Ex Parte Austin et al

Patent Trial and Appeal BoardMay 6, 2013

10380663 (P.T.A.B. May. 6, 2013)

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. 10/380,663 07/21/2003 Simon Anthony Austin 2003-1695.ORI 2314 7590 05/07/2013 Mark J Burns Haugen Law Firm 1130 Tcf Tower 121 South Eighth Street Minneapolis, MN 55402 EXAMINER LU, CHARLES EDWARD ART UNIT PAPER NUMBER 2161 MAIL DATE DELIVERY MODE 05/07/2013 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 PATENT TRIAL AND APPEAL BOARD ____________ Ex parte SIMON ANTHONY AUSTIN, PAUL RICHARD WASKETT, ANDREW NOEL BALDWIN, and JOHN LESLIE STEELE ____________ Appeal 2010-012516 Application 10/380,663 Technology Center 2100 ____________ Before JOSEPH L. DIXON, ST. JOHN COURTENAY III, and CARLA M. KRIVAK, Administrative Patent Judges. COURTENAY, Administrative Patent Judge. DECISION ON APPEAL Appeal 2010-012516 Application 10/380,663 2 STATEMENT OF THE CASE The Patent Examiner finally rejected claims 1-5 and 7-35. Claim 6 has been withdrawn. (App. Br. 2). Appellants appeal therefrom under 35 U.S.C. Â§ 134(a). We have jurisdiction under 35 U.S.C. Â§ 6(b). We affirm-in-part. INVENTION This invention "relates to software-based tools for automatically assisting in complex problem solving, in particular though not exclusively in which the problem solving represents design or design planning processes. The problem solving, or design/design planning processes may relate to a wide variety of industrial sectors, such as the design of a building, an automobile or other complex structure." (Spec. 1). Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. Apparatus for assisting in the optimisation of a complex, hierarchical data structure comprising a plurality of elements each having data dependency upon other elements within a hierarchy, the apparatus comprising: database means for maintaining a data set incorporating information relating to a plurality of dependency structure matrices corresponding to different hierarchical levels and comprised of elements, said elements comprising first-level elements occupying a first one of the hierarchical levels and second-level elements occupying a second one of the hierarchical levels lower than the first level, wherein the second-level elements comprise second-level groups individually associated with the first-level elements, with each second-level group having one or more second-level elements representing sub-tasks comprised within a task represented by the associated first-level element, said dependency structure matrices including dependency structure matrices whose Appeal 2010-012516 Application 10/380,663 3 elements exhibit future dependencies regardless of how the elements are sequenced, each dependency structure matrix corresponding to one of the hierarchical levels in the data set and each dependency structure matrix providing an indication of whether the data dependency of each element is dependent on information produced by an element representing an earlier, past activity or is dependent on information produced by an element representing a future activity; display means for displaying, to a user, a representation of said dependency structure matrices at said different hierarchical levels; user input means for effecting a change of a data dependency of a selected element at any selected level in said hierarchy; and data manipulation means, responsive to a change in data dependency of a selected element occupying a selected one of the first and second hierarchical levels, for automatically effecting changes in the data set representing changes in dependencies of elements throughout the hierarchical structure including a change in data dependency to an element associated with the selected element and occupying the one of said first and second hierarchical levels other than said selected level, consequential on the change in data dependency of said selected element at said selected level in the hierarchy; wherein said data manipulation means comprises means for applying a protocol for effecting changes to grouped dependencies of the second-level elements of a given one of the second-level groups consequent on a change of a dependency for the associated one of the first-level elements. REJECTIONS 1. Claims 1-5, 7-28, 31-33, and 35 stand rejected under 35 U.S.C. Â§ 101 as directed to non-statutory subject matter. Appeal 2010-012516 Application 10/380,663 4 2. Claim 34 stands rejected under 35 U.S.C. Â§ 112, second paragraph, as indefinite for failing to particularly point out and distinctly claim the subject matter of the invention. 3. Claims 1, 2, 4, 5, 9, 10, 12, 13, 18, 21-23, 28-30, 34, and 35 stand rejected under 35 U.S.C. Â§ 102(b) as being anticipated by Rask and Sunnersjo, "Design Structure Matrices for the Planning of Rule-Based Engineering Systems," Changing the ways we work: shaping the ICT- solutions for the next century: proceedings of the Conference on Integration in Manufacturing, 349-358 (IOS Press 1998) ("Rask"). 4. Claims 3, 7, 8, and 16 stand rejected under 35 U.S.C. Â§ 103(a) as unpatentable over Rask. 5. Claims 11, 14, 15, 17, 25, and 27 stand rejected under 35 US.C. Â§ 103(a) as unpatentable over Rask in view of Austin, "Analytical Design Planning Technique (ADePT): A Dependency Structure Matrix Tool to Schedule the Building Design Process," 18 Construction Management and Economics 173-182 (2000) ("Austin"). 6. Claims 19 and 31-33 stand rejected under 35 US.C. Â§ 103(a) as unpatentable over Rask in view of US. Patent 5,255,356 ("Michelman"). 7. Claim 24 stands rejected under 35 U.S.C. Â§ 103(a) as unpatentable over Rask in view of Sabbaghian and Eppinger, "Production Development Process Capture and Display using Web-Based Technologies," Proceedings Appeal 2010-012516 Application 10/380,663 5 of the 1998 IEEE International Conference on Systems, Man, and Cybernetics, 2664-2669 (1998). ("Sabbaghian") 8. Claim 26 stands rejected under 35 US.C. Â§ 103(a) as unpatentable over Rask in view of Austin and further in view of Sabbaghian. 9. Claim 20 stands rejected under 35 US.C. Â§ 103(a) as unpatentable over Rask in view of Michelman and further in view of US. Patent 6,028,602 ("Weidenfeller"). ANALYSIS Rejection under Â§ 101 Issue: Under Â§ 101, did the Examiner err in concluding that the scope of claims 1-5, 7-28, 31-33, and 35 covers non-statutory subject matter? The Examiner grounds this rejection on multiple dependent claim 35, which recites: "[a] computer program adapted, when loaded into computer apparatus, to realize the apparatus of any one of claims 1 to 28, 31, 32 and 33." (Ans. 16). The Examiner concludes that "[c]laim 35 is drawn to a computer program, rather than any hardware apparatus on which it may be loaded. Thus, claim 35 is reasonably understood to encompass software per se, which is not one of the statutory categories of invention." (Id.). Appellants disagree. Appellants note that "[c]laim 35 incorporates, along with its specific content, the subject matter of the claims on which it depends. The converse is not true. Claim 1, for example, does not incorporate the subject matter of Claim 35." (App. Br. 17). Appeal 2010-012516 Application 10/380,663 6 Assuming arguendo that claim 35 is a proper multiple dependent claim, we agree with Appellants that it includes the subject matter of the claims from which it depends. (See App. Br. 17).1, 2 See also 35 U.S.C. Â§ 112(e): (e) REFERENCE IN MULTIPLE DEPENDENT FORM.â€”A claim in multiple dependent form shall contain a reference, in the alternative only, to more than one claim previously set forth and then specify a further limitation of the subject matter claimed. A multiple dependent claim shall not serve as a basis for any other multiple dependent claim. A multiple dependent claim shall be construed to incorporate by reference all the limitations of the particular claim in relation to which it is being considered.3 1 An argument can be made that claims drafted in the form of Appellantsâ€™ claim 35 should be considered as quasi-independent claims which may present Â§ 112, second paragraph issues (e.g., as a hybrid claim), in addition to the Â§ 101 issue considered here. However, we need not reach this issue to decide the Â§ 101 issue before us in this appeal. We express no opinion regarding this alternative claim construction, although from the record it appears the Examiner may be interpreting multiple-dependent claim 35 as a limiting preamble of a base claim. (Ans. 4, 17). 2 A counter argument can be made that multiple dependent claim 35 is not a proper dependent claim because it arguably does not specify a further limitation of the subject matter of claim 1, but instead broadens the subject matter of claim 1 to extend the scope of coverage to a computer program embodiment not within the scope of apparatus claim 1. See Pfizer Inc. v. Ranbaxy Labs. Ltd., 457 F.3d 1284, 1292 (Fed. Cir. 2006) (when a claim relying on another claim â€œfails to â€˜specify a further limitation of the subject matterâ€™ of the [another] claim to which it refers because it is completely outside the scope of [the another claim,]â€ such claim is invalid under 35 U.S.C. Â§ 112, fourth paragraph.). 3 Amended Sept. 16, 2011, Leahy-Smith America Invents Act, Pub. L. No. 112-29, sec. 4(c), 125 Stat. 284 (effective Sept. 16, 2012). Appeal 2010-012516 Application 10/380,663 7 However, we conclude that multiple dependent claim 35 further limits the subject matter of the claims from which it depends to a non-statutory embodiment (software per se).4 For example, we conclude that apparatus claim 1 includes software components as well as hardware components (display means). Thus, multiple-dependent claim 35 further limits the scope of claim 1 to only a computer program embodiment. Even if arguendo the scope of claim 35 covers both statutory embodiments (e.g., the apparatus and display means of claim 1) and non-statutory embodiments (software per se), it is non-statutory.5 Thus, we find Appellantsâ€™ arguments unavailing regarding claim 35. We acknowledge that our reviewing courts have never directly addressed the issue of whether software per se is statutory subject matter as a holding. However, our reviewing courts guide that disembodied software in itself, with no structural tie to an article of manufacture, machine, process or composition of matter, is not patentable subject matter. "Abstract software code is an idea without physical embodiment." Microsoft Corp. v. AT&T Corp., 550 U.S. 437, 449 (2007). Because software per se is directed to an abstract idea, we conclude it is non-statutory under 35 U.S.C. Â§ 101. 4 See also 37 C.F.R. 1.75(c) and MPEP Â§608.01(n)(I) regarding multiple dependent claims. 5 "The four categories [of Â§ 101] together describe the exclusive reach of patentable subject matter. If a claim covers material not found in any of the four statutory categories, that claim falls outside the plainly expressed scope of Â§ 101 even if the subject matter is otherwise new and useful." In re Nuijten, 500 F.3d 1346, 1354 (Fed. Cir. 2007). Appeal 2010-012516 Application 10/380,663 8 As the Supreme Court has made clear, "[a]n idea of itself is not patentable." In re Warmerdam, 33 F.3d 1354, 1360 (quoting Rubber-Tip Pencil Co. v. Howard, 87 U.S. (20 Wall.) 498, 507 (1874)). See also MPEP Â§ 2106(I)(vi) (examples of claims that are not directed to one of the statutory categories: "a computer program per se") (citing Gottschalk v. Benson, 409 U.S. 63, 72 (1972)).6 Given the aforementioned guidance, we conclude that disembodied software per se or a disembodied computer program per se does not fall within a statutory class (i.e., is not a process, machine, manufacture, or composition of matter). Under a broad but reasonable construction, we conclude claim 35 is directed to a disembodied computer program per se that is coupled with a statement of intended use which is not positively recited as actually occurring ("A computer program adapted, when loaded into computer apparatus . . . ." (Emphasis added)). Therefore, we sustain the Examinerâ€™s Â§101 rejection of claim 35. In contrast, we conclude that the scope of claims 1-5, 7-28, and 31-33 covers statutory subject matter, at least because the respective base claims (1, 28, 31) are each directed to an apparatus that comprises a display means. We find numerous portions of the Specification describe display functions that we find necessarily require a hardware display viewable by the user. See e.g., Spec. 13, ll. 29-3, "the problem hierarchy is immediately displayed or displayable at all levels so that the user can readily visualise and understand 6 Cf. Disembodied software (i.e., software per se not fixed in a tangible medium of expression) does not qualify for intellectual property protection under copyright law. See 17 U.S.C. Â§102(a) ("Copyright protection subsists, in accordance with this title, in original works of authorship fixed in any tangible medium of expression . . . .") (Emphasis added). Appeal 2010-012516 Application 10/380,663 9 the changes that have been introduced." Therefore, for at least this reason, we reverse the Examinerâ€™s rejection under Â§ 101 for claims 1-5, 7-28, and 31-33. Rejection under Â§112, second paragraph Issue: Under Â§112(b), did the Examiner err in concluding that the scope of multiple dependent claim 34 is indefinite? Claim 34 recites: "[t]he process of claim 29 or claim 30, further comprising loading a computer program onto a computer, said program when so loaded being adapted to make the computer execute the procedure of claim 30 or claim 29." (Emphasis added). The Examiner rejected claim 34 under 35 U.S.C. Â§112, second paragraph, as indefinite for failing to particularly point out and distinctly claim the subject matter of the invention. (Ans. 4). In particular, the Examiner contends: "As to claim 34, the claim uses the terms 'the process' and 'the procedure' of a parent claim. It is unclear whether or not these terms are intended to refer to "the method" of the parent claim." (Id.). Appellants disagree: Given that the words "process" and "method" are considered interchangeable, and the fact that the phrase occurs in the preamble, the intention to refer to the parent claim is clear. As to "the procedure," this phrase has been present in the claim since the application was filed. The examiner has failed to explain his recent discovery of the alleged lack of clarity. (App. Br. 18-19). We observe the preambles of independent claims 29 and 30 are each directed to a method. Our reviewing court guides that, if there is not explicit App App antec be de those Inc. (cita impl 810 wou the s antec 71. Â§112 expr with of in eal 2010-0 lication 10 edent bas finite, "[i] skilled in vs. Int'l Tr tion omitte ication. S F.2d 1113 Here, we ld be reaso teps of the edent bas According , second p Issue: U essly or in da depende the first effecting depende includin with the and seco consequ element in the mea dependent 12516 /380,663 is for a lim f the scop the art, th ade Comm d). More limfold Ma , 1116 (Fe conclude nably asce respectiv is is not re ly, we rev aragraph, Antic nder Â§ 10 herently d ta manipu ncy of a s and sec changes ncies of e g a change selected nd hierar ential on th at said sel ning of ind claims 28 itation in e of a claim en the clai 'n., 435 F over, antec nufacturin d. Cir. 198 that the sc rtainable b e methods quired. Se erse the Ex as being in ipation Rej 2(b), did th iscloses: lation mea elected el ond hiera in the d lements th in data de element an chical lev e change ected level ependent -30? 10 the claim, would b m is not in .3d 1366, edent bas g Co., Inc 7). ope of the y those sk of base cla e Energize aminer's r definite. ection und e Examin ns, respon ement occ rchical le ata set r roughout pendency d occupy els other in data dep in the hie claim 1, a the scope e reasonab definite." 1370-71 (F is can be p . v. Kinkea "procedu illed in th ims 29 an r Holding ejection o er Â§ 102( er err in fi sive to a upying a s vels, for epresentin the hierarc to an elem ing the on than said endency o rarchy, nd the com of the clai ly ascerta Energize ed. Cir. 20 resent by d Industr re" of claim e art to ref d 30. Lite s, 435 F.3 f claim 35 b) nding that change in elected on automati g change hical stru ent assoc e of said selected l f said sele mensurat m may stil inable by r Holdings 06) ies, Inc., 34 er back to ral d at 1370- under Rask data e of cally s in cture iated first evel, cted e language l Appeal 2010-012516 Application 10/380,663 11 In reviewing the record, we agree with Appellantsâ€™ principal contention regarding the portions of Rask relied upon by the Examiner: The [E]xaminer relies on an alleged "dependency change" in task 7: from depending on tasks 2, 3, and 6 (Figure 5), to depending on tasks 2 and 5 (Figure 6). Task 7 in Figure 6, however, is not the same task as task 7 in Figure 5. Due to re-sequencing, "task 7" in Figure 5 becomes "task 14" in Figure 6. In other words, task 7 in Figure 5 and task 14 in Figure 6 are the same task. In Figure 6, task 14 depends on tasks 2, 3, and 7. When re-sequencing is taken into account, task 2 is the same in both figures; task 3 in Figure 5 is task 7 in Figure 6; and task 6 in Figure 5 is task 3 in Figure 6. Thus, task 14 in Figure 6 is the same as task 7 in Figure 5. The three tasks on which it depends are the same. Had the matrices in Rask included an "element number" column along with the "position" number column already present, the reordered sequence of elements in Figure 6 would read as follows: 1,2, 7, 16, 13, 3, 14, 17, 4, 8, 5, 6, 9, 10, 11, 15, and 12. With this sequence is used to properly associate the elements in Figure 6 with the elements in Figure 5, it becomes readily apparent that each element, after partitioning, depends on the same elements that it depended on before partitioning. (App. Br. 21-22). "[A]bsence from the reference of any claimed element negates anticipation." Kloster Speedsteel AB v. Crucible, Inc., 793 F.2d 1565, 1571 (Fed. Cir. 1986). Therefore, for essentially the same reasons argued by Appellants, we reverse the Examiner's anticipation rejection of claim 1, and of independent claims 28-30, which recite the aforementioned disputed limitations in commensurate form. For the same reasons, we reverse the Appeal 2010-012516 Application 10/380,663 12 anticipation rejection over Rask of associated dependent claims 2, 4, 5, 9, 10, 12, 13, 18, 21-23, 34, and 35. Rejections under Â§103 Regarding the rejection of remaining independent claim 31 under Â§ 103, we agree with Appellants that the cited secondary Michelman references fails to overcome the deficiencies of Rask, as discussed above regarding independent claim 1: With respect to Claim 31, an independent claim, Michelman is said to disclose hiding and showing cells in a graphical user interface, and user input means for changing a portion displayed on the interface to enable showing or hiding elements of a hierarchy. With reference to the Claims Appendix and that part of the summary specific to Claim 31 (pages 13-15 above), Claim 31 is drawn to substantially the same subject matter as Claims 1 and 28-30. Regardless of the extent to which the Michelman patent might be said to disclose or suggest the features noted immediately above, it fails to compensate for the deficiencies in the Rask Article discussed in connection with Claim 1. (App. Br. 28). Therefore, for essentially the same reasons argued by Appellants, we reverse the Examiner's obviousness rejection of remaining independent claim 31. Regarding the remaining dependent claims rejected under Â§103, on this record, the Examiner has not established, and we do not find, that the relied upon secondary references overcome the aforementioned deficiencies with Rask regarding claim 31. Therefore, we reverse the Examinerâ€™s Â§ 103 rejections of the remaining dependent claims. Appeal 2010-012516 Application 10/380,663 13 DECISION We affirm the Examiner's rejection of claim 35 under Â§ 101. We reverse the Examiner's rejection of claims 1-5, 7-28, and 31-33 under Â§ 101. We reverse the Examiner's rejection of claim 34 under 35 U.S.C. Â§112, second paragraph. We reverse the Examiner's rejection of claims 1, 2, 4, 5, 9, 10, 12, 13, 18, 21-23, 28-30, 34, and 35 under Â§ 102. We reverse the Examiner's rejections of claims 3, 7, 8, 11, 14-17, 19, 20, 24-27, and 31-33 under Â§ 103. No time for taking any action connected with this appeal may be extended under 37 C.F.R. Â§ 1.136(a)(1)(iv). AFFIRMED-IN-PART peb