issue is whether the Appellant has shown that the Examiner erred in making the aforementioned rejections. With regards to the rejections under 35 U.S.C. § 101 this issue turns on whether the Examiner has presented a prima facie case in the analysis. With regards to the rejections under 35 U.S.C. § 112, second paragraph, this issue turns on whether those skilled in the art would understand what is claimed when the claim is read in light of the specification. With regards to the rejection of claim 20 under 35 U.S.C. § 103(a) this issue turns on whether claim limitation [1] is shown by the cited prior art. The rejection of the remaining claims under 35 U.S.C. § 103(a) turns on a similar issue. FINDINGS OF FACT We find the following enumerated findings of fact (FF) are supported at least by a preponderance of the evidence:2 FF1. Davis has disclosed a method for detecting water leaks in roofs by applying a fluorescent dye and shining a U/V light onto the underside of the Answer at pages 19-20 does refer to claim 23 and not claim 24 in this rejection. 2 See Ethicon, Inc. v. Quigg, 849 F.2d 1422, 1427 (Fed. Cir. 1988) (explaining the general evidentiary standard for proceedings before the Patent Office). Appeal 2009-011217 Application 10/094,874 5 roof and tracing the path of fluorescence to the zone of water leakage (Abstract). FF2. Davis at Col. 1:7-38 discloses that fluorescent dye is poured, sprayed, or doused onto the entire roof and that the path of leaked water is traced back to its origin by shining a light which induces fluorescence of the dye in the path of the leaked water. FF3. Davis at Col. 1:7-38 does not disclose: inspecting the roof to determine if the roof will be in sufficient condition to be repaired during the certification period if the roof leaks during the certification period. ANALYSIS Rejections under 35 U.S.C. § 101 The law in the area of patent-eligible subject matter for process claims has recently been clarified by the Supreme Court in Bilski v. Kappos, 130 S. Ct. 3218, No. 08-964, 2010 WL 2555192 (U.S. June 28, 2010). The Court held that the term “process” as used in 35 U.S.C. § 101, does not categorically exclude business methods. Id. at 3228. The Court is unaware of any argument that the “ordinary, contemporary, common meaning,” Diehr, supra, at 182, of “method” excludes business methods. Nor is it clear how far a prohibition on business patents would reach, and whether it would exclude technologies for conducting a business more efficiently. “At the same time, some business method patents raise special problems in terms of vagueness and suspect validity.” Id at3229. (citing eBay Inc. v. MercExchange, L.L.C., 547 U.S. 388, 397 (2006)) (Kennedy, J., concurring). In searching for a limiting principle, this Court’s precedents on the unpatentability of abstract ideas provide useful tools. See infra 12- Appeal 2009-011217 Application 10/094,874 6 15. Indeed, if the Court of Appeals were to succeed in defining a narrower category or class of patent applications that claim to instruct how business should be conducted, and then rule that the category is unpatentable because, for instance, it represents an attempt to patent abstract ideas, this conclusion might well be in accord with controlling precedent. Id at 3229. The Examiner finds that the claimed process is not tied to a machine but the Examiner does not explain why this is so. See Answer 4-5. Nor is the conclusion of a lack of transformation explained. The initial burden of establishing that the claimed process is a patent-ineligible abstract idea based on these factors has not therefore been met. The Examiner rejected process claim 20 on the ground that it failed to pass the machine-or-transformation test. Notwithstanding that this test for determining patent eligibility of a process is unduly narrow (see Bilski v. Kappos, 130 S. Ct. 3218, No. 08-964, 2010 WL 2555192 (U.S. June 28, 2010), it can nevertheless be instructive as a factor in determining whether the claimed processes are patent-ineligible abstract ideas. Before we can determine whether a claimed process is an abstract idea, the broadest reasonable construction of the claim must first be established. See State St. Bank & Trust Co. v. Signature Fin. Group, 149 F.3d 1368, 1370 (Fed. Cir. 1998) (“whether the . . . patent is invalid for failure to claim statutory subject matter under 35 U.S.C. § 101 is a matter of both claim construction and statutory construction”). Here, a broadest reasonable construction of claim 20 for example has not been set forth in sufficient detail. For this reason, the rejection under 35 U.S.C. § 101 is not sustained. Appeal 2009-011217 Application 10/094,874 7 This reversal is further premised on the fact that the Examiner also did not apply a full analysis as outlined in Bilski v. Kappos which should have resulted in a finding by the Examiner that the claimed subject matter either was or was not an abstract idea, and hence, respectively, that the claimed subject matter was not patent eligible or was patent eligible. See Bilski v. Kappos, 130 S. Ct. 3218, No. 08-964, 2010 WL 2555192 (U.S. June 28, 2010). Rejections under 35 U.S.C. § 112, second paragraph The Examiner has rejected claims 2-16 and 19-23 under 35 U.S.C. § 112, second paragraph, as being indefinite (Ans. 5-6). In contrast, the Appellant has argued that this rejection is improper (Br. 16-19). We agree with the Appellant. The test for definiteness under 35 U.S.C. § 112, second paragraph, is whether “those skilled in the art would understand what is claimed when the claim is read in light of the specification.” Orthokinetics, Inc. v. Safety Travel Chairs, Inc., 806 F.2d 1565, 1576 (Fed. Cir. 1986) (citations omitted). The Examiner first asserts that the claims are indefinite because it is unclear if the claim limitation for “granting a whole roof certification” is “performed alone or in conjunction with the previous steps” (Ans. 5). We disagree because one of ordinary skill would understand what is being claimed with regard to this claim limitation when it is read in light of the Specification at Figure 1. Further, the claim is not indefinite in any manner for reciting “granting a whole roof certification” as asserted by the Examiner at page 5 of the Answer. Appeal 2009-011217 Application 10/094,874 8 The Examiner secondly asserts that there is no antecedent basis for “the certification period” (Ans. 4-5). We disagree as one of ordinary skill would understand that the cited phrase refers to the previously recited “predetermined certification period” in the preamble. The Examiner thirdly asserts that the claims 3-16 and 19 are indefinite because it does not cover situations where the roof does not leak (Ans. 5). We disagree as one of ordinary skill in the art would understand what is being claimed and that these are just further steps in the process if a leak does occur which does not render the claim indefinite. The Examiner fourthly asserts that claims 22-23 are indefinite because the limitations beginning with “determining that”, “determining if” and “completing insurance” only occur if the roof leaks. We disagree that these recitations render the claims indefinite as one on ordinary skill in the art would understand what is being claimed in these steps as part of the process. The Appellant is entitled to claim the invention broadly and need not claim every permutation in the method. For these reasons the rejection of claims under 35 U.S.C. § 112, second paragraph, is not sustained. Rejections under 35 U.S.C. § 103 (a) The Appellant argues that the rejection of claim 20 is improper because the cited prior art does not disclose claim limitation [1] as listed above (Br. 21-22, 24-25). Appeal 2009-011217 Application 10/094,874 9 In contrast, the Examiner has determined that the rejection of record is proper because claim limitation [1] contains optional claim language limitations since “if” statements are used (Ans. 6-8, 19-20). We agree with the Appellant. Claim limitation [1] requires: [1] inspecting the roof to determine if the roof will be in sufficient condition to be repaired during the certification period if the roof leaks during the certification period. (Claim 1). Here, the cited claim limitation [1] does not include conditional claim limitations. The claim limitation requires that the inspection is done to determine if the roof will be in sufficient condition to be repaired during the certification period if the roof leaks during the certification period regardless of whether the leak occurs or not in some manner. The portions of Davis in the prior art which been cited by the Examiner fail to disclose this feature (FF3) and the rejection of record is therefore not sustained. Further, the claim limitation specifically refers to a “certification period” and Davis fails to disclose this at the portions cited by the Examiner as well (FF3). While claim limitations [3] and [4] in claim 20 contain conditional language this issue with regards to the rejection is not necessary to be reached since the cited claim limitation [1] has not been shown in the prior art as asserted by the Examiner (FF3). For these reasons the rejection of claim 20 and its dependent claims is not sustained. Claims 22-23 contain a similar claim limitation and the rejection of these claims is not sustained for these same reasons Appeal 2009-011217 Application 10/094,874 10 CONCLUSIONS OF LAW We conclude that Appellant has shown that the Examiner erred in rejecting claims 2-16 and 19-23 under 35 U.S.C. § 101 as being directed to non-statutory subject matter. We conclude that Appellant has shown that the Examiner erred in rejecting claims 2-16 and 19-23 under 35 U.S.C. § 112, second paragraph, as being indefinite. We conclude that Appellant has shown that the Examiner erred in rejecting claims 2-16 and 19-23 under 35 U.S.C. § 103(a) under Davis and Cassella. DECISION The Examiner’s rejection of claims 2-16 and 19-23 is reversed. REVERSED MP