Ex Parte Anderson

Patent Trial and Appeal Board

Mar 29, 2013

11009339 (P.T.A.B. Mar. 29, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte ERIC ANDERSON
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Appeal 2010-011221
Application 11/009,339
Technology Center 2400
____________

Before JOSEPH L. DIXON, ST. JOHN COURTENAY III, and
CARLA M. KRIVAK, Administrative Patent Judges.

COURTENAY, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF THE CASE
The Patent Examiner finally rejected claims 1-36.1 (Fin. Rej. 1).
Appellant appeals therefrom under 35 U.S.C. § 134(a). (Notice of Appeal
1). We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.

INVENTION
This invention relates to "computers where users share computers
over time." (Spec. 1). Claim 1, reproduced below, is representative of the
claimed subject matter:
1. A method of sharing access to a cluster of computers
comprising the steps of:
identifying a particular user from within a group of users;
loading a particular virtual node for the particular user
onto a first computer, the particular virtual node being one of a
plurality of virtual nodes for the group of users, each of the
plurality of virtual nodes comprising an operating system
selected from a range of operating systems and one or more
applications;
operating the particular virtual node which changes a
node state, thereby forming a modified state; and
suspending the particular virtual node which saves the
modified state, closes the virtual node, and idles the first
computer.

1 The Notice of Appeal filed Jan. 7, 2010, appeals claims 1-36.
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REJECTIONS
R1. Claim 25 stands rejected under 35 U.S.C. § 101, as covering non-
statutory subject matter. (Ans. 4).
R2. Claims 1-36 stand rejected under 35 U.S.C. § 102(e) as being
anticipated by U.S. Patent Application Pub. 2005/0198239 A1 "Hughes."
(Ans. 5).

ANALYSIS
We disagree with Appellant's contentions regarding the Examiner's
rejections of the claims. We adopt as our own: (1) the findings and reasons
set forth by the Examiner in the action from which this appeal is taken, and
(2), the reasons set forth by the Examiner in the Answer in response to
arguments made in Appellant's Appeal Brief. (Ans. 16-23). We highlight
and address specific findings and arguments below.

R1.
CLAIM 25
Issue: Under §101, did the Examiner err in concluding that claim 25
covers non statutory subject matter? The issue turns on whether the scope of
the “computer readable storage medium” recited in independent claim 25
covers signals, in addition to statutory embodiments.
The Examiner concludes the claimed “computer readable storage
medium comprising computer code” also covers signals:
Claim 25 is directed towards a computer-readable storage
medium comprising computer code ... comprising, absent of an
explicit and deliberate definition in the specification or limiting
claim language (page 4, col 15-20 of the specification indicates
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that a storage media such as flash memory or tape drive, such
as only describe what is the storage media, not defining what
the storage media is), the BRI is that this is a "produced
computer program". Thus the claim reads a program embodied
on a machine-readable medium. The use of "physically", does
not exclude signals embodied in a carrier wave. Transitory
propagating signal such as carrier waves are not patentable
eligible. . . .
The BRI of a claim drawn to a computer readable
medium (also called machine readable medium and other such
variations) typically covers forms of non-transitory tangible
media and transitory propagating signals per se in view of the
ordinary and customary meaning of computer readable media,
particularly when the specification is silent. See MPEP 2111.01.
When the broadest reasonable interpretation of a claim covers a
signal[] [per] se, the claim is non-statutory under 35 US.C. §
101. See In re Nuijten, 500 F .3d 1346, 1356-57 (Fed. Cir.
2007) (transitory embodiments are not directed to statutory
subject matter).
(Ans. 4-5, emphasis added).

Appellant responds:
The Examiner's reasoning is specious, however, as claim 25
explicitly recites a computer readable storage medium (not
merely a computer readable medium); the specification does not
redefine the language "computer readable storage medium;"
and the examples set forth in the specification of computer
readable storage media are consistent with the explicitly-recited
claim language.
(Reply Br. 2).

Appellant's arguments are not persuasive. Appellant does not cite to a
definition in the Specification of "computer readable storage medium
comprising computer code" that excludes transitory signals. (See Reply
Br. 2). We particularly refer Appellant to the February 23, 2010 “Subject
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Matter Eligibility of Computer Readable Media” policy statement by former
USPTO Director David J. Kappos, as published in the Official Gazette of the
United States Patent and Trademark Office (USPTO).2 In light of this
guidance, we conclude the broadest reasonable interpretation of the claimed
"computer readable storage medium comprising computer code" does not
exclude signals. See In re Nuijten, 500 F .3d 1346, 1356-57 (Fed. Cir.
2007). On this record, we are not persuaded of Examiner error.

R2.
CLAIMS 2, 4-9, 12, 18, 19, 22, 23, 26, 28-32, AND 34-36
Appellant appealed claims 1-36. (Notice of Appeal 1). However,
Appellant only presented arguments for claims 1, 3, 10, 11, 13-17, 20, 21,
24, 25, 27, and 33. (App. Br. 9-10; 11-22). Appellant did not advance
separate arguments for claims 2, 4-9, 12, 18, 19, 22, 23, 26, 28-32, and 34-
36. (See id.). Arguments not made are waived. See 37 C.F.R. §
41.37(c)(1)(iv). Therefore, we sustain the Examiner's anticipation rejection
of claims 2, 4-9, 12, 18, 19, 22, 23, 26, 28-32, and 34-36. (Ans. 5-15).

CLAIMS 1, 25, AND 27
Issue: Under §102, did the Examiner err in finding that Hughes
expressly or inherently discloses "each of the plurality of virtual nodes
comprising an operating system selected from a range of operating systems

2 1351 Off. Gaz. Pat. Office 212 (Feb. 23, 2010), available at
http://www.uspto.gov/web/offices/com/sol/og/2010/week08/TOC.htm#ref20

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and one or more applications," within the meaning of claim 1, and the
commensurate language of claims 25 and 27?
Appellant contends:
The Examiner contends, "a reasonable interpretation of
'loading a virtual machine for a particular user' has been made,"
and the Examiner adds, "the Examiner believes downloads the
program files, sets up the OS and applications, and launches the
virtual machine of Hughes are within the scope of such
interpretation." Examiner's Answer, p. 15.
Applicant respectfully submits, however, that claims 1,
25 and 27 do not recite loading a virtual machine for a
particular user, as contended by the Examiner.
(Reply Br. 2-3).
Appellant's contentions are not persuasive. We agree with the
Examiner that Hughes' virtual machines disclose the claimed "virtual nodes
comprising an operating system selected from a range of operating systems
and one or more applications" because Hughes' virtual machines include an
operation system and applications. (Ans. 16-17; ¶¶ [0104]-[0105]).
Moreover, Appellant fails to cite to a definition of "virtual node" in the
Specification.3 For these reasons, on this record, we are not persuaded of

3 Any special meaning assigned to a term "must be sufficiently clear in the
specification that any departure from common usage would be so understood
by a person of experience in the field of the invention." Multiform
Desiccants Inc. v. Medzam Ltd., 133 F.3d 1473, 1477 (Fed. Cir. 1998); see
also Helmsderfer v. Bobrick Washroom Equip., Inc., 527 F.3d 1379, 1381
(Fed. Cir. 2008) ("A patentee may act as its own lexicographer and assign to
a term a unique definition that is different from its ordinary and customary
meaning; however, a patentee must clearly express that intent in the written
description.").
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Examiner error. Accordingly, we sustain the Examiner's rejection of claim 1
and of claims 25 and 27, which recite commensurate limitations.

CLAIM 3
Appellant contends that Hughes' suspending a job does not disclose
the claim 3 limitations (“wherein a node manager controls the steps of
loading the particular virtual node onto the first computer and suspending
the virtual node”), because the Examiner "relies on Hughes’ disclosure of
suspending a job as being 'equivalent' to these claim limitations." (Reply
Br. 3).
Appellant's contentions are not persuasive. Appellant does not present
substantive arguments and evidence to rebut the Examiner's finding that
paragraphs [0181] and [0184] of Hughes disclose the limitation at issue.
Moreover, Appellant does not cite to a definition of "suspending the
virtual node." As such, we find that Hughes’ suspending of a job (id.) falls
within the broadest reasonable interpretation of "suspending the virtual
node." (Ans. 17). In particular, Hughes' job (which includes programs
running on an operating system (¶ [0181])) discloses the claimed "virtual
node" which includes an operating system and programs. (See claim 7). For
these reasons, on this record, we are not persuaded of Examiner error.

CLAIMS 10 AND 11
The Examiner finds that Hughes' different applications that run on
different operating systems and on different computers disclose the
invention as recited in claims 10 and 11. (Ans. 17-18; ¶ [0033], ¶ [0036],
¶ [0081]).
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Appellant contends "[t]he Examiner, however, is failing to consider
all of the explicitly-recited claim limitations." (Reply Br. 4).
However, Appellant merely recites the limitations of claims 10, 11,
and 7 without explaining why Hughes does not disclose the limitations at
issue. (Reply Br. 4-5). Appellant's contentions are not persuasive because
Appellant has failed to traverse the specific factual findings made by the
Examiner. (See Ans. 17-18). A statement which merely points out what a
claim recites will not be considered an argument for separate patentability of
the claim. See 37 C.F.R. § 41.37(c)(1)(vii). Moreover, Attorney arguments
and conclusory statements that are unsupported by factual evidence are
entitled to little probative value. In re Geisler, 116 F.3d 1465, 1470 (Fed.
Cir. 1997); see also In re De Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984).
“Argument in the brief does not take the place of evidence in the record.”
In re Schulze, 346 F.2d 600, 602 (CCPA 1965) (citing In re Cole, 326 F.2d
769, 773 (CCPA 1964)).
Appellant has failed to present substantive arguments and supporting
evidence persuasive of Examiner error regarding claims 10 and 11. See In re
Lovin, 652 F.3d 1349, 1357 (Fed. Cir. 2011)(“we hold that the Board
reasonably interpreted Rule 41.37 to require more substantive arguments in
an appeal brief than a mere recitation of the claim elements and a naked
assertion that the corresponding elements were not found in the prior art.”);
see also Hyatt, 551 F.3d at1314 (Arguments not made are considered
waived). For these reasons, on this record, we are not persuaded of
Examiner error.

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CLAIMS 13-15 AND 20
The Examiner finds Hughes discloses compressed images of files and
data from a computer that are saved on a server. (Ans. 10; ¶¶ [0088]-
[0089]). The Examiner also finds Hughes' (¶ [0108]) description of saving
files and data to a server as a user works and logs off (suspending the virtual
node) discloses the limitations of claims 13-15 and 20. (Ans. 18). The
Examiner additionally finds that Hughes' paragraph [0181] and paragraph
[0184] (suspending a job) disclose the disputed limitations. (Ans. 18).
Appellant repeats the contentions previously advanced regarding
claim 1: i.e., that Hughes' suspending a job does not disclose "suspending a
virtual node." (Reply Br. 5-6). We are not persuaded for the reasons given
above with respect to claim 1.
Appellant contests several additional limitations by merely asserting
the reference fails to disclose the limitations. (Reply Br. 15). However,
Appellant fails to traverse the specific factual findings made by the
Examiner. (See Ans. 18). A statement which merely points out what a
claim recites will not be considered an argument for separate patentability of
the claim. See 37 C.F.R. § 41.37(c)(1)(vii). ). For these reasons, we are not
persuaded of Examiner error.

CLAIM 16
The Examiner finds that Hughes' determining changes in a user profile
for updated programs discloses the limitation of "setting bits to a regular
pattern state for at least a portion of the local storage. . . ." (Ans. 19; (¶¶
[0051], [0061]; see also claim 16). Appellant contends that Hughes
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¶¶ [0088], [0081] do not disclose "setting bits to a regular pattern state"
without explaining why. Thus, we find Appellant has failed to rebut the
Examiner’s specific findings regarding Hughes' paragraphs [0051] and
[0061]. (Reply Br. 6). Moreover, Appellant fails to cite any definition of
"regular pattern state" in the Specification.4 We conclude that the broadest
reasonable interpretation of "setting bits to a regular pattern state" reads on
Hughes’ setting bits to mark/determine changed and unchanged portions.
(Ans. 19, ¶ [0061]; See ¶ ¶ [0088]-[0089] checksum or code to determine
latest version of image). For these reasons, we are not persuaded of
Examiner error.
CLAIM 17
Appellant makes similar contentions for claim 17 as advanced
regarding claim 16. (Reply Br. 7). We find Appellant’s contentions
unavailing for the same reasons discussed above regarding claim 16.
Appellant also does not rebut the Examiner's specific findings. (Ans. 20; ¶
[0130], ¶ [0061]). For these reasons, we are not persuaded of Examiner
error.
CLAIMS 20 AND 21
The Examiner finds Hughes' paragraphs [0107], [0112], and [0125]
disclose the disputed limitations of "re-loading the particular virtual node
onto the computer which comprises transferring a standard state and the
modified state delta to the computer . . . ." (Ans. 21; claim 21). The
Examiner finds that Hughes' reloading of software onto the client ("virtual
node") including a base operating system 1210 ("standard state") (Fig. 12)

4 See footnote 4.
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and a secondary OS 410, application 406 408, and user data ("modified
state") discloses the broadest reasonable interpretation of "re-loading the
particular virtual node onto the computer which comprises transferring a
standard state and the modified state delta to the computer." (Ans. 21;
¶ [0125]; ¶ [0122]; Fig. 12; claim 21). Appellant fails to rebut the
Examiner's specific findings regarding claim 21 and claim 20 (Ans. 11-12).
(Reply Br. 7; App. Br. 17-18; see above discussion regarding claim 13). For
these reasons, we are not persuaded of Examiner error.

CLAIM 24
The Examiner finds that Hughes' method to verify that a user is
authorized to download files discloses claim 24's limitation of "using a
trusted computing module to verify a validity of transitions within the steps
of loading the particular virtual node to the first computer and suspending
the particular virtual node." (Ans. 22). Appellant merely makes the
conclusory statement that Hughes paragraph [0052] does not disclose the
claim 24 limitation without making a substantive argument to explain why.
(Reply Br. 8). Therefore, Appellant fails to address and rebut the Examiner
findings. (Id.). For these reasons, we are not persuaded of Examiner error.

CLAIM 33
In the Answer (22), the Examiner mistakenly addresses the claim 27
limitation. However, the Examiner cited Hughes paragraph [0052] in the
Answer on pages 12 and 22. Hughes paragraph [0052] discloses "the
authentication server determines whether the user is authorized to access the
system (e.g., by . . . , smart card, . . . .)." We find this discloses the
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limitation of "the user selects the particular computer by providing a
physical object to a physical object reader," as recited in claim 33. This is
because Hughes' smart card is a "physical object" and the smart card reader
is a "physical object reader." For these reasons, we are not persuaded that
the Examiner’s finding of anticipation is in error.

DECISION
We affirm the Examiner's rejection of claim 25 under § 101.
We affirm the Examiner's rejection of claims 1-36 under § 102.
No time for taking any action connected with this appeal may be
extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED

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