Ex Parte BEHM et al

Patent Trial and Appeal Board

Sep 20, 2013

13457885 (P.T.A.B. Sep. 20, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte GARY W. BEHM, MALEK BEN SALEM, and
YUE LI
____________________

Appeal 2013-007490
Application 13/457,885
Technology Center 2800
____________________

Before RICHARD TORCZON, JOHN G. NEW, and HUNG H. BUI,
Administrative Patent Judges.

BUI, Administrative Patent Judge.

DECISION ON APPEAL
Appellants
1
seek our review under 35 U.S.C. § 134(a) of the
Examiner’s final rejection of claims 1-11. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM.
2

1
Real Party in Interest is International Business Machines Corporation.
2
Our decision refers to Appellant’s Appeal Brief filed February 19, 2013
(“App. Br.”); Examiner’s Answer mailed March 19, 2013 (“Ans.”); Reply
Appeal 2013-007490
Application 13/457,885

2

STATEMENT OF THE CASE
Appellants’ Invention
Appellants’ invention relates to a method using real-time Advanced
Process Control (APC) information for an enhanced Lot Sampling Engine
(ELSE) in semiconductor fabrication. See Appellants’ Spec., ¶ [0001], and
Abstract.
Claims on Appeal
Claim 1 is the only independent claim on appeal. Claim 1 is
illustrative of Appellants’ invention, and is reproduced below with disputed
limitations emphasized:
1. A computer program product comprising a
computer readable storage memory having readable program
code tangibly embodied in the storage memory, the computer
program product includes at least one component operable to:
pass a lot through a production process;
calculate an advanced process control recipe parameter
adjustment (RPA) distribution value using an advanced process
controller (APC);
calculate an APC calculated process capability (Cpk)
value using the APC;
communicate the RPA and the Cpk value to a lot
sampling engine (LSE);
utilize the LSE to correlate the RPA and the Cpk value in
conjunction with a historical Cpk value calculated by the LSE
to determine if sampling of the lot is indicated; and
perform a measurement process of the lot, if sampling is
indicated.

Brief filed May 20, 2013 (“Reply Br.”); and the original Specification filed
April 27, 2012 (“Spec.”).
Appeal 2013-007490
Application 13/457,885

3

Examiner’s Rejection
Claims 1-11 stand rejected under 35 U.S.C. § 101 as being directed to
non-statutory subject matter. Ans. 3-5.

Issue on Appeal
Based on Appellants’ arguments, the dispositive issue on appeal is
whether the Examiner erred in rejecting claims 1-11 under 35 U.S.C. § 101
as being directed to non-statutory subject matter. In particular, the issue
turns on whether the Examiner erred in concluding that claims 1-11
encompass transitory media such as “signals, carrier waves, etc.” Ans. 3-5.

ANALYSIS
The Examiner finds Appellants’ claims 1-11 are drawn to a “computer
readable storage medium.” According to the Examiner,
The broadest reasonable interpretation of a claim drawn to a
computer readable medium 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). Because the broadest reasonable interpretation covers
a signal per se, a rejection under 35 USC 101 is appropriate as
covering non-statutory subject matter. See 351 OG 212, Feb 23
2010.

Final Rej. 2.
Appellants contend that Appellants’ Specification, in particular
paragraph [0048], only provides examples of tangible physical storage
devices, such as read-only memory (ROM) or random access memory
Appeal 2013-007490
Application 13/457,885

4

(RAM), and does not contemplate signals or other transitory waves.
According to Appellants, the broadest reasonable interpretation of a claim
term “computer readable storage medium” in view of Appellants’
Specification would only include storage media that are tangible, such as
read-only-memory (ROM) or random-access-memory (RAM), and does not
include signals per se. App. Br. 3-5.
In particular, paragraph [0048] of Appellants’ Specification describes:
[0048] FIG. 7 shows an exemplary flow 700 describing
how the real-time APC information is collected, calculated and
passed to the ELSE for an optimized lot sampling plan in
accordance with the present invention. FIG. 7 may equally
represent a high-level block diagram of components of the
invention implementing the steps thereof. The steps of FIG. 7
may be implemented on computer program code in
combination with the appropriate hardware. This computer
program code may be stored on storage media such as a
diskette, hard disk, CD-ROM, DVD-ROM or tape, as well as a
memory storage device or collection of memory storage devices
such as read-only memory (ROM) or random access memory
(RAM). Additionally, the computer program code can be
transferred to a workstation over the Internet or some other type
of network. Furthermore, a computer program product may
include a computer usable medium having readable program
code tangibly embodied in the medium.

Appellants’ Spec., ¶ [0048] (emphasis added).
Appellants also assert that the Board has previously interpreted
“computer readable storage medium” to only cover statutory subject matter.
App. Br. 5-6 (citing Ex Parte Dureau, No. 2009-007211 (BPAI Aug. 23,
2010) (nonprecedential); Ex Parte Bash, No. 2009-007202 (BPAI Dec. 20,
2010) (nonprecedential); Ex Parte Kelly, App. No. 2009-013458 (BPAI,
June 15, 2011), and Ex Parte Hu, App. No. 2010-000151 (BPAI, Feb. 9,
Appeal 2013-007490
Application 13/457,885

5

2012)). Appellants thus contend that the “computer readable storage
medium” of Appellants’ claim 1 should be interpreted as being directed to
statutory subject matter. Id. at 7.
In response, the Examiner finds that because Appellants’
Specification fails to expressly limit the term “computer readable storage
medium” to exclude signals, carrier waves, etc., the term encompasses
transitory propagating signals. Ans. 4. The Examiner bases this finding in
part: (1) because Appellants’ Specification does not contain any specific
definition precluding the use of signals or other transitory waves as being the
memory; (id. at 4) (2) because paragraph [0048] of Appellants’ Specification
describes that “the computer program code can be transferred to a
workstation over the Internet or some other type of network” which is a form
of signal transmission, via the Internet; (id. at 5) and (3) because the
guidance provided in U.S. Patent & Trademark Office, Subject Matter
Eligibility of Computer-Readable Media, 1351 Off. Gaz. Pat. Office 212
(Feb. 23, 2010) (hereinafter Subject Matter Eligibility of Computer-
Readable Media). (Id. at 4.) There, the Office states that “[t]he broadest
reasonable interpretation 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.” Subject
Matter Eligibility of Computer-Readable Media 212.
We agree with the conclusion reached by the Examiner. Appellants
do not dispute the Examiner’s and the Office’s position, as set forth in
Subject Matter Eligibility of Computer-Readable Media, that the broadest
Appeal 2013-007490
Application 13/457,885

6

reasonable interpretation of “computer readable medium” typically
encompasses non-statutory subject matter. Instead, Appellants argue that the
word “memory” necessarily excludes transitory media from the scope of the
term.
We do not find this argument to be persuasive. In particular, we do
not find any limitation on the form of the “computer-readable storage
medium” in Appellants’ Specification. In fact, as the Examiner points out,
Appellants’ Specification further describes that “the computer program code
[tangibly embodied in the computer readable storage medium] can be
transferred to a workstation over the Internet or some other type of network”
which is a form of signal transmission, via the Internet. Spec. ¶ [0048]; see
Ans. 5. The case law and the guidelines both indicate that, while a tangible
medium might provide a safe harbor, a tangible signal does not. See In re
Nuijten, 500 F.3d 1346 (Fed. Cir. 2007) (transitory embodiments are not
directed to statutory subject matter). The present claims do not opt for
requiring tangible media, but rather call for "computer program code [that is]
tangibly embodied" in some medium. We have no evidence of an art
established meaning for tangibly embodied computer program code that
would exclude the sort of "tangible signal" that was unpatentable in Nuijten.
Even if Appellants’ Specification is silent as to the meaning of
“computer readable storage medium,” we can still turn to other guidance
including extrinsic evidence to determine the meaning of “computer
readable storage medium.” “[T]he ordinary and customary meaning of a
claim term is the meaning that the term would have to a person of ordinary
skill in the art in question at the time of the invention, i.e., as of the effective
filing date of the patent application.” Phillips v. AWH Corp., 415 F.3d 1303,
Appeal 2013-007490
Application 13/457,885

7

1313 (Fed. Cir. 2005) (en banc); Sunrace Roots Enter. Co., Ltd. v. SRAM
Corp., 336 F.3d 1298 (Fed. Cir. 2003); Brookhill-Wilk 1, LLC v. Intuitive
Surgical, Inc., 334 F.3d 1294, 1298 (Fed. Cir. 2003) (“In the absence of an
express intent to impart a novel meaning to the claim terms, the words are
presumed to take on the ordinary and customary meanings attributed to them
by those of ordinary skill in the art.”).
3

First, we turn to guidance provided in 1351 Off. Gaz. Pat. Office 212
(Feb. 23, 2010); Subject Matter Eligibility of Computer Readable Media.
(“The broadest reasonable interpretation 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

3
Based on these cases there are several factors to consider when
determining whether a “computer readable storage medium” type claim
avoids encompassing a non-statutory signal:
(1) Extrinsic evidence relevant to the meaning as would be understood
by one skilled in the art at the time of the effective filing date of the patent
application. As opposed to the voluminous extrinsic evidence dated 2002
and thereafter which is discussed in this Decision, before 2002 there is little
evidence that the ordinary and customary meaning of such “storage
medium” terms encompassed a signal.
(2) Whether there is express intent in applicant’s specification to limit
the term, i.e., applicant’s specification is not silent as to the meaning of such
terms.
(3) Whether the claim expressly limits the medium to “non-transitory”
embodiments.
(4) Whether the claim implicitly limits the medium to “non-transitory”
embodiments. The most common form of this is the use of “means plus
function” elements in the claim (i.e., a true Beauregard type claim). Such
means plus function elements are limited by statute to the corresponding
structure in the specification and equivalents thereof. Such a structure
requirement may limit the claim to non-transitory embodiments.

Appeal 2013-007490
Application 13/457,885

8

transitory propagating signals per se in view of the ordinary and customary
meaning of computer readable media, particularly when the specification is
silent.”).
Second, we also look at extrinsic evidence in the form of published
applications assigned to the same assignee as the appeal before us (i.e.,
International Business Machines Corp.), which use the identical term
“machine-readable storage medium.” See In re Cortright, 165 F.3d 1353,
1358 [49 USPQ2d 1464] (Fed. Cir. 1999) (where the Federal Circuit sua
sponte introduced other patents (from other applicants) to interpret the
contested phrase). Such extrinsic evidence includes, for example (emphasis
added):
US 20030097554 A1; Filing Date: 20011121
Assignee: International Business Machines Corporation.
Paragraph [0022]
Whether contained in the computer system or elsewhere,
the instructions may be stored on a variety of machine
readable storage media, such as a DASD storage (e.g. a
conventional “hard drive” or a RAID array), magnetic
tape, electronic read-only memory, an optical storage
device (e.g., CD ROM, WORM, DVD, digital optical
tape), paper “punch” cards, or other suitable computer
readable media including transmission media such as
digital, analog, and wireless communication links.

US 20030208338 A1; Filing Date: 20020503
Assignee: International Business Machines Corporation.
Paragraph [0017]
[Same sentence as above in US 20030097554 A1].
Appeal 2013-007490
Application 13/457,885

9

US 20040044735 A1; Filing Date: 20020830
Assignee: International Business Machines Corporation.
Paragraph [0028]
[Same sentence as above in US 20030097554 A1].

Third, we also look at extrinsic evidence in the form of published
applications assigned to other assignees (including but not limited to
industry leaders such as Hewlett-Packard Company (related to this appeal’s
assignee), Sun, Cisco, Oracle, and Siemens) (emphasis added):
“Whether contained in the computer system or
elsewhere, the instructions may be stored on a variety of
machine readable storage media, such as a DASD storage (for
example, a conventional ‘hard drive’ or a RAID array),
magnetic tape, electronic read-only memory, an optical storage
device (for example, CD ROM, WORM, DVD, digital optical
tape), paper ‘punch’ cards, or other suitable computer readable
media including transmission media such as digital, analog, and
wireless communication links.” US 20050021386 A1 at
[0027], filed July 23, 2003, assigned to Hewlett-Packard
Company (emphasis added).

“Additionally, a data signal embodied in a carrier wave
(e.g., in a network including the Internet) may be the computer
readable storage medium.” US 20040244009 A1 at [0055],
filed June 28, 2001, assigned to Sun Microsystems, Inc.
(emphasis added).

“Another example of a computer-readable storage
medium is a signal that carries software across a network.”
US 20080077710 A1 at [0166], filed May 1, 2003, assigned to
Cisco Technologies, Inc. (emphasis added).

“Additionally, a data signal embodied in a carrier wave
(e.g., in a network including the Internet) can be the computer
readable storage medium.” US 20040255307 A1 at [0032],
Appeal 2013-007490
Application 13/457,885

10

filed May 27, 2003, assigned to Oracle International Corp.
(emphasis added).

“Additionally, a data signal embodied in a carrier wave
(e.g., in a network including the Internet) can be the computer
readable storage medium.” US 20020143962 A1 at [0021],
filed March 14, 2001, assigned to Siemens Information and
Communication Networks, Inc. (emphasis added).

“Additionally, a data signal embodied in a carrier wave
(e.g., in a network including the Internet) can be the computer
readable storage medium.” US 20110171948 A1 at [0033],
filed March 21, 2003, assigned to Portal Software, Inc.
(emphasis added).

“Further, computer readable storage medium may also
encompass data signals embodied in a carrier wave such as
the data signals embodied in a carrier wave carried in a
network.” US 20100115149 A1 at [0060], filed December 2,
2002, assigned to Plantronics, Inc. (emphasis added).

“Additionally, a data signal embodied in a carrier wave
(e.g., in a network including the Internet) may be the computer
readable storage medium.” US 20060242241 A1 at [0199],
filed January 29, 2002, assigned to Neoteris, Inc. (emphasis
added).

“Additionally, a data signal embodied in a carrier wave
(e.g., in a network including the Internet) may be the computer
readable storage medium.” US 20050037367 A9 at [0029],
filed August 25, 2003, assigned to Affymetrix, Inc. (emphasis
added).

“The data structures and code described in this
description can be stored on a computer readable storage
medium, which may be any device or medium that can store
code and/or data for use by a computer system. This includes,
but is not limited to, magnetic and optical storage devices such
as disk drives, magnetic tapes, CD (compact discs) and DVD
Appeal 2013-007490
Application 13/457,885

11

(digital video disks), and computer instruction signals
embodied in a transmission medium.” US 20050007567 A1 at
[0093], filed July 10, 2003, assigned to Fortis Systems, Inc.
(emphasis added).

“Further, computer readable storage medium may also
encompass data signals embodied in a carrier wave such as
the data signals embodied in a carrier wave carried in a
network.” US 20020180725 A1 at [0082], filed April 23, 2002,
assigned to Quantum3D, Inc. (emphasis added).

“The term ‘computer-readable storage medium’ refers
to any medium that participates in providing the symbolic
representations of operations to a processor for execution. Such
media may take many forms, including, without limitation,
volatile memory, nonvolatile memory, flash memory,
electronic transmission media, and the like.”
US 20040236726 A1 at [0027], filed May 19, 2003, assigned to
Teracruz, Inc. (emphasis added).

“Additionally, a data signal embodied in a carrier wave
(e.g., in a network, e.g., internet, intranet, and the like) may be
the computer readable storage medium.” US 20030175815
A1 at [0102], filed March 26, 2003, assigned to Caliper
Technologies Corp. (emphasis added).

Based on the significant amount of available guidance and evidence
discussed supra, we conclude that those of ordinary skill in the art would
understand the claim term “computer readable storage medium” to include
signals per se. Further, where, as here, the broadest reasonable
interpretations of all the claims each covers a signal per se, the claims must
be rejected under 35 U.S.C. § 101 as covering non-statutory subject matter.
See In re Nuijten, at 1356-57; Subject Matter Eligibility of Computer-
Readable Media, supra; U.S. Patent & Trademark Office, Interim
Appeal 2013-007490
Application 13/457,885

12

Examination Instructions for Evaluating Subject Matter Eligibility Under
35 U.S.C. § 101, page 2 (Aug. 24, 2009), available at
http://www.uspto.gov/web/offices/pac/dapp/opla/2009-08-
25_interim_101_instructions.pdf; U.S. Patent & Trademark Office,
Evaluating Subject Matter Eligibility Under 35 USC § 101, pages 11-14
(August 2012 Update), available at
http://www.uspto.gov/patents/law/exam/101_training_aug2012.pdf.
Therefore, we reject claims 1-11 under 35 U.S.C. § 101 for being
directed to non-statutory subject matter.
Separately, we also agree with the Examiner that the Dureau, Bash,
Kelly, and Hu decisions do not control nor compel a different result. As
correctly noted by the Examiner, none of these opinions has been designated
as precedential, and therefore none of the opinions was intended to be
binding on the Examiner and, by extension, this panel. Ans. 5; BPAI, Std.
Op. P. 2 (rev. 7) (2008), available at
http://www.uspto.gov/ip/boards/bpai/procedures/sop2.pdf.
In contrast, our decision on appeal in Ex Parte Mewherter, No. 2012-
007692 (PTAB May 8, 2013) is precedential as to the treatment of the
rejection under 35 U.S.C. §101. In the Mewherter decision, we also held
that, even if Appellants’ Specification is silent as to the meaning of
“computer readable storage medium,” the ordinary and customary meaning
of that term would include signals per se.
Nevertheless, like Mewherter, we also note that Appellants are not
precluded from amending these claims to overcome this rejection. Guidance
on this point is provided in U.S. Patent & Trademark Office, Subject Matter
Eligibility of Computer Readable Media, 1351 Off. Gaz. Pat. Office 212
Appeal 2013-007490
Application 13/457,885

13

(Feb. 23, 2010) (“A claim drawn to such a computer readable medium that
covers both transitory and non-transitory embodiments may be amended to
narrow the claim to cover only statutory embodiments to avoid a rejection
under 35 U.S.C. § 101 by adding the limitation ‘non-transitory’ to the
claim.”). See also U.S. Patent & Trademark Office, Evaluating Subject
Matter Eligibility Under 35 USC § 101, pages 11-14 (August 2012 Update),
available at
http://www.uspto.gov/patents/law/exam/101_training_aug2012.pdf
(noting that while the recitation “non-transitory” is a viable option for
overcoming the presumption that those media encompass signals or carrier
waves, merely indicating that such media are “physical” or tangible” will not
overcome such presumption).

CONCLUSION
On the record before us, we conclude that the Examiner has not erred
in rejecting claims 1-11 under 35 U.S.C. § 101.

DECISION
As such, we AFFIRM the Examiner’s final rejection of claims 1-11.
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

bar