Ex Parte Whitson et al

Board of Patent Appeals and Interferences

Oct 27, 2010

11228129 (B.P.A.I. Oct. 27, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
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.
11/228,129 09/16/2005 Andrea Whitson L0632.70093US00 8878
23628 7590 10/28/2010
WOLF GREENFIELD & SACKS, P.C.
600 ATLANTIC AVENUE
BOSTON, MA 02210-2206
EXAMINER
MEYERS, MATTHEW S
ART UNIT PAPER NUMBER
BPAI
MAIL DATE DELIVERY MODE
10/28/2010 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)
The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte ANDREA WHITSON and PAUL J. DELIA
____________

Appeal 2009-009599
Application 11/228,129
Technology Center 3600
____________

Before, MURRIEL E. CRAWFORD, ANTON W. FETTING, and
JOSEPH A. FISCHETTI, Administrative Patent Judges.

FISCHETTI, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2009-009599
Application 11/228,129

2
STATEMENT OF THE CASE
Appellants seek our review under 35 U.S.C. § 134 of the Examiner’s
final rejection of claim 1. We have jurisdiction under 35 U.S.C. § 6(b)
(2002).

SUMMARY OF DECISION
We AFFIRM.

THE INVENTION
Appellants claim a method for remotely transmitting X-ray data over a
communication channel to enable remote access to and analysis to that data.
(Specification 1: 20-23)
Claim 1, reproduced below, is representative of the subject matter on
appeal.
1. A method for ensuring airline safety while safeguarding
personal passenger information comprising the steps of:
collecting personal passenger information by a first agency;
storing the personal passenger information;
giving access to the personal passenger information only to
members of the first agency;
generating anonymous data representing a threat risk based on a
set of predefined criteria associated with the personal passenger
information; and
providing the anonymous data to a second agency in charge of
airline security.

Appeal 2009-009599
Application 11/228,129

3
THE REJECTIONS
The Examiner relies upon the following as evidence of
unpatentability:
Sehr US 6,910,628 B1 Jun 2, 2005

The following rejections are before us for review.
The Examiner rejected claim 1 under 35 U.S.C. § 112, first paragraph,
as failing to comply with the enablement requirement.
The Examiner rejected claim 1 under 35 U.S.C. § 101 as being patent
ineligible.
The Examiner rejected claim 1 under 35 U.S.C. § 35 U.S.C. § 102(b)
as being anticipated by Sehr.
ISSUE
Did the Examiner err in rejecting claim 1 on appeal under 35 U.S.C. §
102(b) as being anticipated by Sehr on the grounds that while the TRAVEL
CENTER in Sehr allows access to information as would a travel agent, the
TRAVEL CENTER thus does not meet the limitation of giving access to the
personal passenger information only to members of the first agency because
passenger lists are also made known, for example, to the airline on which
travel is booked.
Appeal 2009-009599
Application 11/228,129

4
Did the Examiner err in rejecting claim 1 on appeal as being
unpatentable under 35 U.S.C. 112, first paragraph, as failing to comply with
the enablement requirement.
Did the Examiner err in rejecting claim 1 on appeal as being
unpatentable under 35 U.S.C. § 35 U.S.C. § 35 U.S.C. § 101.
PRINCIPLES OF LAW
Enablement
“[T]o be enabling, the specification of a patent must teach those
skilled in the art how to make and use the full scope of the claimed invention
without ‘undue experimentation.’” In re Wright, 999 F.2d 1557, 1561 (Fed.
Cir. 1993). Factors to consider include “(1) the quantity of experimentation
necessary, (2) the amount of direction or guidance presented, (3) the
presence or absence of working examples, (4) the nature of the invention, (5)
the state of the prior art, (6) the relative skill of those in the art, (7) the
predictability or unpredictability of the art, and (8) the breadth of the
claims.” In re Wands, 858 F.2d 731, 737 (Fed. Cir. 1988).

FINDINGS OF FACT
We find the following facts by a preponderance of the evidence:
1. The Examiner found that Sehr discloses “giving access to the
personal passenger information only to members of the first agency (Sehr
col. 4, lines 48-58, ‘The TRAVEL CENTER’)”. (Answer 6)
Appeal 2009-009599
Application 11/228,129

5
2. Sehr, at col. 4 lines 48-57, discloses:

The TRAVEL CENTER (2) provides the computerized means
for the compilation and automated issuance of passenger cards
and means for loading into the cards appropriate use rights,
including electronic admission or passage right for passengers.
For example, the center can simulate and implement the tasks
performed by the ticket vending machines installed at passenger
stations, as well as the control functions exercised by the related
entrance/exit gates. The center can also emulate a travel
agent/office or any other market of travel information.

3. The Examiner found that “applicant's specification adds no
additional guidance and direction as to how to generate anonymous data
representing a threat risk since it's [(sic its)] only reference to selecting these
predefined criteria is a half of paragraph on the last page of the
specification….” (Answer 8)
4. The Examiner found that “…applicant's claims are directed to
broad concepts defined by examples and generalities, with an infinite variety
of possible ways to chose [(sic, to)]generate anonymous data representing a
threat risk based on a set of predefined criteria associated with the personal
passenger information in an infinite variety of ways.” (Answer 9)
5. The Examiner found that “[s]ince applicant has not given sufficient
guidance and direction in the form of some objective selection criteria, two
similarly situated people, given the same personal passenger information,
would not be generate [(sic, ing)] anonymous data conforming to this
Appeal 2009-009599
Application 11/228,129

6
requisite criteria in a concrete and repeatable manner without undue
experimentation. Id.
6. The Examiner found that “[t]he users of the invention must
conduct a great deal of experimentation on their part in order to use the
invention so as to become the inventors of their own application of the
invention rather than the applicant.” (Answer 8-9)

ANALYSIS
We affirm the rejection of claim 1 under 35 U.S.C. § 101, and reverse
as to the rejections made under 35 U.S.C. 112, first paragraph and 35 U.S.C.
§ 102 (b).
The 35 U.S.C. 112, first paragraph rejection
In applying the Wands factors the Examiner provided sufficient
findings for: (1) the quantity of experimentation necessary, (2) the amount
of direction or guidance presented, (4) the nature of the invention, (7) the
predictability or unpredictability of the art, and (8) the breadth of the claims.
(FF 3-6).
However, the Examiner made no findings to Wands factors: (3) the
presence or absence of working examples, (5) the state of the prior art, and
(6) the relative skill of those in the art. The Examiner’s statement of “a lack
of art on point” (Answer 10) does not describe the state of the prior art, it
only describes that none was developed in the record. We thus find that the
relative skill of those in the art cannot be ascertained from the Examiner’s
Appeal 2009-009599
Application 11/228,129

7
findings given that the Examiner did not make use of any prior art to
describe the state of the art except to say, none was on point. A suitable
finding here would have been to address the closest prior art. Accordingly,
we will not sustain the Examiner’s rejection of claim 1 under 35 U.S.C. 112,
first paragraph.
The 35 U.S.C. § 101 rejection
The Examiner rejected claim 1 under 35 U.S.C. 101 because “[i]n
order for a method to be considered a "process" under §101, a claimed
process must either: (1) be tied to another statutory class (such as a particular
apparatus) or (2) transform underlying subject matter (such as an article or
materials).” (Answer 4-5)
The factors relevant in this case are the lack of recitations in the
claims to a machine or transformation and that the claims are mere
statements of a general concept. “This Court's precedents establish that the
machine-or-transformation test is a useful and important clue, an
investigative tool, for determining whether some claimed inventions are
processes under § 101.” Bilski and Kapos, 130 S.Ct 3218 at 3227 (2010).
There is no recitation in the claim of a machine, expressly or
inherently.
There is no claim recitation of a transformation, expressly or
inherently.
As we have reasonably broadly construed it, the claim is a mere
statement of the general concept of ensuring airline safety while
Appeal 2009-009599
Application 11/228,129

8
safeguarding personal passenger information. The items listed in the claim
do no more than iterate mental steps of storing information, restricting
access to the personal passenger information – keeping a secret; assessing
the information and naming it as only the storing person knows, e.g.,
generating anonymous data representing a threat risk based on a set of
predefined criteria associated with the personal passenger information; and
telling someone else about the information e.g., providing the anonymous
data to a second agency in charge of airline security.
Thus, the claim covers any use of the concept of assuring airline
safety while safeguarding personal passenger information, known and
unknown. The steps could be performed by any machine, existing or future-
devised. Furthermore, the processes as claimed could be accomplished by
human activity alone, including through mental processes. In the words of
Gottschalk v. Benson, 409 U.S. 63, 72 (1972), the claimed processes “would
wholly pre-empt [airline safety while safeguarding personal passenger
information] and in practical effect would be a patent on the [concept]
itself.”
Therefore, we will sustain the rejection of claim 1 under 35 U.S.C.
§ 35 U.S.C. § 101. “A principle, in the abstract, is a fundamental truth; an
original cause; a motive; these cannot be patented, as no one can claim in
either of them an exclusive right.” Gottschalk v. Benson, 409 U.S. 63, 67
(C.C.P.A. 1972).

Appeal 2009-009599
Application 11/228,129

9
The rejection under 35 U.S.C. § 102(b).
Claim 1 requires collecting personal passenger information by a first
agency; storing the personal passenger information; giving access to the
personal passenger information only to members of the first agency.
The Examiner found that Sehr discloses “giving access to the personal
passenger information only to members of the first agency (Sehr col. 4, lines
48-58, ‘The TRAVEL CENTER’)” (FF 1)
Appellants assert:
… [T]he TRAVEL CENTER described in col. 4,
lines 48- 58 discloses "giving access to the
personal passenger information only to members
of the first agency." Not only is it unclear what is
being interpreted as the "personal passenger
information," but it is not clear who or what is
being considered the first agency and how access
is being given only to members of this first agency.
The Office Action provides no indication of what
disclosure is being matched up with each element
of the claim.
(Appeal Br. 13)
Our review of Sehr at this section finds no reference to limiting access
to information except for loading information onto a passenger card (FF 2).
In fact, the excerpt states that the station can emulate “any other marketer of
travel”. We interpret this to mean that the TRAVEL CENTER allows access
to information as would a travel agent, which does not meet the limitation of
giving access to the personal passenger information only to members of the
first agency because passenger lists are also made known for example, to the
Appeal 2009-009599
Application 11/228,129

10
airline on which travel is booked. Therefore we will not sustain the rejection
under 35 U.S.C. § 102(b).
Moreover, the Examiner interprets the claim as having the first
agency, after collecting personal passenger information, to “provide it to a
second agency” (Ans. 25) which is presumably why the Examiner does not
address the requirement that the access to the personal passenger
information be given only to members of the first agency. This
interpretation however is not what the claim recites in that the personal
passenger information is only accessible to members of the first agency.

CONCLUSIONS OF LAW
We conclude the Appellants have shown that Examiner erred in
rejecting claim 1 under 35 U.S.C. 112, first paragraph, as failing to comply
with the enablement requirement.
We conclude the Appellants have not shown that the Examiner erred
in rejecting claim 1 under 35 U.S.C. § 35 U.S.C. § 35 U.S.C. § 101.
We conclude the Appellants have shown that the Examiner erred in
rejecting claim 1 under 35 U.S.C. § 35 U.S.C. § 102(b) as being anticipated
by Sear.
Appeal 2009-009599
Application 11/228,129

11
DECISION
The decision of the Examiner to reject claim 1 is AFFIRMED.

MP

WOLF GREENFIELD & SACKS, P.C.
600 ATLANTIC AVENUE
BOSTON MA 02210-2206