Ex Parte Ca et al

Patent Trial and Appeal Board

Apr 29, 2014

12467505 (P.T.A.B. Apr. 29, 2014)

UNITED STATES PATENT AND TRADEMARKOFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
12/467,505 05/18/2009 Jalaludeen Ca Ca 5-5 8184
47386 7590 04/29/2014
RYAN, MASON & LEWIS, LLP
1175 POST ROAD EAST
2ND FLOOR
WESTPORT, CT 06880
EXAMINER
POLTORAK, PIOTR
ART UNIT PAPER NUMBER
2496
MAIL DATE DELIVERY MODE
04/29/2014 PAPER
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte JALALUDEEN CA and NANDAKUMAR GN
____________

Appeal 2011-012618
Application 12/467,505
Technology Center 2400
____________

Before JEAN R. HOMERE, JOHN A. EVANS, and J. JOHN LEE,
Administrative Patent Judges.

EVANS, Administrative Patent Judge.

DECISION ON APPEAL
Appellants1 seek our review under 35 U.S.C. § 134(a) of the
Examiner’s final rejection of Claims 1-202 as anticipated, obvious, and as
reciting non-statutory subject matter. We have jurisdiction under 35 U.S.C.
§ 6(b).

1 The Real Party in Interest is Agere Systems Inc.
2 App. Br. 4.
Appeal 2011-012618
Application 12/467,505
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We REVERSE.3
STATEMENT OF THE CASE

The claims relate to a method and apparatus for detecting the removal
of a device connected to a network. See Abstract.
Claims 1, 11, and 20 are independent. An understanding of the
invention can be derived from a reading of exemplary Claim 1, which is
reproduced below with disputed limitations italicized:
1. A method for detecting removal of a device connected to
a network by a network connection, comprising:
monitoring said network connection;
generating an alarm in said removed device if said
network connection is disconnected; and
preventing a control of said device from being adjusted
in response to said alarm being generated.

3 Our decision refers to Appellants’ Appeal Brief filed April 19, 2011
(“App. Br.”); Reply Brief filed July 19, 2011 (“Reply Br.”); Examiner’s
Answer mailed June 21, 2011 (“Ans.”); Final Office Action mailed
December 28, 2010 (“Final Rej.”); and the Specification filed May 18, 2009
(“Spec.”).
Appeal 2011-012618
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References and Rejections
The Examiner relies upon the prior art as follows:
Cromer US 6,021,493 Feb. 1, 2000
(filed Nov. 6, 1997)

Pearce US 6,308,272 B1 Oct. 23, 2001
(filed Dec. 21, 1998)

Matsushita JP 2000-259274 Sep. 22, 2000
(filed Aug. 3, 1999)

James G. Jumes, et al., Microsoft Windows NT 4.0 Security, Audit, and
Control, Microsoft Press, (1999).

The claims stand rejected as follows:4
1. Claim 20 stands rejected under 35 U.S.C. § 101 as reciting non-
statutory subject matter. Ans. 5.
2. Claims 1, 2, 7, 9, 11, 12, 17, 19, and 20 stand rejected under 35 U.S.C.
§ 102(a) as anticipated by Matsushita. Ans. 5-7.
3. Claims 3, 4, 13, and 14 stand rejected under 35 U.S.C. § 103(a) as
obvious over Matsushita and Jumes. Ans. 7.
4. Claims 5, 6, 15, and 16 stand rejected under 35 U.S.C. § 103(a) as
obvious over Matsushita and Pearce. Ans. 7-8.
5. Claims 1, 8, 10, 11, 18, and 20 stand rejected under 35 U.S.C. §
103(a) as being unpatentable over Cromer and Matsushita. Ans. 8-9.

4 Based on Appellants’ arguments in the Appeal Brief, we will decide the
appeal on the basis of claims as set forth below. See 37 C.F.R. §
41.37(c)(1)(vii).

Appeal 2011-012618
Application 12/467,505
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APPELLANTS’ CONTENTIONS
1. Claim 20 recites a “tangible article of manufacture” and, thus, is not
drawn to a transitory embodiment. App. Br. 4-5; Reply Br. 2.
2. Matsushita and Cromer, either separately or together, fail to teach or
suggest “preventing a control of said device from being adjusted in
response to said alarm being generated,” as recited in independent
claims 1, 11, and 20. App. Br. 5; Reply Br. 3.
3. Matsushita fails to teach or suggest preventing a volume control from
being adjusted below a predefined minimum level, as claimed in
Claims 2 and 12. App. Br. 6; Reply Br. 3-4.
4. Matsushita and Jumes, either separately or together, fail to teach or
suggest “preventing a control of said device from being adjusted in
response to said alarm being generated,” as recited in independent
claims 1, 11, and 20. App. Br. 7; Reply Br. 4.

ISSUES ON APPEAL
Based on Appellants’ arguments in the Appeal Brief (App. Br. 6-21)
and Reply Brief (Reply Br. 2-4), the issues presented on appeal are:
1) Whether the Examiner erred in finding that Claim 20 recites non-
statutory subject matter; and,
2) Whether the Examiner erred in finding the claimed limitations to be
present in the cited art.

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ANALYSIS
NON-STATUTORY SUBJECT MATTER
Claim 20 stands rejected under 35 U.S.C. § 101. The Examiner finds
that the claim language is directed to an “article of manufacture ...
comprising: a tangible computer readable medium.” The Specification does
not define the “article of manufacture” and the term “computer readable
medium” does not exclude a transitory computer readable medium, such as
wave or signal. Ans. 5.
Appellants contend Claim 20 recites that the “article of manufacture”
and the “computer readable medium” are “tangible.” App. Br. 4.
Appellants and the Examiner each cite the Kappos Memo;5 Appellants, for
the proposition that the recitation “tangible” serves to bring the claims
within the ambit of patent-eligible subject matter (App. Br. 4), and the
Examiner, for the proposition that the recitation “tangible” serves to exclude
the claims as patent-eligible subject matter. Ans. 10.
We agree with Appellants. The Kappos Memo provides that the
“broadest reasonable interpretation of a claim drawn to a computer readable
medium . . . 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 . . .” Thus, computer readable media
are divided into tangible media, which are statutory, and transitory
propagating signals, which are not. Therefore, we decline to sustain the
rejection of Claim 20 under § 101.

5 David J. Kappos, “Subject Matter Eligibility of Computer Readable
Media,” 1351 Off. Gaz. Pat. Office 212 (Feb. 23, 2010).

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ANTICIPATION/OBVIOUSNESS
Independent Claims 1, 11, and 20
Independent Claims 1, 11, and 20 stand rejected as anticipated by
Matsushita (Ans. 5) and as obvious over Matsushita and Cromer. Ans. 8.
The Examiner finds that Matsushita prevents a non-authorized user from
adjusting the operation of an alarm by requiring the use of a password. The
Examiner finds that this teaching of Matsushita discloses the limitation
“preventing a control of said device from being adjusted in response to said
alarm being generated.” Ans. 6.
Appellants contend that Matsushita requires a password merely to
enable or disable an alarm. Appellants argue that Matsushita does not teach
preventing a control of a device from being adjusted “in response to said
alarm being generated.” App. Br. 5.
The Examiner’s response finds:
Matsu[s]hita teaches that the invention prevents a non
authorized user from affecting the operation of the system by
allowing only authorized user (administrator), using [a]
password for example, to change the operation of an alarm
output . . .
Ans. 12 (citing Matsushita, ¶¶ 0006 and 0037).
Independent Claims 1, 11, and 20 each recite the disputed limitation:
“preventing a control of said device from being adjusted in response to said
alarm being generated.” From Appellants’ Specification it is clear that the
term “device” relates to “laptop computers and other portable devices.”
Spec. p. 1, ll. 14-15. The Specification differentiates a “device” from an
“alarm.”
A theft protection utility process monitors the network
connection and generates an alarm if the protected device is
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disconnected from the network connection without proper
notification to the theft protection utility process.
Spec. p. 2, ll. 5-8.
We agree with Appellants that requiring a password to change the
operational state of an alarm, as taught by Matsushita, does not teach
preventing adjustment of a control of a device in response to the generation
of an alarm. Indeed, regardless of whether the alarm is triggered, Matsushita
does not disclose that the device is disabled or that its control is otherwise
affected once the device is removed. We decline to sustain the rejection of
Claims 1, 11, and 20 under 35 U.S.C. § 102. The Examiner finds that
“Cromer is silent regarding preventing a control of said device from being
adjusted in response to the alarm being generated.” Ans. 8. In view of the
foregoing, we decline to sustain the rejection of independent Claims 1, 11,
and 20 under 35 U.S.C. § 103.
Dependent Claims 2-10, 12-18, and 19
Dependent Claims 2-10, 12-18, and 19 stand rejected as anticipated or
obvious under similar reasoning as discussed above for independent Claims
1 and 11. Ans. 5, 8. Some dependent claims are further rejected in view of
Pearce or Jumes. The Examiner does not cite either Pearce or Jumes as
teaching “preventing a control of said device from being adjusted in
response to the alarm being generated.” Because we do not sustain the
rejection of the base claims, and because Pearce and Jumes are not cited as
teaching this limitation, we do not sustain the rejection of the dependent
claims.

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DECISION
The rejection of Claim 20 under 35 U.S.C. § 101 is REVERSED.
The rejection of Claims 1, 2, 7, 9, 11, 12, 17, 19, and 20 under 35
U.S.C. § 102 is REVERSED.
The rejection of Claims 1, 3-6, 8, 10, 11, 13-16, 18, and 20 under 35
U.S.C. § 103 is REVERSED.

REVERSED

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