Ex Parte Azuma

Board of Patent Appeals and Interferences

Sep 14, 2009

10726443 (B.P.A.I. Sep. 14, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte SHIGEO AZUMA
____________________

Appeal 2009-003902
Application 10/726,4431
Technology Center 2600
____________________

Decided: September 14, 2009

Before MAHSHID D. SAADAT, MARC S. HOFF,
and THOMAS S. HAHN, Administrative Patent Judges.

HOFF, Administrative Patent Judge.

DECISION ON APPEAL

1 The real party in interest is International Business Machines Corporation.
Appeal 2009-003902
Application 10/726,443

STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134 from a Final Rejection of
claims 1, 3, 5-7, 10, 11, 13, and 19. We have jurisdiction under 35 U.S.C.
§ 6(b).
We affirm.
Appellant’s invention relates to a method and apparatus for machine
translation of specific words during a collaborative session, wherein the
apparatus includes a dictionary management unit for managing a dictionary
file that creates a temporary dictionary for the corresponding collaborative
session. The temporary dictionary, which is a virtual dictionary file used in
a translation process, is created when the session begins and deleted when
the session ends. A translation processing unit translates a text message by
referring to the dictionary file which includes the temporary dictionary and
other dictionary files, such as a user dictionary and other resident dictionary
files (Abstract, Spec. ¶ [015])
Claim 1 is exemplary:
1. A translation server for translating an entered text and providing a
translated text during a collaborative session, comprising:
a translation processing unit for executing a text translation process;
and
a dictionary storage unit for storing a general dictionary file referred
to in the text translation process and a virtual dictionary file created at the
start of the collaborative session for use in the text translation process only
during the collaborative session, said virtual dictionary file being erased
from said dictionary storage unit at the end of the collaborative session.

The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Nishino US 5,295,068 Mar. 15, 1994
Shimohata US 7,031,906 B2 Apr. 18, 2006
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Claims 13 and 19 stand rejected under 35 U.S.C. § 101 as being
directed to non-statutory subject matter.
Claims 1, 3, 5-7, 10, 11, 13, and 19 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Nishino in view of Shimohata.
Rather than repeat the arguments of Appellant or the Examiner, we
make reference to the Appeal Brief (filed February 13, 2008) and the
Examiner’s Answer (mailed April 30, 2008) for their respective details.

ISSUES
Appellant contends that the computer usable medium disclosed in the
Specification does meet the requirement for functional descriptive material,
i.e., when recorded on the computer usable medium, it becomes structurally
and functionally interrelated to the medium and will be statutory in most
cases, since the use of technology permits the function of the descriptive
material to be realized (App. Br. 7). Appellant contends that there is no
logical basis for combining Nishino and Shimohata since Nishino teaches
the use of a temporary dictionary file for email messages and Shimohata
teaches the use of a dictionary for translation during a collaborative (chat)
session (App. Br. 5 (emphasis added)).
The Examiner finds that a mere computer readable medium, that is not
specifically storage medium, can be interpreted as a magnetic carrier wave,
which is non-statutory under 35 U.S.C § 101. Additionally, the Examiner
finds that since Nishino teaches a translation processing unit and a dictionary
storage unit that includes a virtual dictionary file, wherein the dictionary
storage unit is created when the session begins and erased when the session
ends and Shimohata teaches a collaborative session that populates a
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dedicated dictionary for use of each chat group, that the combination of both
teachings discloses the claimed invention (Ans. 4-5, 15-16; FF 2, 3).
Appellant’s contentions present us with the following two issues:
1. Did Appellant show that the Examiner erred in finding that the
scope of claims 13 and 19 is intended to include embodiments where the
‘computer usable medium’ may include a carrier wave or signal, both of
which are non-statutory subject matter?
2. Did Appellant show that the Examiner erred in finding that the
combination of Nishino and Shimohata discloses a translation server for
translating entered text during a collaborative session using a dictionary
storage unit that includes a virtual dictionary file created at the start of the
collaborative session and erased from the dictionary storage unit at the end
of the collaborative session?

FINDINGS OF FACT
The following Findings of Fact (FF) are shown by a preponderance of
the evidence.
The Invention
1. According to Appellants, the invention concerns a method and
apparatus for machine translation of specific words during a collaborative
session, wherein the apparatus includes a dictionary management unit for
managing a dictionary file that creates a temporary dictionary for the
corresponding collaborative session. The temporary dictionary, which is a
virtual dictionary file used in a translation process, is created when the
session begins and deleted when the session ends. A translation processing
unit translates a text message by referring to the dictionary file which
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includes the temporary dictionary and other dictionary files, such as a user
dictionary and other resident dictionary files (Abstract, Spec. ¶ [015]).
2. The hardware configuration may include several storage media:
main memory 103, hard disk 105, floppy/disk drive 109 and various other
hardware configurations such as, a CD-ROM or DVD-ROM drive (Spec.
¶ [0033], [0036])
3. The computer program for controlling the CPU may be stored
upon such computer usable media as “a distributed magnetic disk, an optical
disk, semiconductor memory, or other recording media, or distributed over a
network” (Spec. ¶¶ [0019], [0035]).
Nishino
4. Nishino teaches the use of a private-use word dictionary that is
temporarily used in the translation process of an e-mail message in an
electronic-mail system, wherein the private-use word dictionary is initially
registered by a user, temporarily stored, and shared with other users. After
the step of translating the e-mail message, the private-use word dictionary is
deleted (Fig. 5A; col. 4, ll. 9-21, col. 9, ll. 13-38).
Shimohata
5. Shimohata teaches a collaborative session that populates a
dedicated dictionary 140 for use of each chat group, wherein the dedicated
dictionary 140 is populated by any person in the corresponding chat group
(Fig. 27, col. 16, ll. 12-19).

PRINCIPLES OF LAW
Under § 101, there are four categories of subject matter that are
eligible for patent protection: (1) processes; (2) machines; (3) manufactures;
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and (4) compositions of matter. 35 U.S.C. § 101. But even if a claim fits
within one or more of the statutory categories, it may not be patent eligible.
In re Ferguson, 558 F.3d 1359, 1363 (Fed. Cir. 2009).
“[A]n applicant may show that a process claim satisfies § 101 either
by showing that his claim is tied to a particular machine, or by showing that
his claim transforms an article” into a different state or thing. In re Bilski,
545 F.3d 943, 961 (Fed. Cir. 2008) (en banc), cert. granted, 77 U.S.L.W.
3442, 3653, 3656 (U.S. June 1, 2009) (No. 08-964); see also Gottschalk v.
Benson, 409 U.S. 63, 70 (1972).
“[A] machine is a concrete thing, consisting of parts, or of certain
devices and combination of devices. This includes every mechanical device
or combination of mechanical powers and devices to perform some function
and produce a certain effect or result.” Ferguson, 558 F.3d at 1364 (quoting
In re Nuijten, 500 F.3d 1346, 1355 (Fed. Cir. 2007), reh’g denied en banc,
515 F.3d 1361 (Fed. Cir. 2008), cert. denied, 129 S. Ct. 70 (2008) (internal
quotations omitted)).
Our reviewing court has found that transitory, propagating signals
such as carrier waves are not within any of the four statutory categories
(process, machine, manufacture or composition of matter.) Therefore, a
claim directed to computer instructions embodied in a signal is not statutory
under 35 U.S.C. § 101. In re Nuijten, 500 F.3d 1346, 1354 (Fed. Cir. 2007.)
On the issue of obviousness, the Supreme Court has stated that “the
obviousness analysis cannot be confined by a formalistic conception of the
words teaching, suggestion, and motivation.” KSR Int’l Co. v. Teleflex Inc.,
550 U.S. 398, 419 (2007). Further, the Court stated “[t]he combination of
familiar elements according to known methods is likely to be obvious when
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it does no more than yield predictable results.” Id. at 416. “One of the ways
in which a patent’s subject matter can be proved obvious is by noting that
there existed at the time of the invention a known problem for which there
was an obvious solution encompassed by the patent’s claims.” Id. at 419-
420.
The determination of obviousness must consider, inter alia, whether a
person of ordinary skill in the art would have been motivated to combine the
prior art to achieve the claimed invention and whether there would have
been a reasonable expectation of success in doing so. Brown & Williamson
Tobacco Corp. v. Philip Morris Inc., 229 F.3d 1120, 1125 (Fed. Cir. 2000).
Where the teachings of two or more prior art references conflict, the
Examiner must weigh the power of each reference to suggest solutions to
one of ordinary skill in the art, considering the degree to which one
reference might accurately discredit another. In re Young, 927 F.2d 588,
591 (Fed. Cir. 1991). If the proposed modification would render the prior
art invention being modified unsatisfactory for its intended purpose, then
there is no suggestion or motivation to make the proposed modification. In
re Gordon, 733 F.2d 900, 902 (Fed. Cir. 1984). Further, our reviewing court
has held that “[a] reference may be said to teach away when a person of
ordinary skill, upon reading the reference, would be discouraged from
following the path set out in the reference, or would be led in a direction
divergent from the path that was taken by the applicant.” In re Gurley, 27
F.3d 551, 553 (Fed. Cir. 1994); Para-Ordnance Mfg., Inc. v. SGS Importers
Int’l., Inc., 73 F.3d 1085, 1090 (Fed. Cir. 1995).
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ANALYSIS
Section 101 rejection of Claims 13 and 19
We select claim 13 as representative of this group of claims, pursuant
to our authority under 37 C.F.R. § 41.37(c)(1)(vii).
Independent claim 13 recites “[a] computer program product for
causing a computer to translate a text in a first language into a second
language, the computer program product comprising: a computer usable
medium having computer usable program code embodied therewith.”
Appellant argues that "[w]hen functional descriptive material is
recorded on some computer-readable medium it becomes structurally and
functionality interrelated to the medium and will be statutory in most cases
since use of technology permits the function of the descriptive material to be
realized" (App. Br. 7).
The Examiner finds that the claims are rejected under 35 U.S.C. § 101
because the claimed invention is directed to non-statutory subject matter
since the computer usable medium is not specifically a storage medium and
can be interpreted as a magnetic carrier wave or signal, both of which are
non-statutory under 35 U.S.C § 101 (Ans. 3). The Examiner finds that even
though the Specification suggests that the computer usable medium may be a
CD-ROM or DVD-ROM, the Specification also suggests that "other
configurations are possible as well" (Ans. 17, FF 2). The Examiner
therefore finds that the computer usable medium is open to any reasonable
interpretation and that one of ordinary skill in the art can appreciate that a
computer usable medium can be interpreted as a carrier wave or a network
signal, both of which are considered non-statutory under 35 U.S.C. § 101
(Ans. 17).
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The issue thus turns on whether the Examiner properly determined
that the “computer usable medium” as it is recited in independent claim 13
implicates a carrier wave or a network signal, both of which are considered
non-statutory.
Computer programs and data structures are deemed “functional
descriptive material,” which impart functionality when employed as a
computer component. When functional descriptive material is recorded on
some (tangible) computer-readable medium, it becomes structurally and
functionally interrelated to the medium and will be statutory in most cases
since use of technology permits the function of the descriptive material to be
realized. Compare In re Lowry, 32 F.3d 1579, 1583-84 (Fed. Cir. 1994)
(claim to data structure stored on a computer readable medium that increases
computer efficiency held statutory) with In re Warmerdam, 33 F.3d 1354,
1361-62 (Fed. Cir. 1994) (claim to computer having a specific data structure
stored in memory held statutory product-by-process claim but claim to a data
structure that referred to ideas reflected in nonstatutory process rather than
referring to a physical arrangement of the contents of a memory held
nonstatutory).
“A transitory, propagating signal [however] . . . is not a ‘process,
machine, manufacture, or composition of matter.’ [These] four categories
define the explicit scope and reach of subject matter patentable under 35
U.S.C. § 101; thus, such a signal cannot be patentable subject matter.’ In re
Nuijten, 500 F.3d 1346, 1357 (Fed. Cir. 2007). Specifically, signals are
unpatentable as failing a tangibility requirement to be “manufactures”
because they are not tangible media. In re Nuijten 500 F.3d at 1366
(emphasis added).
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Referring to the Examiner’s finding that the Specification also
suggests that "other configurations are possible as well," we find that the
Specification teaches in particular that “various other [hardware]
configurations are possible” (FF 2 (emphasis added)). Since hardware is a
tangible medium, we find that the reference to “various other [hardware]
configurations” meets the tangibility requirement to be a manufacture (FF 2
(emphasis added)).
Thus, based upon the Specification as a whole, we find that
Appellant’s description of a ‘computer usable medium’ is based upon
tangible storage media, such as a server, floppy drive 109, main memory
103 and hard disk 105 as specified by Appellant (App. Br. 4; FF 2, 3
(emphasis added)).
We find that the Examiner erred in finding that the cited claims
implicate the use of carrier waves that embody a machine executable
program or data structure. Therefore, since Appellant’s independent claim
13 is limited to being recorded on a (tangible) computer-readable medium,
we reverse the Examiner’s rejection of independent claim 13 under 35
U.S.C. § 101 as being directed to nonstatutory subject matter, as well as that
of dependent claim 19.
Section 103 rejection of claims 1, 3, 5-7, 10, 11, 13, and 19
We select claim 1 as representative of this group of claims, pursuant
to our authority under 37 C.F.R. § 41.37(c)(1)(vii).
Appellant contends that since an email message is not the same as a
collaborative session, there would be no logical basis for combining Nishino
and Shimohata since Nishino teaches the use of a temporary dictionary file
for email messages and Shimohata teaches the use of a dictionary for
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translation during a collaborative (chat) session (App. Br. 5 (emphasis
added)). Appellant contends that even if the email message constituted part
of a collaborative session, Nishino does not teach the claimed limitation that
the dictionary be deleted at the end of a collaborative session, since the
temporary dictionary of Nishino is not available for the entire session (App.
Br. 5 (emphasis added)). Appellant contends further that there is no
language in Shimohata that indicates the user-specific dictionaries are
acquired at the beginning of a collaborative session or are erased at the end
of the collaborative session (App. Br. 6).
The Examiner finds Nishino teaches a translation processing unit, a
dictionary storage unit that includes a virtual dictionary file, wherein the
dictionary storage unit is created when the session begins and erased when
the session ends (Ans. 4, 15, FF 4). The Examiner finds that Shimohata
teaches a collaborative session that populates a dedicated dictionary for use
of each chat group which would inherently be deleted when the session ends
(Ans.4-5, 15-16, FF 5). Hence, the Examiner finds that the combination of
the teachings of Nishino and Shimohata would yield a translation server that
translates text during a collaborative session, wherein a virtual dictionary is
created at the start of a collaborative session and erased at the end of the
collaborative session, as recited in claim 1 (Ans. 4-5). The Examiner
characterizes email as a collaborative tool, wherein sending an email can be
considered a collaborative session (Ans. 15).
We agree with the Examiner that email is, in general, a collaborative
tool. When email is sent by one person to another, the recipient of that email
can choose to respond or not. If the recipient has chosen not to respond, the
“collaborative session” has ended. Hence, Nishino does teach the claimed
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limitation that the dictionary be deleted at the end of a “collaborative
session.” Further, we agree with the Examiner that one skilled in the art
would have been motivated to combine the teachings to yield a translation
server that translates text during a collaborative session, wherein a virtual
dictionary is created at the start of a collaborative session and erased at the
end of the collaborative session as recited in claim 1 (Ans. 4-5; FF 4, 5).
We, therefore, find no error in the Examiner’s rejection of claim 1
under 35 U.S.C. § 103, nor that of claims 3, 5-7, 10, 11, 13, and 19 not
separately argued with particularity.

CONCLUSIONS OF LAW
Appellant has shown that the Examiner erred in finding that the scope
of claims 13 and 19 are intended to include embodiments where the
‘computer usable medium’ may include a carrier wave or signal which are
non-statutory subject matter.
Appellant has not shown that the Examiner erred in finding that the
combination of Nishino and Shimohata discloses a translation server for
translating entered text during a collaborative session using a dictionary
storage unit that includes a virtual dictionary file created at the start of the
collaborative session and erased from the dictionary storage unit at the end
of the collaborative session.

ORDER
The Examiner’s rejection of claims 1, 3, 5-7, 10, 11, 13, and 19 is
affirmed.
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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).

AFFIRMED

ELD

IBM CORPORATION
3039 CORNWALLIS ROAD
DEPT. T81/B503, PO BOX 12195
RESEARCH TRIANGLE PARK, NC 27709

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