Ex Parte Nachlieli et al

Patent Trial and Appeal Board

Apr 18, 2013

10919671 (P.T.A.B. Apr. 18, 2013)

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

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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.
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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.
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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.
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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.
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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.
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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
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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.
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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).
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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).

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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
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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.
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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:

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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
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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).
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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).

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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”).
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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)).
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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.
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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).
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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).
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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).
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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.
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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.
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(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).
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(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.”).
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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
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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
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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
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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
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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,
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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.
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“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.

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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).
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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.

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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.