Ex parte Daughtrey

• Decision Date: 08 April 2009
• Docket Number: Appeal 2008-0202,Technology Center 3600
• Parties: Ex parte RODNEY DAUGHTREY Application 09/812, 224
• Court: United States Patent and Trademark Office. United States Patent and Trademark Office, Patent Trial and Appeal Board

Ex parte RODNEY DAUGHTREY Application 09/812, 224

Appeal 2008-0202

Technology Center 3600

United States Patent and Trademark Office, Patent Trial and Appeal Board

April 8, 2009

Before ALLEN R. MACDONALD, Vice Chief Administrative Patent Judge and LEE E. BARRETT and LINDA E. HORNER, Administrative Patent Judges.

DECISION ON APPEAL

HORNER, ADMINISTRATIVE PATENT JUDGE

STATEMENT OF THE CASE

Rodney Daughtrey (Appellant) seeks our review under 35 U.S.C. § 134 of the final rejection of claims 1-39. We have jurisdiction under 35 U.S.C. § 6(b) (2002).

SUMMARY OF DECISION

We AFFIRM-IN-PART and enter NEW GROUNDS OF REJECTION, pursuant to our authority under 37 C.F.R. § 41.50(b).

THE INVENTION

The Appellant's claimed invention is directed to a user interface, method, and computer program product for use in travel planning. Claims 1, 4, and 15, reproduced below, are representative of the subject matter on appeal.

1. A user interface for a fare rule summary tool, the user interface displayed on a monitor, the user interface comprising:

a fare evaluation result table that displays fare rule summaries for fares in slices of an itinerary, the fare evaluation result table having a first one of rows and columns representing fares and a second one of rows and columns representing the fare rule summaries.

4. The user interface of claim 2 wherein at least one of the columns represents fare combinability restrictions.

15. A method for producing a concise summary of fare rules and restrictions that the fare rules place on fares, the method comprising:

parsing a set of queries to provide at least one city pair corresponding to an origin and a destination of a flight slice;

retrieving fares and fare rules for each city pair over a time period set in the query;

evaluating the retrieved fares against the retrieved rules and returning a status corresponding to pass, fail, or defer and

producing a summary of the results of evaluating the rules for a fare against the criteria specified in the query; and

displaying the summary on a user output device.

THE REJECTIONS

The Examiner relies upon the following as evidence of unpatentability:

Kirk

US 5, 768, 578

Jun. 16, 1998

Tanner

WO 01/59590 A2

Aug. 16, 2001

The following rejections are before us for review:

1. Claims 1-14 are rejected under 35 U.S.C. § 101 as directed to non-statutory subject matter.

2. Claims 1-6, 8, 9, 12-17, 19, 20, and 22-38 are rejected under 35 U.S.C. § 102(b) as anticipated by Tanner.^[1]

3. Claims 18, 21, and 39 are rejected under 35 U.S.C. § 103(a) as unpatentable over Tanner and Kirk.

REJECTION OF CLAIMS 1-14 UNDER 35 U.S.C. § 101

ISSUE

The Examiner rejected claims 1-14 under 35 U.S.C. § 101 as directed to patent ineligible subject matter. Ans. 3. The Appellant contends that the claims are drawn to a patent eligible article of manufacture. App. Br. 9-10. The issue presented is:

Has the Appellant shown the Examiner erred in determining that the arrangement of information on a user interface on a monitor is an abstract intellectual concept and thus directed to patent ineligible subject matter?

FINDING OF FACT

We find that the following enumerated finding is supported by at least a preponderance of the evidence. Ethicon, Inc. v. Quigg, 849 F.2d 1422, 1427 (Fed. Cir. 1988) (explaining the general evidentiary standard for proceedings before the Office).

1. The term "interface" in the computer science art means "a. The point of interaction or communication between a computer and any other entity, such as a printer or human operator, b. The layout of an application's graphic or textual controls in conjunction with the way the application responds to user activity." The American Heritage Dictionary of the English Language (4th ed. 2000), found at www.bartelby.com.

PRINCIPLES OF LAW

Statutory Subject Matter

"[E]very discovery is not embraced within the statutory terms [of 35 U.S.C. § 101]. Excluded from such patent protection are laws of nature, natural phenomena, and abstract ideas." Diamond v. Diehr, 450 U.S. 175, 185 (1981) (citations omitted). "An idea of itself is not patentable." Id. (quoting Rubber-Tip Pencil Co. v. Howard, 20 Wall. 498, 507, 22 L.Ed. 410 (1874)).

ANALYSIS

Claims 1-14 are directed to a "user interface" comprising a table that displays information in a particular arrangement of rows and columns. The claim is thus directed to an arrangement of information in a table, a clear abstraction. See e.g., In re Warmerdam, 33 F.3d 1354, 1360 (Fed Cir. 1994) (holding that the steps of locating a medial axis and creating a bubble hierarchy "describe nothing more than the manipulation of basic mathematical constructs, the paradigmatic 'abstract idea'").

The claimed user interface is directed to nothing more than the layout of information at the point of interaction with a human being (Fact 1). Thus, claims 1-14 fail to go beyond a recitation of the manipulation of abstract ideas. Id.

The Appellant contends that claims 1-14 are not drawn to an interface per se, but rather are drawn to an article of manufacture, viz, an interface displayed on a monitor (App. Br. 10). Although the preamble recites that the user interface is "displayed on a monitor," the monitor is nowhere else recited in the claim, nor is the monitor a positively recited element of a claimed combination. This recitation of a monitor in the preamble fails to breathe life or meaning into the claim. Rather, the recitation is simply a statement of intended use. "If ... the body of the claim fully and intrinsically sets forth the complete invention, including all of its limitations, and the preamble offers no distinct definition of any of the claimed invention's limitations, but rather merely states, for example, the purpose or intended use of the invention, then the preamble is of no significance to claim construction because it cannot be said to constitute or explain a claim limitation." Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1305 (Fed. Cir. 1999) (citations omitted). As such, the recitation that the interface is "displayed on a monitor" does not further limit the claimed "user interface."

We further conclude that the claimed "user interface" is unpatentable because it is not within any of the four enumerated § 101 categories of "process, machine, manufacture, or composition of matter." See In re Nuijten, 500 F.3d 1346, 1354 (Fed. Cir. 2007), petition for en banc reh 'g denied, 515 F.3d 1361 (Fed. Cir. 2008), cert, denied, 129 S.Ct. 70 (2008) ("If a 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"). Thus, a "signal" cannot be patentable subject matter because it is not within any of the four categories. Id. at 1357. Similarly, a "paradigm" does not fit within any of the four categories. In re Ferguson, No. 2007-1232, slip op. at 11 (Fed. Cir. March 6, 2009). The claimed "user interface" is not an article of manufacture, as asserted by Appellants, because the recitation of a monitor in the preamble is simply a statement of intended use, and thus the claim is directed to an abstraction.

The Appellant further contends that the claimed interface is not merely non-functional descriptive material, because, a claim which calls for a user interface displayed on a monitor recites patentable subject matter (Reply Br. 1-2, citing In re Lowry, 32 F.3d 1579 (Fed. Cir. 1994)). We want to make clear that we are not relying on the printed matter doctrine as the basis for sustaining the Examiner's rejection of claims 1-14. Rather, claims 1-14 fail to recite statutory subject matter, because the claims as a whole are directed to no more than the manipulation of abstract ideas.

The Appellant further contends that in Warmerdam, the Federal Circuit found that claim 5, directed to a machine, was statutory subject matter, even though the court held that claims 1-4, from which claim 5 depended, were directed to non-statutory subject matter (Reply Br. 2, citing In re Warmerdam, 33 F.3d 1354 (Fed. Cir. 1994)). We first note that in Warmerdam, the issue before the Federal Circuit was whether claim 5 was indefinite under 35 U.S.C. § 112, second paragraph, and not whether claim 5 was directed to statutory subject matter. 33 F.3d at 1360-61. Claim 5 of Warmerdam recited "[a] machine having a memory which contains data representing a bubble hierarchy generated by the method of any of Claims 1 through 4." Id. at 1358. In the present case, claims 1-14 do not recite a machine or a memory. Rather, these claims merely recite a user interface. "It is the claims which define the metes and bounds of the invention entitled to the protection of the patent system." Id. at 1360 (citing Zenith Lab. Inc. v. Bristol-Myers Squibb Co., 19 F.3d 1418, 1424 (Fed. Cir. 1994)). The claimed user interface is comprised of a specific arrangement of information, but this information could be presented in any manner, and does not require the use of a machine or memory, as claimed. As such, we see no parallel between claim 5 of Warmerdam and Appellant's claims 1-14.

The Appellant further asserts that the operation of the interface produces a useful, concrete, and tangible result, namely, a fare evaluation result table that displays fare rule summaries for fares in slices of an itinerary, while organizing the data such that fares and fare rule summaries can be quickly evaluated by a user (App. Br. 10, citing State Street Bank & Trust Co. v. Signature Financial Group, Inc., 149 F.3d 1368 (Fed. Cir. 1998)). We fail to see how the holding in State Street is applicable to the present claims, because the claims at issue in State Street were directed to a machine...