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The Board Takes Bilski for a Test Drive and Runs Over Some Software Claims

July and August have been busy months for the Board of Patent Appeals and Interferences.  Not including the Ex Parte Proudler and Ex Parte Birger cases I previously reported on, the BPAI has issued at least ten opinions in which software-related claims were rejected under Section 101 in view of Bilski.  These opinions, excerpts of which are provided below, present both understandable and puzzling Section 101 rejections.  A number of the rejections are understandable due to a lack of computer structure or electronic functionality in the claim to tie the software elements to a machine implementation. Of particular note, it appears that machine limitations in method claims are not enough per se to bring the claim into the machine sphere of the machine or transformation test, according to these Board decisions, despite the PTO’s Interim Guidance, which seems to indicate otherwise.

Several of the rejections seem to completely ignore express machine limitations, for example as found in Ex Parte Caccavale et al., where the representative claim recites a method of operating a data processing system with “distributed processing units”, including the steps of  “accessing … databases over the data processing system.”  While this claim has method steps, the method is performed on a machine.  Another example is found in Ex Parte Craig William Fellenstein et al., wherein one claim rejected under Section 101 included steps for detecting messaging system events, recording the messaging system events in a database, compiling statistical usage data from the messaging system events, and displaying the target user’s statistical usage data on an output device.  Again, while this is a method claim, it is a method of using a machine-based system, and appears to me to transform at least usage data to a visual representation.  Another 101 rejection that is puzzling to me is found in Ex Parte Gopalan Ramanujam, which includes a rejected apparatus claim that recites a “destination storage location corresponding to a first architectural register” and “a functional unit to process … “

The foregoing rejections seem to be at least partially inconsistent with the PTO’s Interim Guidelines for 101, which include the following guidance:

  • Factors To Be Considered in an Abstract Idea Determination of a Method Claim
    • A. Whether the method involves or is executed by a particular machine or apparatus. If so, the claims are less likely to be drawn to an abstract idea; if not, they are more likely to be so drawn.
      • (1) The particularity or generality of the elements of the machine or apparatus; i.e., the degree to which the machine in the claim can be specifically identified (not any and all machines). Incorporation of a particular machine or apparatus into the claimed method steps weighs toward eligibility.
      • (2) Whether the machine or apparatus implements the steps of the method. Integral use of a machine or apparatus to achieve performance of the method weighs toward eligibility, as compared to where the machine or apparatus is merely an object on which the method operates, which weighs against eligibility.

 

Other of the rejections appeared to me to be justifiable because the subject claims lack any machine structure or clearly recite an abstract process.  For example, Ex Parte Miguel A. Estrada et al., includes this claim, which was rejected as an unpatentable business method:

1. A method for managing membership in a collaborative computing environment community, the method comprising:

receiving identification of a selected group of end user persons to invite to join the collaborative computing community;

evaluating the selected group to identify one or more invitees there from;

inviting the one or more identified invitees; and

receiving an indication from one or more invitees that the invitee wishes to join the community.

One of the more interesting opinions, Ex Parte Joseph A. Russo et al., held that a claim drawn to a “machine readable storage” having stored thereon a computer program, is statutory under 35 U.S.C. § 101.  In particular, the following claim was found Section 101 sufficient:

9. A machine readable storage having stored thereon a computer program for hierarchical grouping, the computer program comprising a routine set of instructions which when executed by a machine cause the machine to perform the steps of:

mapping attributes in a single hierarchically structured directory to individual roles in a

multi- hierarchical collaborative context;

selecting a particular one of said roles; and,

retrieving entries from said directory having mapped ones of said attributes which correspond to said particular one of said roles.

On the other hand, the following corresponding claim 1 was found non-statutory under Section 101:

1. A hierarchical grouping system comprising:

a collaborative context comprising a community of subscribers, a plurality of roles assigned to said subscribers, and

a plurality of tools and resources configured for access by said subscribers said access being limited by said roles;

a directory comprising entries associated with said subscribers, said directory having a single hierarchical structure; and,

a mapping between said directory and said roles in said collaborative context.

All in all the ten Board decisions excerpted below are interesting to say the least.  While they are instructive to read, several of the rejections upheld or applied by the Board sua sponte seem puzzling even giving Bilski a broad interpretation.  Hopefully a number of these decisions are purposely aggressive in order to force one or more appeals to the Federal Circuit, which will hopefully lead to some concrete guidance on how Section 101 is be applied to software-based inventions, and in particular inventions that do not involve business methods.  Following are representative claims and passages from each of the decisions:

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Ex Parte Frank S. Caccavale, Sridhar C. Villapakkam, and Skye W. Spear

Appeal 2009-006026

Application 10/441,866

Technology Center 2400

July 23, 2010

Ex parte Caccavale (BPAI 2010)

8. In a data processing system including distributed processing units, a method of analysis of performance of the data processing system, said method comprising:

each of the distributed processing units accumulating performance parameters including response time measurements and workload across intervals of time, said each of the distributed processing units storing the performance parameters accumulated by said each of the distributed processing units in an industry standard database in said each of the distributed processing units; and

accessing the industry standard databases over the data processing system to retrieve the performance parameters accumulated by the distributed processing units, and determining a measure of performance of the data processing system from the retrieved performance parameters;

wherein the industry standard database is the Windows Management Instrumentation database, and the method includes said each distributed processing unit using an operating system to store the performance parameters accumulated by said each of the distributed processing units in the Windows Management Instrumentation database;

wherein the measure of performance of the data processing system is a measure of metric entropy of the data processing system, and the measure of metric entropy of the data processing system is computed from the performance parameters retrieved from the industry standard database by computing an average response time over the distributed processing units, computing a histogram of the average response time over the distributed processing units, and

computing the measure of metric entropy of the data processing system from the histogram.

“As we stated above, claim 8 merely involves a process of statistical analysis computations. (See supra.) Appellants’ computational process claim is comparable with the algorithm to convert binary-coded decimal numerals into pure binary code in Benson, in that Appellants seek to patent an idea. If such computational processes were not barred under 35 U.S.C. § 101, then the processes “would wholly pre-empt the mathematical formula and in practical effect would be a patent on the algorithm itself.” (Benson, cited above.) We thus find that Appellants’ claim 8 is merely an abstract idea in accordance with Benson, a precedential case relied upon in Bilski v. Kappos as a “useful … investigative tool” for determining subject-matter eligibility. Accordingly, we affirm the Examiner’s rejection R1.”

Ex Parte Tse-Huong Choo, Scott A. Leerssen, and Joubert Berger

Appeal 2009-006352

Application 09/896,019 Technology Center 2400

July 28, 2010

Ex parte Choo (BPAI 2010)

1. A computer system for controlling access to certain files by processes, said computer system comprising:

compartments implemented on an operating system;

a database containing access rules, said access rules defining which compartments are authorized to access particular file resources;

a kernel module the receiving a system call to access a file from a user space application belonging to a compartment; and

a security module for determining whether said user space application is authorized to access said file utilizing access rules stored in said database.

“Appellants contend that the preamble of claim 1 recites a “system” and thus is a statutory “machine” under §    101. Br. 10. We disagree. Even assuming that claim 1 is directed to the “machine” category in § 101, this does not end the patent-eligibility analysis. See In re Ferguson, 558 F.3d 1359, 1364 (Fed. Cir. 2009). Claim 1 must be construed in its entirety. That is, as previously discussed, the claim’s body recites nothing more than data structures and software, and the claim’s preamble (i.e., “[a] computer system for controlling access to certain files by processes”) only serves to limit the claim by describing the invention’s intended use. See Catalina Mar­keting Int’l, Inc., v. Coolsavings.com Inc., 289 F.3d 801, 808 (Fed. Cir. 2002). Moreover, the compartments, op­erating system, database, and modules do not operate on the system recited in the preamble, and thus are given little patentable weight. See Corning Glass Works v. Sumitomo Electric U.S.A., Inc., 868 F.2d 1251, 1257 (Fed. Cir. 1989).

For the foregoing reasons, we sustain the § 101 rejection of claim 1 and claims 2-13 not separately argued.”

Ex Parte Brian S. Christian, Russell M. Eames, Thomas Fakes, and Bhavesh R. Thaker

Appeal 2009-006589

Application 10/606,089 Technology Center 2400

August 23, 2010

Ex parte Christian (BPAI 2010)

1. A method, comprising:

receiving data input through a web page from a client device;

referencing a declarative module to determine a client input security screen to apply to the data input from the client device, wherein the declarative module comprises:

a global section that includes at least one client input security screen that applies to any type of client input value; and

an individual values section that includes at least one client input security screen that applies to a particular type of client input value; and

applying multiple client input security screens to the data input from the client device, including at least one client input security screen from the global section of the declarative module and at least one client input security screen from the individual values section of the declarative module, wherein the client input security screens are distinct from one another, and wherein said act of referencing comprises first using the global section to screen one or more client input values and then using the individual values section to screen at least one of said one or more client input values.

“Consistent with our earlier-noted invention statement taken from Appellants’ Summary of Invention, the disclosed and claimed invention is directed to software per se, abstract ideas, abstract concepts and methodologies and the like, including various data structures and named entities, such as a declarative module and various sections thereof, software, software applications, and abstract intellectual processes associated with them within the claims on appeal.”

Ex Parte Harold Edward Elkins II and Freeman Murray Sanderford II

Appeal 2009-006190

Application 10/853,732 Technology Center 2100

July 30, 2010

Ex Parte Elkins

1. A method for modeling distributed generation for a customer, comprising:

obtaining a projected electric consumption profile for the customer for a period of time that is divided into a plurality of time periods;

obtaining a projected electricity cost that projects the cost of electricity purchased from an electric provider for the period of time, the projected electricity cost being associated with one or more of the plurality of time periods;

obtaining operating parameters for one or more generators, the operating parameters including an electrical generator capacity and heat rate information;

obtaining a projected fuel price for one or more fuels to be used by the one or more generators for the period of time;

determining a projected generator operating cost to generate electricity using a generator from the one or more generators based on the projected electric consumption profile for the plurality of time periods of the period of time, the projected generator operating cost determined using at least the operating parameters associated with the generator and the projected fuel price of the fuel to be used by the generator;

generating a projected dispatch operation schedule of the generator by comparing, for the plurality of time periods, the projected generator operating cost of the generator to the projected electricity cost of electricity purchased from an electric provider for the plurality of time periods of the period of time; and

generating a revised projected electric consumption profile for the customer by subtracting the projected dispatch of the generator for the plurality of time periods from the projected electric consumption profile.

“The subject matter of claims permitted within 35 U.S.C. § 101 must be a machine, a manufacture, a process, or a composition of matter. Moreover, our reviewing court has stated that “[t]he four categories [of § 101] together describe the exclusive reach of patentable subject matter. If the claim covers material not found in any of the four statutory categories, that claim falls outside the plainly expressed scope of § 101 even if the subject matter is otherwise new and useful.” In re Nuijten, 500 F.3d 1346, 1354 (Fed. Cir. 2007); accord In re Ferguson, 558 F.3d 1359 (Fed. Cir. 2009). This latter case held that claims directed to a “paradigm” are nonstatutory under 35 U.S.C. § 101 as representing an abstract idea. Thus, a “signal” cannot be patentable subject matter because it is not within any of the four categories. In re Nuijten, 500 F.3d at 1357. Laws of nature, abstract ideas, and natural phenomena are excluded from patent protection. Diamond v. Diehr, 450 U.S. at 185. A claim that recites no more than software, logic or a data structure (i.e., an abstraction) does not fall within any statutory category. In re Warmerdam, 33 F.3d 1354, 1361 (Fed. Cir. 1994). Significantly, “[a]bstract software code is an idea without physical embodiment.” Microsoft Corp. v. AT&T Corp., 550 U.S. 437, 449 (2007). The unpatentability of abstract ideas was reaffirmed by the U.S. Supreme Court in Bilski v. Kappos, 130 S. Ct. 3218 ( 2010).

The initial clauses of method independent claims 1 and 35 relate to preliminary data gathering operations or extra solution data gathering functions. In a corresponding manner, in system independent claim 40, these corresponding data gathering operations are merely reflected as database “components,” in turn reflective of the data structures from figures 2 through 7. These data “components” are also merely recited to be “operable to” maintain data of various characterizations; they are not positively recited in claim 40. The data associated with a generator of representative independent claim 1 on appeal is characterized as relating to “one or more” such generators.

Independent method claim 35 merely purports to relate to a first and a second generator in a corresponding manner that fails to positively recite that these respective generators are different from each other. The remaining clauses of method independent claims 1 and 35 on appeal relate to functionalities associated with mathematical compare operations, mathematical subtractions and the mathematical determination of related data values.

System independent claim 40 recites these functionalities as associated with a processor that is merely characterized as “operable to” calculate data values and merely “operable to” to perform mathematical compare operations to yield a numeric result. These functionalities are not positively recited.

The end result of each independent claim 1, 35, and 40 is a computed, characterized numeric value similar to the computed updated alarm limit data values proscribed by Parker v. Flook, 437 U.S. 584 (1978). The numeric value resulting from the data gathering and mathematical computations of the present claims on appeal falls short of being utilized in any manner to perform a corresponding control function of a physical machine, such as opening a rubber mold, as in Diamond v. Diehr, 450 U.S. 175. Additionally, these claims do not survive the analysis from Ex parte Gutta, 93 USPQ2d 1025 (BPAI 2009) (precedential). Overshadowing all of this analysis, the claims in this appeal may be fairly characterized as being directed to abstract ideas according to the earlier-noted precedent since these claims are directed to a mathematical modeling functionality.”

Ex Parte Miguel A. Estrada, Joseph A. Russo, and Thomas M. Spine

Appeal 2009-012192

Application 10/731,823 Technology Center 3600

August 26, 2010

Ex Parte Estrada (BPAI 2010)

1. A method for managing membership in a collaborative computing environment community, the method comprising:

receiving identification of a selected group of end user persons to invite to join the collaborative computing community;

evaluating the selected group to identify one or more invitees there from;

inviting the one or more identified invitees; and

receiving an indication from one or more invitees that the invitee wishes to join the community.

“Claims 1-7 are drawn to business methods. Taking claim 1 as representative, the broadest reasonable construction of the claimed process in light of the Specification as it would be interpreted by one of ordinary skill in the art is that it provides a series of instructions that do no more than receive one type of information, evaluate the information, invite, and receive another type of invitation from an invitee. In effect, the process claimed explains a method for identifying persons to invite and who wish to join a community; i.e., “a collaborative computing environment community” (claim 1).

Accordingly, as claimed, the process provides nothing more than vague instructions in how to identify persons to invite and who wish to join a community. That is, the claimed process proposes following a simple formula for identifying a person likely to join a community: receive information, evaluate, invite, and the invitee indicates if he/she wishes to join.

We now turn to the question of whether the claimed process subject matter is patent-eligible under 35 U.S.C. § 101. Various factors must be considered and weighed when analyzing claims as a whole before reaching a conclusion on patent subject matter eligibility.

The factors relevant in this case are the lack of recitations in the claims to a machine or transformation and that the claims are mere statements of a general concept.

There is no recitation in the claims of a machine, expressly or inherently.

There is no recitation of a transformation, expressly or inherently.

As we have reasonably broadly construed it, the subject matter of claim 1 is made up of mere statements of the general concept of identifying and inviting a person to join a community and receiving a positive indication. The vague instructions listed in the claim are disembodied and do no more than instruct how business should be conducted; that is, to invite a person to join a community and receive a positive indication. The claim covers any use of the concept of identifying and inviting a person to join a community and receiving a positive indication, known and unknown. The instructions could be performed by any machine, existing or future-devised. Furthermore, the process as claimed could be accomplished by human activity alone, including through mental processes.

In the words of Gottschalk v. Benson, 409 U.S. 63, 72 (1972), the claimed processes “would wholly preempt the [identifying and inviting a person to join a community and receiving a positive indication] and in practical effect would be a patent on the [concept] itself.”

For the foregoing reasons, based upon consideration of all of the relevant factors with respect to claims 1-7 as a whole, claims 1-7 are held to claim an abstract idea and are therefore rejected as ineligible subject matter under 35 U.S.C. § 101.”

Ex Parte Craig William Fellenstein, Carl Phillip Gusler, Rick Allen Hemiltonii, and James Wesley Seaman

Appeal 2009-006595

Application 10/626,194 Technology Center 2400

July 27, 2010

Ex parte Fellenstein (BPAI 2010)

21. A method of identifying optimal times for an end user to contact a target user of a messaging system, comprising detecting messaging system events, recording the messaging system events in a database, compiling statistical usage data from the messaging system events, and displaying the target user’s statistical usage data on an output device;

wherein the statistical usage data is adapted to allow the end user to determine a best time to contact the target user for a messaging session by providing a plurality of data regarding the target user’s times for signing in and signing out, the target user’s average time signed on each day, and the target user’s messages sent and received.

“With this background in mind, all claims on appeal, claims 1 through 27, are rejected under 35 USC § 101 as being directed to nonstatutory subject matter. Consistent with our earlier-noted invention statement taken from Appellants’ disclosed abstract, the disclosed and claimed invention is directed to software per se, abstract ideas, abstract concepts and methodologies, and the like, including various data structures, software, software applications, and abstract intellectual processes associated with them within the claims on appeal.

Appellants’ disclosed abstract itself states that an “apparatus” comprises an event monitor, a usage processor, and usage indicator which are stated to be implemented as computer instructions, including as a single computer program. This analysis is consistent with the subject matter at Specification page 5 that indicates various identified elements have expansive rather than defined meanings in the art. Again, the claimed event monitor, usage processor, and usage indicator are stated at Specification page 5 to be implemented as computer instructions. The functionalities associated with these identified terms are illustrated in disclosed figures 3 and 5 in flowchart form. Significantly, the sentence bridging Specification pages 6 and 7 states that “[t]he present invention is a methodology that can be embodied in a computer program.” This brief analysis is clearly applicable to representative independent method claim 21 on appeal that is reproduced earlier in this opinion. The body of each independent claim 1, 11, and 21 recites essentially the same functional features relating to the previously described event monitor, usage processor, and usage indicator. Much of the wherein clause at the end of these claims relates as well to human/user determinations/analyses. As indicated earlier in our analysis, the claimed apparatus in the preamble of independent claim 1 on appeal is not hardware but comprises, as defined in the abstract etc., software entities themselves. A computer program is directly recited in independent claim 11 and the computer readable storage medium of this claim presumptively includes transitory signal embodiments. The medium includes and encompasses signals per se, all of which are proscribed by the earlier-noted case law. Note also the analysis provided by Subject Matter of Eligibility of Computer Readable Media, 1351 Off. Gaz. Pat. Office 212 (Feb. 23, 2010).”

Ex Parte Jorg Heuer, Andreas Hutter, and Ulrich Niedermeier

Appeal 2009-004590

Application 10/482,518

Technology Center 2100

August 4, 2010

Ex Parte Heuer (BPAI 2010)

19. A method for improved decoding of a binary representation of a[n] XML-based document, comprising the steps of:

associating the binary representation of the XML-based document to a name space or schema, wherein the XMLbased document contains only elements or types of a name subspace of the name space or of a simplified schema of the schema;

transmitting the name subspace or simplified schema to at least one decoder;

transmitting a correction code to the at least one decoder;

performing a code substitution of the name subspace or simplified schema to codes of the name space or schema using the correction code; and

decoding, via the decoder, the binary representation of the XML-based document in accordance with the name space or schema from the name subspace or simplified schema with the aid of the correction code.

“The Supreme Court recently identified the “machine-or-transformation” test as an “important tool” in determining the patentability of subject matter involving processes. (See Bilski, 2010 WL 2555192, cited above.) We apply a test recognized in the Supreme Court’s Bilski decision as a “useful … tool” (i.e., the machine-or-transformation test) for determining subject-matter eligibility of the claimed invention. We find that exemplary claim 19 does not involve a machine under the first prong of the “machine-or-transformation” test stated by the CAFC in In re Bilski, cited above. The claim 19 merely recites an “XML-based document,” “a simplified schema,” “a schema,” “correction code,” and “at least one decoder.”

Turning to the Specification, we note nothing demonstrating that any of the above-stated claim elements must be hardware, and not software. Accordingly, we find no evidence that the claim includes any “machine” consistent with the bounds of the CAFC’s test. Accordingly, we find that the “machine” prong of the Bilski test is not met by the claim language. Next, we find that claim 19 fails to meet the “transformation” prong of the Bilski test. The fact that Appellants’ XMLbased document is decoded using the claimed “namespace” or the claimed “simplified schema” fails to qualify as a transformation of an article of manufacture consistent with the second prong of the “machine-or-transformation” test. Thus, we find that claim 19 fails to meet either the prong of the CAFC’s test.”

Ex Parte Ted Christian Johnson

Appeal 2009-006718

Application 10/085,895 Technology Center 2400

July 29, 2010

Ex parte Christian (BPAI 2010)

1. A method for authenticating a Web session comprising:

receiving a user ID;

computing a message digest of the user ID;

computing an expiration timestamp for the session;

selecting an index number;

combining the message digest and expiration timestamp;

accessing an encryption key using the index number;

encrypting the combined message using the accessed encryption key; and

converting the encrypted message into an ASCII string.

“Appellant submits that the Examiner’s 35 U.S.C. § 101 rejection is inconsistent with United States Patent and Trademark Office treatment of similar claims in other applications. Based on Appellant’s arguments in the Appeal Brief, we will decide the appeal of claims 17-20 with respect to issue 1 on the basis of claim 17. See 37 C.F.R. § 41.37(c)(l)(vii).

We are not persuaded by Appellant’s arguments, which fail to identify any error in the substance of the Examiner’s rejection. It is irrelevant to the present case whether patents have issued with similar claims to those rejected. The boundaries of patentable subject-matter are challenging to map precisely, with controlling case law in a constant state of flux as the universe of clues to patent-eligibility is explored. See, e.g.,Bilski v. Kappos, 130 S.Ct. 3218 ( 2010). Furthermore, Appellant seeks to claim a system comprising nothing but logic (claim 17), where logic may be implemented in software (FF 1). This claim is therefore directed to software per se, which falls outside the scope of patentable subject matter. See In re Warmerdam, 33F.3d at l361.

For at least these reasons, we find no evidence persuasive of error in the Examiner’s 35 U.S.C. § 101 rejection of claim 17, and claims 18-20 which fall therewith with respect to this issue.”

Ex Parte Gopalan Ramanujam

Appeal 2009-002483

Application 10/658,612 Technology Center 2100

August 12, 2010

Ex Parte Ramanujam (BPAI 2010)

1. An apparatus comprising:

a destination storage location corresponding to a first architectural register;

a functional unit to process a packed format values by converting, responsive to a control signal, a first packed first format value in a first format selected from a first plurality of packed first format values in the first format to a first plurality of second format values, said first packed first format value having a plurality of sub elements each having a first number of bits, each of the first plurality of second format values being a number represented in a second format and having a second number of bits which is greater than the first number of bits, said functional unit to store all of said first plurality of second format values into said first architectural register.

20. A method comprising:

a module fetching a first instruction that specifies a location of a first format value in a first format among a plurality of first format values of a packed data, the first format value having a plurality of sub elements each sub element having a first number of bits;

a functional unit processing the first format value by converting the first format value to a first plurality of second format values in a second format, each of the first plurality of second format values having second format and corresponding to one of the plurality of sub elements, the second format having a multiple of the first number of bits;

storing the first plurality of second format values into a first register.

32. A tangible machine readable medium carrying an Instruction, which if executed by a machine, causes the machine to perform the operations of:

converting an integer value, the integer value being among a plurality of integer values of a packed data and having a first integer format having a plurality of sub elements each having a first number of bits, to a plurality of floating point values; each of the plurality of floating point values having a first floating point format, the first floating point format having a multiple of the first number of bits; and

storing the plurality of floating point values into a first register.

“As a result, aside from the nominal preamble recitations, claims 1 and 15 lack concrete limitations. Indeed, by failing to include any structural or functional relationship between the destination storage location, decoder, and functional unit and the elements of a computer or other structure, we conclude one of ordinary skill in the art would have broadly but reasonably construed these elements to recite software. These claims to software per se encompass embodiments that do not permit the computer program functionality to be realized. (Manual of Patent Examining Procedure (MPEP), § 2106.01 (8th ed., rev. 7, July 2008).) Accordingly, these claims are therefore directed to software per se, which falls outside the scope of patentable subject matter. (See In re Warmerdam, 33 F.3d 1360, 1361 (Fed. Cir 1994).)

For at least these reasons, we find no evidence persuasive of error in the Examiner’s 35 U.S.C. § 101 rejection of claims 1 and 15, and claims 2-14 and 16-19 which fall therewith.

Moreover, we conclude these concepts of fetching and processing data are not patentable processes but attempts to patent a mathematical algorithm – converting a value in one format to a value in another format.

We therefore find that the method recited in claim 20 and claims 21- 15 which fall therewith, recites an abstract idea and is therefore nonstatutory under § 101. Thus, we conclude Appellant has failed to persuade us of error in the Examiner’s conclusion that claims 20-25 recite non-statutory subject matter.”

Ex Parte Joseph A. Russo, Mustansir Banatwala, Miguel A. Estrada, and Sami M. Shalabi

Appeal 2009-001876

Application 10/744,301

Technology Center 2100

August 30, 2010

Ex parte Russo (BPAI 2010)

1. A hierarchical grouping system comprising:

a collaborative context comprising a community of subscribers, a plurality of roles assigned to said subscribers, and

a plurality of tools and resources configured for access by said subscribers said access being limited by said roles;

a directory comprising entries associated with said subscribers, said directory having a single hierarchical structure; and,

a mapping between said directory and said roles in said collaborative context.

“We further find that claim 1 is directed to a system comprising a set of pure data structures, such as 1) a directory with entries, 2) roles assigned to subscribers of a community, and 3) a nonspecified mapping between the roles and the directory. The claim is thus directed to a mere relationship between data elements; not even an algorithm. Thus, consistent with Gottschalk v. Benson, 409 U.S. 63 (1972), we find this system claim to also be non-statutory.

Machine readable medium claims not 101 rejected:

Appellants argue that claim 9 is drawn to a “machine readable storage” having stored thereon a computer program, and that this is equivalent to the “computer readable medium” which is a term common for “manufacture” (device) statutory patents issued by the Office (App. Br. 6, bottom). We agree and will not sustain the rejection under 35 U.S.C. § 101 of this claim 9 or those claims dependent thereon.”

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