Ex Parte Baron et alDownload PDFPatent Trial and Appeal BoardSep 10, 201311505176 (P.T.A.B. Sep. 10, 2013) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________________ Ex parte STEVEN J. BARON, PATRICK J. MALLOY, ALAIN J. COHEN, MARC I. SCHNEIDER, and CHERYL D. STOCKS ____________________ Appeal 2011-004769 Application 11/505,176 Technology Center 2400 ____________________ Before KALYAN K. DESHPANDE, LYNNE E. PETTIGREW, and PATRICK M. BOUCHER, Administrative Patent Judges. BOUCHER, Administrative Patent Judge. DECISION ON APPEAL Appeal 2011-004769 Application 11/505,176 2 STATEMENT OF THE CASE Introduction Appellants appeal under 35 U.S.C. § 134(a) from a rejection of claims 1–37 and 39–60. We have jurisdiction under 35 U.S.C. § 6(b). We reverse and enter a new ground of rejection against claims 56–60. Illustrative Claim The claimed subject matter relates to integrated display of captured network communication events and captured internal processing events related to an application (Abstract). Claim 1 is illustrative and is reproduced below: 1. A system comprising: a network capture system that is configured to capture communication events of an application on a network, a tier capture system that is configured to capture processing events of the application on a node of the network, and a visualization system that is configured to provide a synchronized display of the communication events and processing events of the application, wherein each communication event includes information that facilitates identification of the application. References The prior art relied upon by the Examiner in rejecting the claims on appeal is: Kaler Sim-Tang US 2003/0140282 A1 US 2005/0262097 A1 Jul. 24, 2003 Nov. 24, 2005 Appeal 2011-004769 Application 11/505,176 3 Rejections The Examiner made the following rejections: Claims 1–32 stand rejected under 35 U.S.C. § 101 as directed to nonstatutory subject matter (Ans. 3–4). Claims 1–37 and 39–60 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Kaler and Sim-Tang (Ans. 5–19). ANALYSIS We have reviewed Appellants’ arguments in the Appeal Brief and Reply Brief, and have reviewed the Examiner’s response to Appellants’ arguments. § 101 Rejection Appellants’ contentions present us with the issue of whether the Examiner erred in finding claims 1–32 unpatentable under 35 U.S.C. § 101 as directed to nonstatutory subject matter because they recite a system of software per se (see Ans. 4). Appellants contend that the Examiner’s construction is in error because “software per se cannot capture communication events of an application on a network, cannot capture processing events of the application on a node of the network, and cannot provide a synchronized display of the communication events and processing events of the application, as specifically claimed in claim 1” (App. Br. 6, emphases added). The Examiner responds that claim 1 does not positively recite any Appeal 2011-004769 Application 11/505,176 4 hardware, asserting that a “system could be a software system” (Ans. 19– 20). We disagree with the Examiner’s reasoning. First, we give minimal weight to the Examiner’s citation of a Wikipedia entry in support of the assertion (Ans. 20) because of its dubious reliability. See, e.g., Ex parte Three-Dimensional Media Group, Ltd., No. 2009-004087, 2010 WL 3017280, at *17 (BPAI 2010) (nonprecedential); see also Bing Shun Li v. Holder, 2010 WL 4368469, at *2 (5th Cir. 2010) (unpublished) (noting Wikipedia’s unreliability and citing Badasa v. Mukasey, 540 F.3d 909, 910– 11 (8th Cir. 2008)). Second, we are persuaded by Appellants’ argument that “[t]he claimed network capture system must contain electronic circuitry in order to capture communication events of an application on a network” and that “the claimed tier capture system must contain electronic circuitry in order to capture processing events of the application on a node of the network” (Reply Br. 3, emphases by Appellants). We therefore conclude that the Examiner erred in finding that claims 1–32 recite software per se and we accordingly do not sustain the § 101 rejection of those claims. § 103 Rejection Appellants’ contentions present us with the issue of whether the Examiner erred in finding that the combination of Kaler and Sim-Tang teaches or suggests “a visualization system that is configured to provide a synchronized display of the communication events and processing events of Appeal 2011-004769 Application 11/505,176 5 the application,” as recited in independent claim 1 and commensurately recited in independent claims 33 and 56 (App. Br. 6–7; Reply Br. 4–5).1 The Examiner finds the limitation taught by Kaler (Ans. 5), which relates to “analyzing the performance of a data processing system” (Kaler ¶ 2). The Examiner specifically cites the following disclosure: When the [in-process event creator] and [dynamic event creator] create events, they send them to the [local event concentrator], which collects them and temporarily stores them, either until the developer requests them or a developer-defined condition or “trigger” occurs, whereupon the [local event concentrator] sends the events to the developer’s control station. The control station analyzes the events and visually displays the results of the analysis to the developer in a multi- windowed, time-synchronized display. (Kaler ¶ 29). But as Appellants observe, the events created by both the in-process event creator and the dynamic event creator are processing events of an application, with neither being a communication event on a network (App. Br. 7). The Examiner relies on Sim-Tang for teaching a network capture system configured to capture communication events of an application on a network (Ans. 5–6), acknowledging that Kaler fails to teach the capture of communication events (Ans. 5). We agree with Appellants that “it is contradictory to state that Kaler does not capture communication events of the application on a network, and yet state that Kaler provides a synchronized display of these communication events and processing events” (App. Br. 7; see also Reply Br. 4). 1 Appellants’ contentions raise additional issues. Because the identified issue is dispositive of the appeal of the § 103 rejection, we do not reach the additional issues. Appeal 2011-004769 Application 11/505,176 6 We are therefore persuaded that the Examiner erred in finding that the combination of Kaler and Sim-Tang teaches or suggests “a visualization system that is configured to provide a synchronized display of the communication events and processing events of the application,” as recited in claim 1. We accordingly do not sustain the § 103 rejection of claim 1. We also do not sustain the § 103 rejection of claims 33 and 56, which recite similar limitations, nor do we sustain the § 103 rejection of the claims that depend therefrom. NEW GROUND OF REJECTION UNDER 37 C.F.R. § 41.50(b) Under 37 C.F.R §41.50(b), we enter a new ground of rejection against claims 56–60 under 35 U.S.C. § 101 as directed to nonstatutory subject matter.2 Independent claim 56 recites “[a] computer program that is provided on computer-readable media ….” Appellants’ Specification is silent as to the meaning of “computer-readable media.” Giving the term its broadest reasonable interpretation in light of the Specification’s silence, we find that the term encompasses both nontransitory tangible media and transitory propagating signals, the latter of which are not statutory under 35 U.S.C. § 101. See In re Nuijten, 500 F3.d 1346, 1356–57 (Fed. Cir. 2007); Subject Matter Eligibility of Computer Readable Media, 1351 Off. Gaz. Pat. Office 212 (Feb. 23, 2010); see also Ex parte Mewherter, No. 2012-007692, 2013 WL 3291360 (PTAB May 8, 2013) (precedential). 2 The Examiner notes this deficiency but does not explicitly reject claims 56–60 on this basis (Ans. 19). Appeal 2011-004769 Application 11/505,176 7 Accordingly, we now reject independent claim 56 and dependent claims 57–60 as being drawn to subject matter not eligible for patent protection under 35 U.S.C. § 101. CONCLUSION On the record before us, we conclude the following: (1) the Examiner erred in rejecting claims 1–32 under 35 U.S.C. § 101 as directed to nonstatutory subject matter; and (2) the Examiner erred in rejecting claims 1–37 and 39–60 under 35 U.S.C. § 103(a) as unpatentable over Kaler and Sim-Tang. DECISION The Examiner’s decision rejecting claims 1–37 and 39–60 is reversed. New grounds of rejection are entered pursuant to 37 C.F.R. § 41.50(b) rejecting claims 56–60 under 35 U.S.C. § 101 as drawn to nonpatentable subject matter. 37 C.F.R. § 41.50(b) provides that “[a] new ground of rejection … shall not be considered final for judicial review.” This section also provides that the Appellant, WITHIN TWO MONTHS FROM THE DATE OF THE DECISION, must exercise one of the following two options with respect to the new ground of rejection to avoid termination of the appeal as to the rejected claims: Appeal 2011-004769 Application 11/505,176 8 (1) Reopen prosecution. Submit an appropriate amendment of the claims so rejected or new evidence relating to the claims so rejected, or both, and have the matter reconsidered by the examiner, in which event the proceeding will be remanded to the examiner. . . . (2) Request rehearing. Request that the proceeding be reheard under § 41.52 by the Board upon the same record. . . . No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). REVERSED 37 C.F.R. § 41.50(b) tj Copy with citationCopy as parenthetical citation