Ex Parte Bhaskaran et al

Patent Trial and Appeal Board

Mar 31, 2014

10908626 (P.T.A.B. Mar. 31, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte KUMAR BHASKARAN, TIAN CHAO,
RAINER KERTH, and FREDERICK Y. WU
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Appeal 2011-008535
Application 10/908,626
Technology Center 2400
____________

Before MAHSHID D. SAADAT, THU A. DANG,
and MICHAEL J. STRAUSS, Administrative Patent Judges.

SAADAT, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2011-008535
Application 10/908,626

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Appellants appeal under 35 U.S.C. § 134(a) from a final rejection of
claims 15-20 which stand rejected under 35 U.S.C. § 101 as being non-
statutory.1 (See Ans. 3-4). We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.

STATEMENT OF THE CASE
Claim 15 is exemplary and reads as follows:
15. A computer program product for autonomic
security configuration, the computer program product
comprising a computer readable storage medium having
computer readable program code embodied therein, the
computer readable medium comprising:
computer readable program code configured to control a
security configuration of at least one resource forming a
solution based on a plurality of security requirements;
computer readable program code configured to apply the
plurality of security requirements across a plurality of resources
independent any differences in configuring resource security
between the plurality of resources; and
computer readable program code configured to provide a
set of templates for selection by a user, each template
comprising a collection of security requirements, each template
having a multi-layered structure comprising a process security
layer, a message security layer and a transport security layer
applied in a top-down fashion where each lower level security
layer includes specifications more restrictive than specifications
in a security layer at a level above,
wherein the process security layer defines default
security settings for the message security layer and the transport
security layer when the message security layer and the transport
security layer are not applied, and the message security layer

1 Claims 7, 8, and 14 have been canceled and claims 1-6 and 9-13 have been
allowed.
Appeal 2011-008535
Application 10/908,626

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defines default security settings for the transport security layer
when the transport security layer is not applied.

ISSUE
Did the Examiner err in rejecting claims 15-20 under 35 U.S.C. § 101
as being directed to non-statutory subject matter?

ANALYSIS
We have reviewed the Examiner’s rejection in light of Appellants’
arguments that the Examiner has erred. We disagree with Appellants’
arguments.
Appellants contend that claim 15 recites a statutory article of
manufacture under 35 U.S.C. § 101, namely, a “computer program product
for autonomic security configuration, the computer program product
comprising a computer readable storage medium having computer readable
program code embodied therein . . .” (App. Br. 4). Based on the disclosure
in paragraphs 19 and 20 of their Specification, Appellants argue that the
recited computer readable storage medium would be understood by a person
skilled in the art to be different from a signal propagating medium (App. Br.
4-5; Reply Br. 2-3). 2 Appellants further point out that the broadest
reasonable interpretation of computer readable storage medium indicates “a
computer readable storage medium would be a physical or tangible thing and
not a propagating signal or signal propagating medium” (Reply Br. 3).

2 We observe that the cited portion of the Specification was amended
December 8, 2008, to delete the references made to “propagation medium,”
“transmission media,” and “communicate, propagate.”
Appeal 2011-008535
Application 10/908,626

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We agree with the Examiner that the claimed method is ineligible for
patent protection because the broadest reasonable claim interpretation
encompasses forms of non-transitory tangible media as well as transitory
propagating signals and therefore, extends to both statutory and non-
statutory subject matter (Ans. 4-5). See Ex parte Mewherter, 107 USPQ2d
1857 (PTAB 2013) (precedential) (expanded panel) (holding recited
computer-readable storage medium ineligible under § 101 since it
encompasses transitory media). Here, the recited “computer readable
storage medium” is not claimed as non-transitory, and Appellants’
disclosure does not expressly and unambiguously limit that medium to
solely non-transitory forms via a definition or similar limiting language.
Therefore, the computer readable medium appears to encompass transitory
forms which would be ineligible under § 101.
Therefore, we sustain the 35 U.S.C. § 101 rejection of claim 15, and
claims 16-20 dependent thereon which were not argued separately (App. Br.
5), as being directed to non-statutory subject matter.

CONCLUSION
On the record before us, we conclude that the Examiner did not err in
rejecting claims 15-20 under 35 U.S.C. § 101 as being directed to non-
statutory subject matter.

DECISION
The decision of the Examiner rejecting claims 15-20 is affirmed.
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).
Appeal 2011-008535
Application 10/908,626

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AFFIRMED

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