Ex Parte Nachlieli et alDownload PDFPatent Trial and Appeal BoardApr 18, 201310919671 (P.T.A.B. Apr. 18, 2013) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________________ Ex parte HILA NACHLIELI, CARL STAELIN, MANI FISCHER, DORON SHAKED, and PAVEL KISILEV ____________________ Appeal 2009-011395 Application 10/919,671 Technology Center 2600 ____________________ Before ALLEN R. MacDONALD, LINDA E. HORNER, SCOTT R. BOALICK, BRADLEY W. BAUMEISTER, and LYNNE E. PETTIGREW, Administrative Patent Judges. MacDONALD, Administrative Patent Judge. DECISION ON APPEAL Appeal 2009-011395 Application 10/919,671 2 SUMMARY OF THE DECISION Prosecution and Appeal History Appellants appealed under 35 U.S.C. § 134(a) from rejections of claims 1-42. We have jurisdiction under 35 U.S.C. § 6(b). On June 25, 2008, the Examiner finally rejected claims 1-4, 8, 17-20, 23, 29, 30, and 33 under 35 U.S.C. § 102(b); finally rejected claims 1, 7, 9-17, 22, 24-29, 32, and 34-38 under 35 U.S.C. § 103(a); and indicated claims 5, 6, 21, 31, and 39-42 as allowable. On October 6, 2008, Appellants filed an appeal brief appealing from the final rejections under § 102(b) and § 103(a). On December 29, 2008, in the Examiner’s Answer, the Examiner maintained the rejections under § 102(b) and 103(a); and entered, pursuant to 37 C.F.R. § 41.39(b), several new grounds of rejection under 35 U.S.C. § 101 against all pending claims. (Ans. 10-13).1 On February 26, 2009, Appellants requested that the appeal be maintained by filing a reply brief appealing from the rejections under § 101 and continuing the appeal of the rejections under § 102(b) and § 103(a). (37 C.F.R. § 41.39(b)(2)). We review the appealed rejections for error based upon the issues identified by Appellants, and in light of the arguments and evidence produced thereon. Cf. Ex Parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (citing In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992)). 1 Method claims 1-16 and 39-42; machine claims 17-28; and machine- readable medium claims 29-38 were each grouped and rejected based on a separate and distinct § 101 new ground of rejection analysis in the Examiner’s Answer at pages 10-13. Appeal 2009-011395 Application 10/919,671 3 Summary of Our § 101 Method Claims Decision In the new grounds of rejection of method claims 1-16 and 39-42, the Examiner cites to the machine-or-transformation test of In re Bilski, 545 F.3d 943 (Fed. Cir. 2008), and states that “the instant claim(s) recite a series of steps or acts to be performed, the claim(s) neither [1] transform underlying subject matter nor [2] positively tie to another statutory category that accomplishes the claimed method steps.” (Ans. 11). Based on these two factors weighing against patent eligibility, the Examiner concludes that claims 1-16 and 39-42 “do not qualify as a statutory process” (Ans. 12), i.e., these claims are directed to an abstract idea. The Examiner does not set forth any other factors weighing either toward or against patent eligibility. In the Reply Brief, Appellants argue that the Examiner erred in the claim interpretation when the Examiner did not give weight to the preamble term “machine-implemented . . . processing of an input image” in the method claims, and this error, in turn, leads to an error in the Examiner’s conclusion that these method claims do not transform underlying subject matter. (Reply Br. 3). Our analysis and decision as to the Examiner’s § 101 rejection of method claims 1-16 and 39-42 is summarized as follows: (1) Claim Interpretation - We have reviewed the claim interpretation issue identified by Appellants’ argument in light of the presented evidence and argument, and upon consideration of the relevant statutes, regulations, and authorities. See 37 C.F.R. § 41.37(c)(1)(vii). We conclude that the Examiner did err as to the proper interpretation of the preamble term “machine- implemented . . . processing of an input image” in the method claims. Appeal 2009-011395 Application 10/919,671 4 We hold that Appellants’ rebuttal argument of the Reply Brief does show that method claims 1-16 and 39-42 do process a particular article, i.e., a “machine-implemented image.” (2) Eligible Subject Matter Categories - We conclude that these claims are directed to a method (process) and, as such, are within one of the four patent-eligible subject matter categories. (3) Exceptions - For these method claims, relevant factors— both those in favor of patent-eligibility and those against such a finding—should be weighed in making the determination of whether the claimed invention, viewed as a whole, is disqualified as being a claim to an abstract idea. We have reviewed the transformation factor issue identified by Appellants’ argument in light of the presented evidence and argument, and upon consideration of the relevant statutes, regulations, authorities, and USPTO § 101 guidance. We conclude that the transformation factor weighs toward patent eligibility. We have similarly reviewed additional method claim § 101 factors to determine whether the method claims are patent- ineligible (i.e., directed to an abstract idea). We conclude that when the method claim § 101 factors are considered collectively, they weigh towards subject matter eligibility. 2 We conclude that the Examiner erred in concluding that method claims 1-16 and 39-42 do not qualify as a statutory process. The detailed rationale for our decision as to the § 101 rejection of method claims 1-16 and 39-42 under 35 U.S.C. § 101 is discussed infra. 2 The phrases “patent eligibility” and “subject matter eligibility” are used interchangeably herein. Appeal 2009-011395 Application 10/919,671 5 Summary of Our Other Decisions We also do not sustain the Examiner’s rejections of claims 17-38 under 35 U.S.C. § 101. We do not sustain the Examiner’s rejection of claims 1-4, 8, 17-20, 23, 29, 30, and 33 under 35 U.S.C. § 102. We sustain the Examiner’s rejection of claims 1, 7, 9-17, 22, 24-29, 32, and 34-38 under 35 U.S.C. § 103. The detailed rationales for these decisions are discussed infra. STATEMENT OF CASE Exemplary Claims Exemplary claims 1, 17, and 29 under appeal read as follows: 1. A machine-implemented method of processing an input image, comprising: computing a forward transform of the input image; applying to the forward transform a bi-selective filter configured to smooth image regions with low magnitude coefficients of the forward transform and to sharpen image regions with high magnitude coefficients of the forward transform; and generating an output image from the filtered forward transform. 17. A machine for processing an input image, comprising at least one data processing module configured to: compute a forward transform of the input image; apply to coefficients of the forward transform a bi-selective filter configured to smooth image regions with low magnitude coefficients of the forward transform and to sharpen image regions with high magnitude coefficients of the forward transform; and generate an output image from the filtered forward transform. Appeal 2009-011395 Application 10/919,671 6 29. A machine-readable medium storing machine-readable instructions for causing a machine to: compute a forward transform of the input image; apply to the forward transform a bi-selective filter configured to smooth image regions with low magnitudes coefficients of the forward transform and to sharpen image regions with high magnitudes coefficients of the forward transform; and generate an output image from the filtered forward transform. Rejections on Appeal 1. The Examiner rejected claims 1-42 under 35 U.S.C. § 101 as being directed to non-statutory subject matter. 2. The Examiner rejected claims 1-4, 8, 17-20, 23, 29, 30, and 33 under 35 U.S.C. § 102(b) as being anticipated by Shinbata (US 2003/0016855 A1).3 3. The Examiner rejected claims 1, 7, 9-17, 22, 24-29, 32, and 34-38 under 35 U.S.C. § 103(a) as being unpatentable over the combination of Guleryuz (US 2004/0240545 A1) and Ratnakar (US 6,421,468 B1).4 Appellants’ Contentions 1. As to the rejections of method claims 1-16 and 39-42 under § 101, Appellants contend that the Examiner erred because “contrary to the Examiner’s assertion, the preamble must be given patentable weight.” (Reply Br. 3). Thus: [T]he subject matter defined in independent claim 1 transforms underlying subject matter into a different state or thing. In 3 The Examiner lists “claim 30” as “claim 20” at several places in the § 102 rejection. That “20” should read “30” in these several places is self-evident as claim 20 is also separately listed and discussed in this § 102 rejection. 4 Separate patentability is not argued for claims 7, 9-17, 22, 24-29, 32, and 34-38. Appeal 2009-011395 Application 10/919,671 7 particular, the machine-implemented method defined in claim 1 transforms “an input image” into “an output image” by operation of the “computing,” “applying,” and “generating” elements of the claim. (Reply Br. 3). The essence of Appellants’ argument is that the Examiner erred in the claim interpretation when the Examiner did not give weight to the preamble term “machine-implemented . . . processing of an input image” in the method claims, and this error, in turn, leads to an error in the Examiner’s conclusion that these method claims do not transform underlying subject matter. 2. As to the rejections of machine claims 17-28 under § 101, Appellants contend that the Examiner erred. 2A. Specifically, Appellants contend that the Examiner erred because: Contrary to the Examiner’s assertion, the recitation of “machine” in the preamble clearly places the subject matter of claim 17 within the statutory class of machines. The fact that the specification discloses that in some embodiments functionality may be imparted to a machine as a result of executing software on the machine does not change the fact that claim 17 is directed to a machine. (Reply Br. 4). 2B. Further, Appellants contend that the Examiner erred because: In addition, the Examiner’s assertion that “the body of the claim lacks definite structure indicative of a physical apparatus” is not correct. In particular, claim 17 expressly recites that the claimed machine comprises at least one “data processing module” that is configured to perform the “compute,” “apply,” and “generate” operations. Contrary to the Examiner’s apparent assumption, “pure software” does not constitute a data processing module that is configured to perform operations. Indeed, pure software is just a set of Appeal 2009-011395 Application 10/919,671 8 instructions stored in memory; it does not have any functionality; and it is not configured to do anything. The operations recited in claim 17 can only be performed by at least one physical data processing module of a machine. Thus, contrary to the Examiner's position, claim 17 is directed to a machine and not software per se. As such claim 17 is patentable subject matter under 35 U.S.C. § 101. (Reply Br. 4). 3. As to the rejections of “machine-readable medium” claims 29-38 under § 101, Appellants contend that the Examiner erred because: There is no reasonable basis on which the Examiner can distinguish a “machine-readable medium” from a “computer- readable medium.” The Examiner himself “is not clear if machine readable medium is broader than a computer readable medium.” Therefore, the mere fact that claim 29 claims a “machine-readable medium” instead of a “computer-readable medium” is not a valid basis for concluding that the claim is directed to non-statutory subject matter under 35 U.S.C. § 101. In addition, the Examiner has not provided any evidence that supports his assertion that “The scope of the presently claimed invention encompasses products that are not necessarily computer readable, and thus NOT able to impart any functionality of the recited program.” Moreover, claim 29 expressly recites that the instructions stored on the machine- readable medium cause the machine to perform the “compute,” “apply,” and “generate” operations. (Reply Br. 6). 4. As to the § 102 rejection based on Shinbata, Appellants contend that the Examiner erred because: [T]he Examiner has argued that FIG. 49 shows the image sharpening aspect and ¶311 shows the smoothing aspect, where the combination of FIG. 49 and ¶311 is premised on the Examiner's mischaracterization of ¶311 as disclosing “additional processing” that readily can be applied to any of the conversion curves shown in FIGS. 41 and 43-50. Appeal 2009-011395 Application 10/919,671 9 In particular, the Examiner’s argument improperly relies on taking a statement in ¶311 out of context in order to support his proposed modification of the conversion curve shown in FIG. 49. For example, the Examiner has interpreted the following statement as disclosing that “additional processing” can be applied to the conversion curve shown in FIG. 49: “…the image processing apparatus and method may execute conversion for strongly decreasing or setting, to be zero, high- frequency coefficients which have absolute values less than the predetermined threshold value and also less than a second threshold value smaller than the predetermined threshold value.” This statement, however, does not disclose “additional processing” that can be applied to any of the conversion curves shown in FIGS. 41 and 43-50. Instead, this statement simply describes the specific conversion curve shown in FIG. 44, which shows smoothing of coefficients below the threshold value but no sharpening. (App. Br. 10-11). 5. As to the rejection under § 103, Appellants contend that the Examiner erred because “Guleryuz and Ratnakar, taken either alone or in any permissible combination, do not disclose or suggest all the elements of the claimed invention.” (App. Br. 15). Specifically, Appellants contend that “Guleryuz only discloses the possibilities of hard thresholding or soft thresholding (see ¶¶ 6 and 73), neither of which involves sharpening image regions with high magnitude coefficients of the forward transform.” (App. Br. 16). Further, Appellants contend that “Ratnakar only scales coefficients with magnitudes above a threshold 131 by a scale factor 132, which increases with coefficient frequency (i.e., coefficient number) (see col. 7, lines 60-67, col. 9, lines 64-66, and FIG. 11).” (App. Br. 16). Appeal 2009-011395 Application 10/919,671 10 Appellants conclude: Thus, neither Guleryuz nor Ratnakar discloses or suggests “a bi-selective filter configured to smooth image regions with low magnitude coefficients of the forward transform and to sharpen image regions with high magnitude coefficients of the forward transform,” as recited in claim 1. Therefore, there is no combination of Guleryuz and Ratnakar that possibly could disclose such a bi-selected filter. (App. Br. 16). 6. Also as to the rejection under § 103, Appellants contend that the Examiner erred because “at the time the invention was made there was no apparent reason to combine the teachings of Guleryuz in view of Ratnakar in the manner proposed by the Examiner.” (App. Br. 15). Specifically, Appellants contend that the Examiner “does not explain how Guleryuz’ uni-selective smoothing filter would have been combined with Ratnakar’s uni-selective sharpening filter to arrive at the inventive subject matter defined in claim 1.” (App. Br. 18). Additionally, Appellants contend: The fact is that neither Guleryuz nor Ratnakar nor the knowledge generally available at the time the invention was made would have led one skilled in the art to believe that there was any problem to be solved or any advantage that would be gained by the Examiner's proposed modification of Guleryuz’s disclosure. The Examiner's reasoning in this regard only evidences the fact that the Examiner improperly has engaged in impermissible hindsight reconstruction of the claimed invention, using applicants’ disclosure as a blueprint for piecing together elements from the prior art in a manner that attempts to reconstruct the invention recited in claim 1 only with the benefit of impermissible hindsight. (App. Br. 19)(Citation omitted). Appeal 2009-011395 Application 10/919,671 11 Issues on Appeal Did the Examiner err in rejecting claims 1-42 under 35 U.S.C. § 101 because these claims are directed to statutory subject matter? Did the Examiner err in rejecting claims 1-4, 8, 17-20, 23, 29, 30, and 33 as being anticipated because Shinbata fails to teach a conversion curve with both an image sharpening aspect and an image smoothing aspect? Did the Examiner err in rejecting claims 1, 7, 9-17, 22, 24-29, 32, and 34-38 as being obvious because Guleryuz and Ratnakar fail to disclose or suggest all the elements of the claimed invention? Did the Examiner err in rejecting claims 1, 7, 9-17, 22, 24-29, 32, and 34-38 as being obvious because there was no apparent reason to combine the teachings of Guleryuz and Ratnakar in the manner proposed by the Examiner? FINDINGS OF FACT (FF) Appellants’ Invention 1. Appellants state: The invention features methods, machines, and computer-readable media for processing an input image with a bi-selective filter in a transform domain. In one aspect of the invention, a forward transform of an input image is computed. A bi-selective filter smoothes [sic] image regions with low magnitude coefficients and sharpens image regions with high magnitude coefficients. An output image is generated from the filtered forward transform. (Appellants’ Spec. 2). 2. Appellants state: FIG. 1 shows an embodiment of an image processing system 10 for processing an input image 12 into a denoised and sharpened output image 14. The image processing system 10 Appeal 2009-011395 Application 10/919,671 12 includes a forward transform module 16, a filtering module 18, and an output image generator module 20. (Appellants’ Spec. 3). 3. Appellants state: In general, the modules 16-20 of system 10 are not limited to any particular hardware or software configuration, but rather they may be implemented in any computing or processing environment, including in digital electronic circuitry or in computer hardware, firmware, device driver, or software. (Appellants’ Spec. 3). 4. Appellants further state: For example, in some implementations, these modules 16-20 may be embedded in the hardware of any one of a wide variety of digital and analog electronic devices, including desktop and workstation computers, digital still image cameras, digital video cameras, printers, scanners, and portable electronic devices (e.g., mobile phones, laptop and notebook computers, and personal digital assistants). (Appellants’ Spec. 3-4). 5. Appellants further state: In addition, although full (or complete) input images are processed in the illustrated embodiments, other embodiments may be configured to sequentially process a series of sub-image portions (e.g., swaths) of an input image. (Appellants’ Spec. 4). 6. Appellants state: FIG. 2 shows an embodiment of a method in accordance with which image processing system 10 processes input image 12 to produce the denoised and sharpened output image 14. The forward transform module 16 computes a forward transform of the input image 12 (block 22). The forward transform may be any type of transform that can convert the input image 12 into a set of coefficients in a selected domain. Appeal 2009-011395 Application 10/919,671 13 Exemplary types of forward transforms include the cosine transform, Fourier transform, Hadamard transform, and wavelet transform. In some implementations, the input image 12 is divided into small rectangular regions (or “blocks”), which are subjected to a selected forward transform. (Appellants’ Spec. 4). 7. Appellants state: FIG. 3 shows a graph of an implementation of an exemplary bi-selective filter 26. In this implementation, the bi- selective filter 26 is configured to set to zero the magnitudes of forward transform coefficients (c) that are below a first threshold λ1. The bi-selective filter 26 also is configured to add a sharpening constant (β) to the magnitudes of forward transform coefficients that are above a second threshold λ2. The bi-selective filter 26 modifies forward transform coefficient magnitudes between the first and second thresholds λ1, λ2 in accordance with a mapping function 28 that increases monotonically with increasing forward transform coefficient magnitude. In the illustrated implementation, the mapping function 28 increases linearly from zero to the sum of the values of the second threshold λ2 and the sharpening constant β. (Appellants’ Spec. 4-5). Appellants’ Figure 3 follows: Appeal 2009-011395 Application 10/919,671 14 8. Appellants further state: The bi-selective filter 26 shown in FIG. 3 is summarized mathematically as follows: ϕ(c) = 0, for 0 ≤ c ≤ λ1 (1) ϕ(c) = α • (c – λ1), for λ1 ≤ c ≤ λ2 (2) ϕ(c) = c + β, for c ≥ λ2 (3) where α is the slope of the linear mapping function 28 and α > 1. For coefficient magnitudes greater than the second threshold λ2, the filtering function corresponds to a line that is parallel to the identity line 30 (ϕ(c) = c), but separated from the identity line 30 by the sharpening constant β. In operation, equations (1), (2), and (3) are applied on the absolute value of an input coefficient, c, and the sign of the input coefficient is assigned to the function result, ϕ(c), to produce the output coefficient. (Appellants’ Spec. 5). 9. Appellants state: In some implementations, if the input image 12 is not already represented in a preselected color space (e.g., the YCrCb color space), the input image 12 initially is converted into the preselected luminance-based color space before being processed by the forward transform module 16. Each color plane of the input image in the preselected color space corresponds to a respective image (i.e., an array of pixel values) that is processed individually by each of the modules 16-20 of system 10. (Appellants’ Spec. 6). 10. Appellants state: [I]n an implementation in which the input image 12 was originally compressed based on blocks of M x N pixels, the forward transform operation is applied to a subset of the input image data containing K shifts from the M x N independent shifts possible in an M x N transform to produce K sets of Appeal 2009-011395 Application 10/919,671 15 forward transform coefficients, where K, M, and N have integer values of at least 1. (Appellants’ Spec. 6-7). 11. Appellants state: FIG. 6 shows an embodiment of the output image generator module 72 that includes a weighted combination generator module 80 that computes a base image (IAVE) from a combination of the intermediate images (I1, I2, ... , IK). The base image corresponds to an estimate of the original uncompressed version of the input image 12. In the illustrated embodiment, weighted combination generator module 80 computes a base image (IAVE) that has pixel values corresponding to averages of corresponding pixels in the intermediate images (I1, I2, ... , IK). (Appellants’ Spec. 11). 12. Appellants state: The systems and methods described herein are not limited to any particular hardware or software configuration, but rather they may be implemented in any computing or processing environment, including in digital electronic circuitry or in computer hardware, firmware, or software. (Appellants’ Spec. 11). Appellants’ Admissions 13. Appellants admit: Common image filtering techniques include image smoothing and image sharpening. Smoothing is a technique for reducing certain types of noise in an image. Sharpening is a technique for sharpening the edges within an image to improve the perceptual visual quality of the image. (Appellants’ Spec. 1) (Emphasis added). Appeal 2009-011395 Application 10/919,671 16 14. Appellants further admit: Non-selective filters treat all features in an image in the same way. Thus, flat regions of an image are treated in the same fashion as edge regions. Non-selective filters tend to either smooth edge regions or amplify noise. On the other hand, selective filters (e.g., selective smoothing and/or selective sharpening filters) overcome the disadvantages of non- selective filters by applying the filtering function only to selected types features while preserving non-selected types features. (Appellants’ Spec. 1) (Emphasis added). 15. Appellants further admit: Some selective denoising techniques selectively smooth flat regions of an image, while leaving edge regions untouched. Similarly, some selective sharpening methods selectively sharpen edge regions without sharpening flat regions. Some other denoising techniques, however, combine selective image sharpening and selective image smoothing in a single filter. (Appellants’ Spec. 1) (Emphasis added). 16. Appellants further admit: One example of an edge preserving, selective smoothing filter is an anisotropic diffusion filter. Another example of a selective filter is a bilateral filter. One exemplary non- iterative, locally adaptive bi-selective filter for removing noise from images corresponds to a weighted average of the local neighborhood pixels, where the weights are computed as a function of both distances and gray-level differences between a center pixel and pixels neighboring the center pixel. (Appellants’ Spec. 1)(Emphasis added). Appeal 2009-011395 Application 10/919,671 17 ANALYSIS – § 101 – Method Claims 1-16 and 39-42 Examiner’s § 101 Analysis of Claims 1-16 and 39-42 The Examiner cites to the machine-or-transformation test of In re Bilski, 545 F.3d 943 (Fed. Cir. 2008), and states that “the instant claim(s) recite a series of steps or acts to be performed, the claim(s) neither [1] transform underlying subject matter nor [2] positively tie to another statutory category that accomplishes the claimed method steps.” (Ans. 11). The Examiner does not set forth any other factors weighing either toward or against patent eligibility.5 We have reviewed the issue identified by Appellants at above contention 1 (i.e., an alleged error in claim construction which leads to an error in analyzing the factors supporting the § 101 rejection of method claims 1-16 and 39-42) in light of the presented evidence and argument, and 5 The Examiner issued the Answer prior to the Supreme Court’s decision in Bilski v. Kappos, __ U.S. __, 130 S. Ct. 3218, 3227 (2010), in which the Court held that “[t]he machine-or-transformation test is not the sole test for deciding whether an invention is a patent-eligible ‘process.’” Because we agree with Appellants’ contention that there was an error as to claim construction, we do not reach the issue of whether an examiner’s conclusion that both machine-or-transformation factors weigh against patent eligibility can alone be sufficient to establish a prima facie case of patent- ineligibility, i.e., when an examiner applies only the machine-or- transformation test without considering any other factors weighing either toward or against patent eligibility of a method claim, can this be sufficient to set forth the basis for a rejection so as to put the patent applicant on notice of the reasons why the applicant is not entitled to a patent. Cf. In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992). See Bilski v. Kappos, __ U.S. at __, 130 S. Ct. at 3227 (while the machine-or-transformation test is not the sole test for deciding whether an invention is a patent-eligible process, it is “a useful and important clue, an investigative tool, for determining whether some claimed inventions are processes under § 101”). Appeal 2009-011395 Application 10/919,671 18 upon consideration of the relevant statutes, regulations, authorities, and USPTO § 101 guidance. Having reviewed the Examiner’s § 101 rejection of method claims 1-16 and 39-42 in light of Appellants’ above contention 1, for reasons infra we agree with Appellants’ position that “independent claim 1 transforms underlying subject matter into a different state or thing.” 6 Principles of Law and Examination Guidelines When statutory subject matter concerns are raised for a process claim, an examiner is required to provide appellants with a clear analysis as to why their claims are not directed to statutory subject matter. Towards that goal, the USPTO issued § 101 subject matter eligibility determination guidance to all USPTO examiners on August 24, 2009 (Memo 1 hereinafter) 7 and July 27, 2010 (Memo 2 hereinafter).8 Memo 1 was directed to examination of all 6 We agree with the Appellants’ above contention 1. We do not reach Appellants’ other contentions (not reproduced herein) regarding the § 101 rejection of claims 1-16 and 39-42. 7 Memorandum from Andrew H. Hirshfeld, Acting Deputy Comm’r for Patent Examination Policy, U.S. Patent and Trademark Office (to the Technology Center Directors), New Interim Patent Subject Matter Eligibility Examination Instructions (August 24, 2009) available at http://www.uspto.gov/web/offices/pac/dapp/opla/2009-08- 25_interim_101_instructions.pdf. 8 Memorandum from Robert W. Bahr, Acting Assoc. Comm’r for Patent Examination Policy, U.S. Patent and Trademark Office (to the Patent Examining Corps), Interim Guidance for Determining Subject Matter Eligibility for Process Claims in View of Bilski v. Kappos (July 27, 2010) available at http://www.uspto.gov/patents/law/exam/bilski_guidance_27jul2010.pdf (including Interim Guidance for Determining Subject Matter Eligibility for Process Claims in View of Bilski v. Kappos, 75 Fed. Reg. 43,922 (July 27, 2010)(notice)). Appeal 2009-011395 Application 10/919,671 19 claims including method claims. Memo 2 provided factors to consider in determining subject matter eligibility of method claims in view of the abstract idea exception and superseded the guidance of Memo 1 on such determination.9 The guidance of Memo 1 and Memo 2 was incorporated in Revision 9 of the Eighth Edition of The Manual of Patent Examining Procedure (MPEP) issued in August 2012. (See MPEP § 2106; 8th Ed., Rev. 9). Examiners are instructed to use a two-step analysis, discussed infra, to evaluate these subject matter eligibility criteria. “There are two criteria for determining subject matter eligibility and both must be satisfied. The claimed invention (1) must be directed to one of the four statutory categories, and (2) must not be wholly directed to subject matter encompassing a judicially recognized exception.” (MPEP § 2106; 8th Ed., Rev. 9). (Preliminary Step) However, as a preliminary step prior to focusing on any specific statutory requirements, examiners are also instructed to begin examination by determining what, precisely, the applicant has invented and is seeking to patent, and how the claims relate to and define that invention. (MPEP § 2103 I; 8th Ed., Rev. 9). Examiners must give claims their broadest reasonable interpretation in light of the supporting disclosure. (MPEP § 2111; 8th Ed., Rev. 9). [W]hen evaluating the scope of a claim, every limitation in the claim must be considered. [An examiner] may not dissect a claimed invention into discrete elements and then evaluate the elements in isolation. Instead, the claim as a whole must be 9 The Examiner rejected the claims currently before us on appeal under § 101 on December 29, 2008, before either guidance memo was issued. Appeal 2009-011395 Application 10/919,671 20 considered. See, e.g., Diamond v. Diehr, 450 U.S. 175, 188-89, 209 USPQ 1, 9 (1981) (“In determining the eligibility of respondents’ claimed process for patent protection under § 101, their claims must be considered as a whole. It is inappropriate to dissect the claims into old and new elements and then to ignore the presence of the old elements in the analysis. This is particularly true in a process claim because a new combination of steps in a process may be patentable even though all the constituents of the combination were well known and in common use before the combination was made.”). (MPEP § 2103 I. C.; 8th Ed., Rev. 9). (Step One - Eligible Subject Matter Categories) Once the Examiner has determined what applicant has invented and is seeking to patent, the examiner is instructed to determine if the claim is directed to one of the four patent-eligible subject matter categories: process, machine, manufacture, or composition of matter. If the subject matter of the claim is not to one of the four patent-eligible subject matter categories, then it should be rejected under 35 U.S.C. § 101, for at least this reason. (See MPEP § 2106 I; 8th Ed., Rev. 9). (Step Two - Subject Matter Eligibility - Exceptions) If the claim is within one of the four subject matter categories, the examiner is instructed to determine if the claim wholly embraces a judicially recognized exception, which includes laws of nature, physical phenomena, and abstract ideas, or alternatively, if it is a particular practical application of a judicial exception. (See MPEP § 2106 II; 8th Ed., Rev. 9). Appeal 2009-011395 Application 10/919,671 21 In addition to the terms laws of nature, physical phenomena, and abstract ideas, judicially recognized exceptions have been described using various other terms, including natural phenomena, scientific principles, systems that depend on human intelligence alone, disembodied concepts, mental processes and disembodied mathematical algorithms and formulas, for example. The exceptions reflect the courts’ view that the basic tools of scientific and technological work are not patentable. The claimed subject matter must not be wholly directed to a judicially recognized exception. If it is, the claim is not eligible for patent protection and should be rejected under 35 U.S.C. 101. However, a claim that is limited to a particular practical application of a judicially recognized exception is eligible for patent protection. A “practical application” relates to how a judicially recognized exception is applied in a real world product or a process, and not merely to the result achieved by the invention. When subject matter has been reduced to a particular practical application having a real world use, the claimed practical application is evidence that the subject matter is not abstract (e.g., not purely mental) and does not encompass substantially all uses (preemption) of a law of nature or a physical phenomenon. See, e.g., Ultramercial v. Hulu, 657 F.3d 1323, 1329, 100 USPQ2d 1140, 1145 (Fed. Cir. 2011)(stating that the patent “does not claim a mathematical algorithm, a series of purely mental steps, or any similarly abstract concept. It claims a particular method . . . a practical application of the general concept.”). (MPEP § 2106 II; 8th Ed., Rev. 9). Appeal 2009-011395 Application 10/919,671 22 In Step Two, if the claim is a process (method) claim, the guidance of MPEP §2106 II B “presents factors that are to be considered when evaluating patent-eligibility of method claims.” 10 The factors include inquiries from the machine-or- transformation test, which remains a useful investigative tool, and inquiries gleaned from Supreme Court precedent. See In re Bilski, 545 F.3d 943, 954 (Fed. Cir. 2009) (stating that “[a] claimed process is surely patent-eligible under § 101 if: (1) it is tied to a particular machine or apparatus, or (2) it transforms a particular article into a different state or thing.”); and Bilski, 130 S. Ct. at 3227 (stating, “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. The machine-or-transformation test is not the sole test for deciding whether an invention is a patent-eligible ‘process.’”). (MPEP §2106 II B; 8th Ed., Rev. 9).11 10 MPEP §2106 II B goes on to state: While the Supreme Court in Bilski did not set forth detailed guidance, there are many factors to be considered when determining whether there is sufficient evidence to support a determination that a method claim is directed to an abstract idea. The following factors are intended to be useful examples and are not intended to be exclusive or limiting. It is recognized that new factors may be developed, particularly for emerging technologies. It is anticipated that the factors will be modified and changed to take into account developments in precedential case law and to accommodate prosecution issues that may arise in implementing this new practice. 11 When determining patent eligibility of a method claim, the machine-or- transformation factors should be weighed even where “technology without anchors in physical structures and mechanical steps” may “defy easy classification under the machine-or-transformation categories.” Ultramercial, LLC v. Hulu, LLC, 657 F.3d 1323, 1327 (Fed. Cir. 2011). Appeal 2009-011395 Application 10/919,671 23 In Step Two, MPEP §2106 II B instructs an examiner to “determine whether the claimed invention, viewed as a whole, is disqualified as being a claim to an abstract idea.” Relevant factors—both those in favor of patent-eligibility and those against such a finding—should be weighed in making the determination. Factors that weigh in favor of patent-eligibility satisfy the criteria of the machine-or-transformation test or provide evidence that the abstract idea has been practically applied. Factors that weigh against patent-eligibility neither satisfy the criteria of the machine-or-transformation test nor provide evidence that the abstract idea has been practically applied. Each case will present different factors, and it is likely that only some of the factors will be present in each application. It would be improper to make a conclusion based on one factor while ignoring other factors. (MPEP §2106 II B; 8th Ed., Rev. 9).12 12 MPEP §2106 II B also states that: With respect to the factors listed below, a “field-of-use” limitation does not impose actual boundaries on the scope of the claimed invention. A field-of-use limitation merely indicates that the method is for use in a particular environment, such as “for use with a machine” or “for transforming an article”, which would not require that the machine implement the method or that the steps of the method cause the article to transform. A field-of-use limitation does not impose a meaningful limit on the claimed invention. Insignificant “extra- solution” activity means activity that is not central to the purpose of the method invented by the applicant. For example, gathering data to use in the method when all applications of the method would require some form of data gathering would not impose a meaningful limit on the claim. Appeal 2009-011395 Application 10/919,671 24 The factors that an examiner is instructed to consider in an abstract idea determination of a method claim include the following (see MPEP §2106 II.B.1.): (a) Whether the method involves or is executed by a particular machine or apparatus. (i) The particularity or generality of the elements of the machine or apparatus. (ii) Whether the machine or apparatus implements the steps of the method. (iii) Whether the machine or apparatus involvement is extrasolution activity or a field-of-use, i.e., the extent to which (or how) the machine or apparatus imposes meaningful limits on the execution of the claimed method steps. (b) Whether performance of the claimed method results in or otherwise involves a transformation of a particular article. (i) The particularity or generality of the transformation. (ii) The degree to which the recited article is particular. (iii) The nature of the transformation in terms of the type or extent of change in state or thing. (iv) The nature of the article transformed, i.e., whether it is an object or substance. (v) Whether the transformation involvement is extrasolution activity or a field-of-use, i.e., the extent to which (or how) the transformation imposes meaningful limits on the execution of the claimed method steps. (c) Whether performance of the claimed method involves an application of a law of nature, even in the absence of a particular machine, apparatus, or transformation. (i) The particularity or generality of the application. (ii) Whether the claimed method recites an application of a law of nature solely involving subjective determinations; e.g., ways to think about the law of nature. Appeal 2009-011395 Application 10/919,671 25 (iii) Whether its involvement is extrasolution activity or a field- of-use, i.e., the extent to which (or how) the application imposes meaningful limits on the execution of the claimed method steps. (d) Whether a general concept (which could also be recognized in such terms as a principle, theory, plan or scheme) is involved in executing the steps of the method. 13 (i) The extent to which use of the concept, as expressed in the method, would preempt its use in other fields. (ii) The extent to which the claim is so abstract and sweeping as to cover both known and unknown uses of the concept, and be performed through any existing or future-devised machinery, or even without any apparatus. (iii) The extent to which the claim would effectively cover all possible solutions to a particular problem; i.e., that the claim is a statement of the problem versus a description of a particular solution to the problem. (iv) Whether the concept is disembodied or whether it is instantiated; i.e., implemented, in some tangible way. 13 Examples of general concepts include, but are not limited to, the following: • Basic economic practices or theories (e.g., hedging, insurance, financial transactions, marketing); • Basic legal theories (e.g., contracts, dispute resolution, rules of law); • Mathematical concepts (e.g., algorithms, spatial relationships, geometry); • Mental activity (e.g., forming a judgment, observation, evaluation, or opinion); • Interpersonal interactions or relationships (e.g., conversing, dating); • Teaching concepts (e.g., memorization, repetition); • Human behavior (e.g., exercising, wearing clothing, following rules or instructions); • Instructing “how business should be conducted.” See MPEP §2106 II.B.1(d). Appeal 2009-011395 Application 10/919,671 26 (v) The mechanism(s) by which the steps are implemented; e.g., whether the performance of the process is observable and verifiable rather than subjective or imperceptible. Lastly, in Step Two the examiner is instructed to weigh all of these factors to make a proper determine as to whether the claim wholly embraces a judicially recognized exception: Each of the factors relevant to the particular patent application should be weighed to determine whether the method is claiming an abstract idea by covering a general concept, or combination of concepts, or whether the method is limited to a particular practical application of the concept. The presence or absence of a single factor will not be determinative as the relevant factors need to be considered and weighed to make a proper determination as to whether the claim as a whole is drawn to an abstract idea such that the claim would effectively grant a monopoly over an abstract idea and be ineligible for patent protection. (MPEP §2106 II.B.2; 8th Ed., Rev. 9). Our § 101 Analysis of Claims 1-16 and 39-42 (Preliminary Step) Applying this multi-step analysis, we first determine the broadest reasonable interpretation of claim 1 on appeal. See In re Fout, 675 F.2d 297, 300 (CCPA 1982) (“Claims must always be read in light of the specification. Here, the specification makes plain what the appellants did and did not invent ....”); Philips v. AWH Corp. 415 F.3d 1303, 1313 (Fed. Cir. 2005) (“Importantly, the person of ordinary skill in the art is deemed to read the claim term not only in the context of the particular claim in which the disputed term appears, but in the context of the entire patent, including the specification.”). Appeal 2009-011395 Application 10/919,671 27 We conclude that claim 1 as a whole is directed to a sequence of steps performed within a machine. Appellants’ claim 1 explicitly recites an “output image” which is generated from an “input image.” We also conclude that the steps of claim 1 inherently require that the “input image” and “output image” at least temporarily be stored within the machine. We further conclude that each claimed “image” is a data structure comprising pixels arranged in a rectangular array with a certain height and width. The FOLDOC Computing Dictionary defines “image” as: Data representing a two-dimensional scene. A digital image is composed of pixels arranged in a rectangular array with a certain height and width. Each pixel may consist of one or more bits of information, representing the brightness of the image at that point and possibly including colour [sic] information encoded as RGB triples. (1994-10-21) The Free On-line Dictionary of Computing (FOLDOC), © Denis Howe 2010. This definition of “image” is consistent with Appellants’ use of the term throughout the entire patent application before us. (See FF 9-11 and FF 16). As set forth in Lowry, a data structure comprising specific electrical or magnetic structural elements in a memory is a “physical” entity. In re Lowry, 32 F.3d 1579, 1583-84 (Fed. Cir. 1994). We reach the same conclusion here as to Appellants’ two image data structures in a machine memory. Lastly, we conclude that Appellants’ claim 1 applies a mathematical filtering operation to smooth and sharpen image regions so as to generate the “output image” from the “input image.” We conclude that the specific facts before us establish that the broadest reasonable interpretation of the claim as a whole is that the claimed input image (in a memory) is a first particular physical article from which the method Appeal 2009-011395 Application 10/919,671 28 generates an output image (in a memory), which is a second different particular physical article. We conclude that the Examiner erred as to the proper interpretation of the method claims when the Examiner did not give weight to the preamble term “machine-implemented . . . processing of an input image.” We now review whether Examiner’s ultimate conclusion was also in error by (1) determining at Step One below whether the method claims are within one of the four patent-eligible subject matter categories, and if so, then, (2) determining at Step Two below whether the method claims are directed nonetheless to an abstract idea. (Step One) Reviewing claim 1 as a whole, we conclude that the claim is directed to a process (method) and, as such, is within one of the four patent-eligible subject matter categories. Having reached this conclusion, we now determine if claim 1 wholly embraces a judicially recognized exception. (Step Two) We determine whether the method claims are directed nonetheless to an abstract idea by reviewing factors that are to be considered when evaluating patent-eligibility of method claims. These § 101 factors include inquiries from the machine-or-transformation test, which remains a useful investigative tool, and inquiries gleaned from Supreme Court precedent. We begin our analysis in Step Two by reviewing factors directed to determining if the process (method) claim passes muster under either of the two prongs of the machine-or-transformation test. (Step Two – Machine Factor) On its face, it is readily apparent that claim 1 does not require the method to be executed (performed) by a particular machine or apparatus. Beyond the generally recited “bi-lateral Appeal 2009-011395 Application 10/919,671 29 filter” of claim 1, the claim recites no machine whatsoever for performing the method steps. Therefore, we conclude that the claim does not involve and is not executed by a particular machine or apparatus, and this machine factor weighs against patent eligibility. (Step Two – Transformation Factor) As discussed above, we conclude that claim 1 generates an “output image” from an “input image” and that each image is a physical entity in the form of a two-dimensional array data structure in a machine memory. We further conclude that the specific facts before us establish that the claimed input image (in a memory) is a first particular physical article from which the method generates an output image (in a memory) which is a different second particular physical article. The method of claim 1 requires the manipulation of machine data structures (e.g., the pixels of an image comprising a two-dimensional array) and the output of a modified machine data structure (an improved image). See Research Corp. Techs. v. Microsoft Corp., 627 F.3d. 859, 868 (Fed. Cir. 2010). Further, the method could not, as a practical matter, be performed entirely in a human’s mind. We consider specifically whether performance of the claimed method results in or otherwise involves a transformation of a particular article. We conclude that the mathematical filtering operation is practically applied to a physical entity (article) in the claim. As discussed above, the claimed input image (in a memory) is a first particular physical article from which the method generates an output image (in a memory) which is a second different particular physical article. We also conclude that (1) the article being transformed is particular; (2) the article undergoes a change in state (e.g., objectively different function or use); (3) the article being transformed is an Appeal 2009-011395 Application 10/919,671 30 object (e.g., physical entity); and (4) the transformation imposes meaningful limits on the execution of the claimed method steps (i.e., smoothing and sharpening the image in memory), and is not merely extrasolution activity or a field-of-use. We conclude that Appellants’ claim 1 does transform a particular article and this transformation factor weighs towards patent eligibility. (Step Two – Law of Nature Factor) We also consider additional factors to determine whether claim 1 is patent-ineligible (i.e., is an abstract idea). We consider whether performance of the claimed method involves an application of a law of nature. We conclude that claim 1 does not involve an application of a law of nature, so we conclude that this factor is not relevant to our analysis of this claim. (Step Two – General Concept Factor) We now consider whether a general concept is involved in executing the steps of the method. Again, the claimed input image (in a memory) is a first particular physical article from which the method generates an output image (in a memory) which is a second different particular physical article. We conclude that (1) the concept as expressed in the method would not preempt its use in other fields, such as the processing of signals other than images; (2) as discussed above, the claim is not so abstract and sweeping so as to be performed entirely in a human’s mind (without any apparatus); (3) the claim is a description of a particular solution to the problem as opposed to a mere statement of the problem; (4) as discussed above, the concept is instantiated; i.e., implemented, in a tangible way using a particular data structure in memory; and (5) the performance of the steps are observable and verifiable. We Appeal 2009-011395 Application 10/919,671 31 conclude that, as to Appellants’ claim 1, this concept factor weighs towards patent eligibility. (Step Two – Determine Subject Matter Eligibility) We have reviewed method claim § 101 factors that weigh in favor of patent-eligibility by satisfying the criteria of the machine-or-transformation test or providing evidence that an abstract idea has been practically applied. We have reviewed method claim § 101 factors that weigh against patent-eligibility because they neither satisfy the criteria of the machine-or-transformation test nor provide evidence that an abstract idea has been practically applied. We conclude that when these numerous method claim § 101 factors are considered collectively they weigh towards eligibility. We conclude that method claim 1, and similarly method claims 2-16 and 39-42, are all directed to patent eligible subject matter. ANALYSIS – § 101 – Machine Claims 17-28 We have reviewed the Examiner’s § 101 rejection of machine claims 17-28 in light of Appellants’ above contentions 2A and 2B. The Examiner rejected claims 17-28 as being directed to “software elements” which are functional descriptive material per se. (Ans. 12.) That is, the Examiner rejected each of claims 17-28 because the subject matter of the claim is not to one of the four patent-eligible subject matter categories. We disagree. Instead, we agree with Appellants’ position. Claim 17 explicitly recites a “machine” (any mechanical or electrical device that automatically performs tasks or assists in performing tasks),14 14 World English Dictionary; Collins English Dictionary - Complete & Unabridged 10th Edition 2009 © William Collins Sons & Co. Ltd. 1979, Appeal 2009-011395 Application 10/919,671 32 which precludes the claim from encompassing a pure software embodiment. Note that the result could be contrary if, instead, the claim were directed to a “system” rather than a “machine.” Absent a specification clearly setting forth a narrower or alternative definition, the term “system” does encompass purely software embodiments when disclosed.15 As written, we find claims 17-28 to be directed to one of the four patent-eligible subject matter categories, i.e., a machine. We also note that the result we reach is analogous to the MPEP guidance for a “means plus function” limitation, which is required to be construed as “structure or material” and which “the examiner should not construe . . . as covering pure software implementation.”16 ANALYSIS – § 101 – Machine-Readable Medium Claims 29-38 We have reviewed the Examiner’s § 101 rejection of machine- readable medium claims 29-38 in light of Appellants’ above contention 3. We agree with the position set forth by Appellants. The Examiner has not addressed and we do not reach whether Appellants’ machine-readable medium claims 29-38 are such that the broadest reasonable interpretation of the claimed invention includes a 1986 © HarperCollins Publishers 1998, 2000, 2003, 2005, 2006, 2007, 2009. Also, a “device” is a thing made for a particular purpose; an invention or contrivance, especially a mechanical or electrical one. 15 A “system” includes any formulated, regular, or special method or plan of procedure: a system of marking, numbering, or measuring; a winning system at bridge. 16 MPEP § 2181 II B; 8th Ed., Rev. 9, p. 2100-250. Appeal 2009-011395 Application 10/919,671 33 “signal” as the medium.17 In light of recent examiner training on § 101, we leave it to the Examiner to determine the appropriateness of any § 101 rejection based on this specific point. ANALYSIS – § 102 The Examiner rejected claims 1-4, 8, 17-20, 23, 29, 30, and 33 under 35 U.S.C. § 102(b) as being anticipated by Shinbata. We have reviewed the Examiner’s § 102 rejection in light of Appellants’ above contention 4. Given the silence of Shinbata’s ¶311 as to the particular figures to which the Examiner’s “additional processing” may be applied, e.g., whether the processing may be applied to any of the curves shown in FIGS 41 and 43-50 or simply describes the specific conversion curve shown in FIG 44, we find some doubt as to the anticipatory nature of the particular processing that is found in ¶311. In case of doubt as to whether claims of an application are anticipated, the scales should be inclined toward applicant. See In re Coley, 40 F.2d 982, 986 (CCPA 1930) (“Where there is such doubt, the scales should be inclined toward the applicant.”). This doubt is sufficient to demonstrate that the Examiner has erred in finding that Shinbata anticipates claim 1. The Patent Trial and Appeal Board is a review body, rather than a place of initial examination. We have not reviewed claims 1-42 and Shinbata to the extent necessary to determine whether one or more of these claims are unpatentable under § 103 over a combination of Shinbata with 17 1351 Off. Gaz. Pat. Office 212 (Feb. 23, 2010); Subject Matter Eligibility of Computer Readable Media. Appeal 2009-011395 Application 10/919,671 34 Guleryuz, Ratnaker, Appellants’ admissions, or other patents/publications cited in the record. We leave it to the Examiner to determine the appropriateness of any § 103 rejections based on these admissions and references. ANALYSIS – § 103 The Examiner rejected claims 1, 7, 9-17, 22, 24-29, 32, and 34-38 under 35 U.S.C. § 103(a) as being unpatentable over the combination of Guleryuz and Ratnakar. We have reviewed the Examiner’s § 103 rejection in light of Appellants’ contentions that the Examiner has erred. We disagree with Appellants’ contentions. We adopt as our own (1) the findings and reasons set forth by the Examiner for this rejection in the action from which this appeal is taken and (2) the reasons set forth by the Examiner in the Examiner’s Answer at pages 26-33 thereof in response to Appellants’ Appeal Brief. We concur with the conclusion reached by the Examiner. As to above contention 5, see particularly the Examiner’s discussion at page 26 of the Answer. As to above contention 6, see particularly the Examiner’s discussion in the paragraph bridging pages 29-30 of the Answer. The Examiner found that seeking to both sharpen and smooth an image was a notoriously well- known problem in the art and refers to five examples. In the Reply Brief, without challenging the Examiner’s finding, Appellants invited the Examiner to re-open prosecution by stating “[i]f the Examiner wishes to rely on the disclosures of the newly cited references . . . , he should re-open prosecution . . .” (Reply Br. 14 n 1). Appeal 2009-011395 Application 10/919,671 35 First, the Examiner has relied on the disclosures of the newly cited references, and the Appellants have not challenged the Examiner’s finding. Second, Appellants’ invitation to the Examiner is not deemed to constitute a request that prosecution be reopened before the Examiner under 37 C.F.R. § 41.39(b)(1).18 Given the Examiner’s new ground of rejection, the appropriate Appellants’ responses consisted of (A) a proper request to reopen prosecution; (B) a challenge to the Examiner’s finding in the Reply Brief; or (C) a waiver of any challenge to the Examiner’s finding (with or without a Reply Brief). We deem Appellants’ response to be a waiver of any challenge to this particular finding of the Examiner. Separately, we note Appellants’ contention 6 is not consistent with Appellants’ admission that the prior art comprises combining selective image sharpening and selective image smoothing in a single filter. (FF 15). CONCLUSIONS (1) The Examiner erred in rejecting claims 1-42 under 35 U.S.C. § 101 as being directed to non-statutory subject matter. (2) The Examiner erred in rejecting claims 1-4, 8, 17-20, 23, 29, 30, and 33 as being anticipated under 35 U.S.C. § 102(b). (3) The Examiner has not erred in rejecting claims 1, 7, 9-17, 22, 24-29, 32, and 34-38 as being unpatentable under 35 U.S.C. § 103(a). 18 Due to the new ground of rejection under § 101 entered December 29, 2008, in the Examiner’s Answer. Appeal 2009-011395 Application 10/919,671 36 DECISION The Examiner’s rejections of claims 1-42 under 35 U.S.C. § 101 are reversed. The Examiner’s rejection of claims 1-4, 8, 17-20, 23, 29, 30, and 33 under 35 U.S.C. § 102 is reversed. The Examiner’s rejection of claims 1, 7, 9-17, 22, 24-29, 32, and 34-38 under 35 U.S.C. § 103 is affirmed. 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-IN-PART19 tj 19 We have decided the appeal before us. However, should there be further prosecution of claims 17-28, the Examiner’s attention is directed to claim 17, which is structured as a single means claim. Copy with citationCopy as parenthetical citation