Ex parte Benny
| Decision Date | 27 May 2010 |
| Docket Number | Application 09/876,090,Appeal 2009-001260 |
| Parties | Ex parte MARK ANDREW BENNY, PHILIPPE COMPAIN, ALAN PAUL PICKERSGILL, STEPHEN WILLIAM NEKOLAICHUK, ROBERT J. SIMMONS, and CHRIS EDWARD TERRY Technology Center 2400 |
| Court | United States Patent and Trademark Office. United States Patent and Trademark Office, Patent Trial and Appeal Board |
Before JOSEPH L. DIXON, JAY P. LUCAS, and ST. JOHN, COUTERNAY III Administrative Patent Judges.
DIXON Administrative Patent Judge.
The Appellants appeal under 35 U.S.C. § 134(a) from the Final rejection of claims 22-25. We have jurisdiction under 35 U.S.C. § 6(b). We Affirrn-In-Part.
The invention at issue on appeal relates to a method and a program for creating a technical delivery framework to manage information technology systems (Spec. 1).
Claim 22, an illustrative claim, reads as follows:
The Examiner relies on the following reference as evidence:
Hill
US 6, 670, 973 B1
Dec. 30, 2003
The Rejections
The following rejections are before us for review:
1. Has the Examiner erred in finding that the technical framework recited in claim 23 and a computer program product recited in claim 24 are not patent-eligible subject under 35 U.S.C. § 101[3]?
2. Has the Examiner erred in identifying that claims 22-25 stand rejected under nonstaturary obviousness-type double patenting as being unpatentable over claims 1-15 of copending Application No. 09/875, 863 of claims 25-30 of the copending Application No. 09/875, 865?
3. Has that the Examiner erred in finding that Hill discloses the limitations "determining a solution scope for the technical framework to be created, the solution scope guided by an information technology services contract with the customer, the solution scope based on common practices for delivering certain types of information technology services" as recited in claim 22?
"[Anticipation of a claim under § 102 can be found only if the prior art reference discloses every element of the claim . . . ." In re King, 801 F.2d 1324, 1326 (Fed. Cir. 1986) (citingLindemann Maschinenfabrik GMBH v. American Hoist & Derrick Co., 730 F.2d 1452, 1457 (Fed. Cir. 1984)). "[A]bsence from the reference of any claimed element negates anticipation." Kloster Speedsteel AB v. Crucible, Inc., 793 F.2d 1565, 1571 (Fed. Cir. 1986), overruled on other grounds by Knorr-Bremse Systeme Fuer Nutzfahrzeuge GmbH v. Dana Corp., 383 F.3d 1337 (Fed.Cir. 2004). In rejecting claims under 35 U.S.C. § 102, "[a] single prior art reference that discloses, either expressly or inherently, each limitation of a claim invalidates that claim by anticipation." Perricone v. Medicis Pharm. Corp., 432 F.3d 1368, 1375-76 (Fed. Cir. 2005) (citation omitted).
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
A nonstatutory obviousness-type double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See e.g., In re Berg, 140 F.3d 1428 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046 (Fed. Cir. 1993); In re Longi, 759 F.2d 887 (Fed. Cir. 1985).
The following finding of fact (FF) is supported by a preponderance of the evidence.
The Hill reference
1. Hill discloses a method and a computer program as a tool for representing the information technology (IT) infrastructure of an organization as a hierarchical list and graph (Abstract). The elements of the hierarchical list and graph can be added and deleted. The relationship between the elements of the hierarchical list and graph can be modified .
The Appellants have the opportunity on appeal to the Board of Patent Appeals and Interferences (BPAI) to demonstrate error in the Examiner's position. See In re Kahn, 441 F.3d 977, 985-86 (Fed. Cir. 2006) (citing In re Rouffet, 149 F.3d 1350, 1355 (Fed. Cir. 1998). The Examiner sets forth a detailed explanation of a reasoned conclusion of unpatentability in the Examiner's Answer. Therefore, we look to Appellants' Briefs to show error therein. Id
Independent claim 22, recites, inter alia, "determining a solution scope for the technical framework to be created, the solution scope guided by an information technology services contract with the customer, the solution scope based on common practices for delivering certain types of information technology services." Independent claims 23-25 contain similar recitations of these limitations.
35 U.S.C § 101 Rejection
With respect to clam 23, the Appellants contend that claim 23 is directed to a useful and tangible result, namely creating a technical framework or use in delivering a specific set of IT services for a customer (App. Br. 10). According to the Appellants, claim 23 is not directed to an abstract idea, a law of nature or a natural phenomenon. Rather, "[i]t does have substantial practical application, namely providing a way for . . . outsourcing services from one client to the next." (Reply Br. 3). In addition, the framework as claimed typically identifies how those parts fit together at the highest level and "is not an abstract idea as asserted by the Examiner." Id. Finally, the Appellants contend that the Examiner does not cite any legal authority to support his position and provide any evidence that any of limitations of claim 23 can be performed by a person. Id
We disagree with the Appellants' contentions. "An idea of itself is not patentable.'" Diamond v. Diehr, 450 U.S. 175, 185 (1981) (quoting Rubber-Tip Pencil Co. v. Howard, 87 U.S. (20 Wall.) 498, 507 (1874); Gottschalk v. Benson, 409 U.S. 63, 70 (1972) ("[M]ental processes, and abstract intellectual concepts are not patentable."); see also id. at 71 ("It is conceded that one may not patent an idea."). The body of claim 23 recites "a solution scope determined for the technical framework . . . a mapping of the customer's existing equipment to lowest level abstractions of architectural building blocks . . . a list of design objects created as a function of the solution scope . . . designated relationships between the design objects . . . a detailed technical design developed for the information technology . . ." (Emphasis added). The technical framework with all the steps can certainly be written on a paper with a pencil by a person (e.g. summary for a brainstorm meeting of a technical team) or can even be just an idea of how to deliver IT service on someone's mind (e.g. a IT project manager or a senior IT architect).
We conclude that claim 23 is directed to a "paradigm" and thus is nonstatutory under 35 U.S.C. § 101 as representing an abstract idea. See In re Ferguson, 558 F.3d 1359, 1363 (Fed. Cir. 2009), petition for cert, filed, 77 U.S.L.W. 3680 (Jun. 20, 2009) (No. 80-1501) ("[E]ven if a claim may be deemed to fit literally within one or more of the statutory categories, it may not be patent eligible.") "Phenomena of nature, though just discovered, mental processes, and abstract intellectual concepts are not patentable, as they are the basic tools of scientific and technological work." Id. (quoting Gottschalk v. Benson, 409 U.S. 63, 67 (1972) (internal quotation marks omitted)). Because the recited "information technology service contract" is a mere meeting of the minds, the claimed "contract" is clearly directed to an abstract intellectual concept or mental process.
In addition, ...
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