Ex Parte Awe et al

Board of Patent Appeals and Interferences

Sep 21, 2010

10403950 (B.P.A.I. Sep. 21, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
10/403,950 03/31/2003 Jeffrey T. Awe ROC920020207US1 6268
46797 7590 09/21/2010
IBM CORPORATION, INTELLECTUAL PROPERTY LAW
DEPT 917, BLDG. 006-1
3605 HIGHWAY 52 NORTH
ROCHESTER, MN 55901-7829
EXAMINER
CHAUDHURI, ANITA
ART UNIT PAPER NUMBER
2173
MAIL DATE DELIVERY MODE
09/21/2010 PAPER
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte JEFFREY T. AWE, JOSEPH P. BIGUS,
ANTHONY M. DUNBAR, GREGORY R. HINTERMEISTER,
JACOB KUGEL, and DONALD A. SCHLOSNAGLE
____________________

Appeal 2009-0014651
Application 10/403,950
Technology Center 2100
____________________

Before JOSEPH L. DIXON, JEAN R. HOMERE, and JAY P. LUCAS,
Administrative Patent Judges.

HOMERE, Administrative Patent Judge.

DECISION ON APPEAL2

1 Filed March 31, 2003. The real party in interest is Sun Microsystems, Inc.
(App. Br. 3.)
2 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.

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I. STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) (2002) from the
Examiner’s final rejection of claims 1-31. (App. Br. 5.) We have
jurisdiction under 35 U.S.C. § 6(b) (2008).
We affirm.
Appellants’ Invention
Appellants invented a method whereupon receiving an agent
customization panel request from a client (202), a server (204) transmits to
the client an interface panel for customizing a remotely located intelligent
software agent. (Spec. ¶0009.)
Illustrative Claim
Independent claim 1 further illustrates the invention. It reads as
follows:
1. A method of presenting a user interfaces for customizing
intelligent software agents, comprising:

receiving an agent customization panel request from a
remotely located client; and

in response to the request, transmitting panel information
to the client, wherein the panel information defines a user
interface panel capable of being rendered at a site of the client,
and wherein the user interface panel provides a plurality of
agent customization elements for customizing one or more
intelligent software agents remotely located relative to the
client.

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Prior Art Relied Upon
The Examiner relies on the following prior art as evidence of
unpatentability:
Uszok US 2004/0205772 A1 Oct. 14, 2004

Rejections on Appeal
The Examiner rejects the claims on appeal as follows:
1. Claims 14-21 and 31 stand rejected under 35 U.S.C. § 101 as
being directed to non-statutory subject matter.
2. Claims 1, 2, and 14-31 stand provisionally rejected under non-
statutory obviousness-type double patenting as being unpatentable over
claims 1-2, 13-18, and 19-21 of copending application 10/403,893, filed on
March 31, 2003.
3. Claims 1-31 stand rejected under 35 U.S.C. § 102(e) as being
anticipated by Uszok.

Appellants’ Contentions
1. Appellants contend that the computer readable storage medium
of claim 14 is directed to statutory subject matter since it recites a physical
article or a program which is tangibly fixed. (App. Br. 10.)
2. Appellants acknowledge the non-statutory obviousness-type
double patenting rejection, and request that it be held in abeyance until the
present appeal is successful. At such time, they will then file a terminal
disclaimer. (App. Br. 15.)
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3. Appellants contend that Uszok does not teach transmitting to a
client in response to a request a user interface capable of customizing a
remotely located intelligent software agent, as recited in independent claim
1. (App. Br. 11-13, Reply Br. 4.) According to Appellants, while Uszok
discloses a server that transmits an mBot to a client in response to the
client’s request therefor, the reference does not teach that the mBot includes
an interface panel that has a plurality of agent customization elements for
customizing an intelligent software agent remotely located to the client.
(Id.)

Examiner’s Findings and Conclusions
1. The Examiner concludes that the computer readable storage
medium of claim 14 is directed to non-statutory subject matter since it
encompasses a signal bearing medium. (Ans. 13-14).
2. The Examiner notes Appellants’ acknowledgement of the non-
statutory obviousness-type double patenting rejection, but nonetheless
repeats the rejection in the Answer. (Ans. 4, 16.)
3. The Examiner finds that Uszok’s disclosure of a server
transmitting an mBot to a remote client to thereby customize an intelligent
agent thereon teaches the disputed limitations. (Ans. 15.)

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II. ISSUES
1. Have Appellants shown the Examiner erred in concluding that
the computer readable storage medium as recited in independent claim 14 is
directed to non-statutory subject matter?
2. Have Appellants shown that the Examiner erred in finding that
Uszok teaches, in response to receiving a client’s request for an agent
customization panel, transmitting to the client panel information that defines
an interface capable of being rendered at a site of the client, and that
provides a plurality of agent customization elements for customizing a
remotely located software agent?

III. FINDINGS OF FACT
The following Findings of Fact (FF) are shown by a preponderance of
the evidence.

1. Appellants’ Specification indicates that certain embodiments of
the invention can be contained on signal-bearing media to encompass (i)
information permanently stored on non-writable storage media; (ii) alterable
information stored on writable storage media; and (iii) information conveyed
to a computer via wired or wireless communications. The signal bearing
media can also carry computer-readable instructions that direct the functions
of invention. (Spec. ¶0029.)

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2. As shown in Figure 2, Uszok discloses an intelligent software
agent (bot) system architecture whereupon a client (320) invoking a
botMaster program (322) to enlist the services of a Bot, the botMaster (322)
communicates with a developer’s system (310) to find and purchase a
license for the desired Bot (316). The botMaster (322) then downloads onto
the client machine only the mBot portion (324) of the Bot (316) while the
sBot portion remains at the developer’s site. The mBot portion includes the
necessary user interface along with a unique identifier to communicate with
the sBot portion. (¶¶ 0055, 0058.)
3. Upon the botMaster deploying the mBot, a launch request
(360) is sent to the appropriate botserver (350) via the user’s BotBox to
launch the corresponding sBot, which travels across the Internet to interact
with other programs to carry out the personal service objectives of their
owners. (¶¶ 0009, 0056.)

IV. ANALYSIS
101 Rejection
Claims 14-21 and 31 recite in relevant-part a computer-readable
storage medium. (Br. 19, App’x.) We address representative independent
claim 14. Appellants’ Specification indicates that the cited medium
implicates different types of signal-bearing media. (FF. 1.) We therefore find
the claimed computer-readable medium is broad enough to encompass a
transitory, and propagating signal containing information. Thus, we do not
agree with Appellants that these claims are limited to a tangible medium
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within one of the four statutory classes of 35 U.S.C. § 101.3 We agree with
the Examiner that representative independent claim 14 directed to non-
statutory subject matter. Consequently, claims 14-21 and 31 are directed to
non-statutory subject matter.

Double Patenting Rejection
We deny Appellants’ request to hold the rejection in abeyance. We
note that the application (10/403,893) upon which the Examiner relied for
the rejection has a same filing date as the present application, and it has
matured into US Patent No. 7, 721,218.4 Since we do not have in the record
before us any other response from Appellants to rebut the Examiner’s prima
facie case of obviousness-type double patenting, we pro forma affirm the
Examiner’s rejection of claims 1, 2, and 14-31.

3 "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." In re Nuijten, 500 F.3d 1346,
1354 (Fed. Cir. 2007). "A transitory, propagating signal . . . is not a
'process, machine, manufacture, or composition of matter' [under 35 U.S.C.
§ 101]" and therefore does not constitute patentable subject matter under
§ 101. Id. at 1357. Claims that are so broad that they read on nonstatutory
as well as statutory subject matter are unpatentable. Cf. In re Lintner, 458
F.2d 1013, 1015 (CCPA 1972) ("Claims which are broad enough to read on
obvious subject matter are unpatentable even though they also read on
nonobvious subject matter."). This is now USPTO policy. See Subject
Matter Eligibility of Computer Readable Media, 1351 Off. Gaz. Pat. Office
212 (Feb. 23, 2010).
4 Cf Ex parte Moncla, Appeal 2009-006448 (BPAI 2010).
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Anticipation Rejection
Independent claim 1 requires, inter alia, in response to receiving a
client’s request for an agent customization panel, transmitting to the client
panel information that defines an interface capable of being rendered at a
site of the client, and wherein the interface provides a plurality of agent
customization elements for customizing a remotely located software agent.
(Br. 17, Claims App’x.)
As set forth in the Findings of Fact section, Uszok discloses, upon
receiving a request from a client’s botMaster program invoking the services
of a Bot, a developer locates the requested Bot and allows the botMaster to
download the mBot portion of the Bot while retaining the sBot portion of the
Bot at developer’s site. (FF. 2.) Further, Uszok discloses that upon the
botMaster launching the mBot portion to invoke certain desired services, the
remotely located sBot interacts with other programs to perform the desired
services on behalf of the client. (FF. 3.) We agree with the Examiner that
Uszok’s disclosure of downloading the mBot including a user interface at
the client’s computer in response to the client’s request for a Bot teaches an
interface capable of being rendered at the client’s site. We further agree with
the Examiner that Uszok’s disclosure of launching the mBot to cause the
sBot to perform certain functions teaches allowing the client to customize
the remotely located sBot as desired to perform those functions at the behest
of the client. It follows that Appellants have not shown error in the
Examiner’s rejection of claim 1 as being anticipated by Uszok.
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Similarly, claims 2-31 fall with claim 1 since they are argued as a
single group. 37 C.F.R. § 41.37(c)(1)(vii).

V. CONCLUSION OF LAW
Appellants have not established that the Examiner erred in rejecting
under 35 U.S.C. § 103(a) claims 1 through 17, 21, 24, and 25 as set forth
above.

VI. DECISION
We affirm the Examiner's rejection of claims 1-31.
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) (2009).

AFFIRMED

Vsh

IBM CORPORATION, INTELLECTUAL PROPERTY LAW
DEPT 917, BLDG. 006-1
3605 HIGHWAY 52 NORTH
ROCHESTER, MN 55901-7829