Ex Parte Birger et al

Board of Patent Appeals and Interferences

Jul 13, 2010

10372399 (B.P.A.I. Jul. 13, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
________________

Ex parte CHET BIRGER, DAVID C. DOUGLAS, STEVEN
ROSENTHAL, and KENNETH R. TRAUB
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Appeal 2009-006556
Application 10/372,399
Technology Center 2400
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Before JAMES D. THOMAS, MAHSHID D. SAADAT, and CARL W.
WHITEHEAD, JR., Administrative Patent Judges.

THOMAS, Administrative Patent Judge.

DECISION ON APPEAL1

1 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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STATEMENT OF THE CASE
This is an appeal under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 1 through 60. We have jurisdiction under 35 U.S.C. §
6(b).
We vacate the rejections before us under 35 U.S.C. § 103 and institute
a new ground of rejection within the provisions of 37 C.F.R. § 41.50(b).
Invention
A computer architecture for enterprise device applications
provides a real-time, bi-directional communication layer for
device communication. An identity-based communications
layer provides for secure, end-to-end telemetry and control
communications by enabling mutual authentication and
encryption between the devices and the enterprise. The identity-
based communications layer is situated between a network layer
and an application layer and transmits a message between two
devices identified by a global address. The global address
specifies a protocol, a network, and an address meaningful for
the combination of the protocol and the network.
(Abstract, Spec. 84; Figures 3-6.)

Representative Claim
1. A method for communicating between two endpoints connected to a
network, the method comprising having a first endpoint use a global address
of a second endpoint to communicate with the second endpoint, wherein:
the global address specifies a protocol, a network identifier, and an
address meaningful for the combination of the protocol and a network
identified by the network identifier,
an application sends messages directed to the second endpoint through
an identity-based communication layer that is situated between a network
layer and an application layer, the messages being independent of the
protocol, and

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the identity-based communication layer transmits the messages to the
second endpoint using the protocol, the network, and the address specified
by the global address.

Prior Art and Examiner’s Rejections
The Examiner relies on the following references as evidence of
unpatentability:
Ivanoff 5,517,622 May 14, 1996
Traversat 2002/0188657 A1 Dec. 12, 2002
(filed Jan. 22, 2002)

Cabrera 2003/0101284 A1 May 29, 2003
(filed Nov. 27, 2001)

Raciborski 6,836,806 B1 Dec. 28, 2004
(filed Sept. 18, 2000)

All claims on appeal, claims 1-60, stand rejected under 35 U.S.C. §
103. As evidence of obviousness as to claims 1, 2, 19, 30-35, 37, 38, 41-44,
47, 49, 50, 52, 53, 56, 58, and 59, the Examiner relies upon Ivanoff in view
of Raciborski. This combination of references is utilized by the Examiner to
reject claims 5-8, 46, and 55, further in view of Cabrera. Lastly, the initial
combination of references of Ivanoff in view of Raciborski is utilized,
further in view of Traversal, to reject claims 3, 4, 9-18, 20-29, 36, 39, 40, 45,
48, 51, 54, 57, and 60.

ANALYSIS
We vacate the prior art rejections encompassing all claims on appeal
because we conclude that all claims on appeal, claims 1 through 60, are
“barred at the threshold by § 101.” In re Comiskey, 554 F.3d 967, 973 (Fed.
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Cir. 2009) (citing Diamond v. Diehr, 450 U.S. 175, 188 (1981)). Therefore,
the following new ground of rejection is set forth in this Opinion within the
provisions of 37 C.F.R. § 41.50(b).
NEW REJECTION UNDER 35 U.S.C. § 101
PRINCIPLES OF LAW
Statutory Subject Matter
The subject matter of claims permitted within 35 U.S.C. § 101 must
be a machine, a manufacture, a process, or a composition of matter.
Moreover, our reviewing court has stated that “[t]he four categories [of
§ 101] together describe the exclusive reach of patentable subject matter. If
the 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); accord In re Ferguson, 558 F.3d 1359 (Fed. Cir.
2009). This latter case held that claims directed to a “paradigm” are
nonstatutory under 35 U.S.C. § 101 as representing an abstract idea. Thus, a
“signal” cannot be patentable subject matter because it is not within any of
the four categories. In re Nuijten, 500 F.3d at 1357. Laws of nature,
abstract ideas, and natural phenomena are excluded from patent protection.
Diamond v. Diehr, 450 U.S. at 185. A claim that recites no more than
software, logic or a data structure (i.e., an abstraction) does not fall within
any statutory category. In re Warmerdam, 33 F.3d 1354, 1361 (Fed. Cir.
1994). Significantly, "Abstract software code is an idea without physical
embodiment." Microsoft Corp. v. AT&T Corp., 550 U.S. 437, 449 (2007).

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The unpatentability of abstract ideas was confirmed by the U.S. Supreme
Court in Bilski v. Kappos, No. 08-964, 2010 WL 2555192 (June 28, 2010).
With this background in mind, all claims on appeal, claims 1-60, are
rejected under 35 U.S.C. § 101 as being directed to nonstatutory subject
matter. Consistent with our earlier-noted invention statement from
Appellants’ disclosed Abstract, the disclosed and claimed invention is
directed to software per se, abstract ideas, abstract concepts, and the like,
including data per se, data items, messages, addresses, identities, data
structures, software layers, software applications, software protocols, and the
abstract intellectual processes associated with them within the claims on
appeal.
This brief analysis is clearly seen from representative independent
method claim 1 on appeal as well as a variation of it recited in independent
method claim 37 on appeal. In like manner, independent claims 43 and 49
recite computer-readable mediums in the preamble, which in turn embody a
computer program said to comprise one or more code segments configured
to perform the processing corresponding to the subject matter of
representative independent claim 1 on appeal. This computer-readable
medium is plainly directed to internet communications as disclosed in
addition to the intent to directly claim software per se. Thus, the medium
includes and encompasses signals per se, and because it is disclosed to be
directed to internet-based communications media, these medium claims are
inclusive of transitory signaling embodiments, which are proscribed by the
earlier-noted case law. Note also the analysis provided by Subject Matter of

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Eligibility of Computer Readable Media, 1351 Off. Gaz. Pat. Office 212
(Feb. 23, 2010).
From our earlier remarks, it is clearly seen that the system of claims
52 and 58 recite features in the body of these claims corresponding to the
features actually recited in the body of representative independent method
claim 1 noted earlier. The network of the preamble of these claims is
correspondingly directed to the electronic signaling environment just
discussed. Moreover, the claimed system appears to be directed to the
abstract “system architecture” noted within Appellants’ Abstract we
reproduced in our invention statement earlier in this opinion, which in turn
recites a real-time bi-directional communication layer which is a software or
abstract construct itself. Based on the manner in which claim 52, for
example, recites the claimed processor, it is not necessarily hardware or a
computer itself, and no computer is directly claimed either in the preamble
of this claim or the body of the claim. Significantly as well, as disclosed at
Specification page 11, line 10, the expansive scope of the term “device” is
intended to encompass data objects themselves, such as objects of data
associated with or within a software environment, or software objects as
well. Thus, a “device” is a nonce word of substantially broad scope having
an optional meaning intended to be attributed to it as disclosed and, in fact,
amounts to an abstraction in its own sense. A “device” in this application is
not necessarily a physical device.

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CONCLUSION and DECISION
We have pro forma reversed the outstanding rejections over applied
prior art of all claims on appeal, claims 1-60. We have instituted a new
ground of rejection within 37 C.F.R. § 41.50(b). This new rejection of all
claims on appeal is based upon 35 U.S.C. § 101 since these claims are
directed to non-statutory subject matter.
A new ground of rejection is pursuant to 37 C.F.R. § 41.50(b).
37 C.F.R. § 41.50(b) provides that, “[a] new ground of rejection pursuant to
this paragraph shall not be considered final for judicial review.”
37 C.F.R. § 41.50(b) also provides that the Appellants, WITHIN
TWO MONTHS FROM THE DATE OF THE DECISION, must exercise
one of the following two options with respect to the new grounds of
rejection to avoid termination of proceedings (37 C.F.R. § 1.197 (b)) as to
the rejected claims:
(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
37 C.F.R. § 41.52 by the Board upon the same record ….

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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).

VACATED
37 C.F.R. § 41.50(b)

erc

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