Ex Parte Casazza

Board of Patent Appeals and Interferences

Sep 28, 2006

10231678 (B.P.A.I. Sep. 28, 2006)

The opinion in support of the decision being entered today was not
written for publication and is not binding precedent of the Board.

UNITED STATES PATENT AND TRADEMARK OFFICE
_______________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_______________

Ex Parte JAMES CASAZZA

Appeal No. 2006-2228
Application No. 10/231,678
_______________

ON BRIEF
_______________

Before KRASS, JERRY SMITH and MACDONALD, Administrative Patent
Judges.

JERRY SMITH, Administrative Patent Judge.

DECISION

This is a decision on the appeal under 35 U.S.C. § 134 from the
examiner’s final rejection of claims 11, 12, 20-22, and 35-38. After the filing
of the appeal brief, the examiner withdrew rejections of claims 11, 12, 20-22,
and 36 [answer, page 2]. Therefore, this appeal is now directed to the rejection
of claims 35, 37, and 38.

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The disclosed invention pertains to a method, apparatus, and program
product for providing persistent data during a user session on a networked
computer system. A global data cache is divided into three sections: trusted,
protected, and unprotected. An authorization mechanism stores and retrieves
authorization data from the trusted section of the global data store. A common
session manager stores and retrieves data from the protected and unprotected
sections of the global data cache. Using the authorization mechanism, software
applications may verify that a user is authorized without prompting the user for
authorization information. Using the common session manager, software
applications may store and retrieve data to and from the global data store,
allowing the sharing of data during a user session. After the user session
terminates, the data in the global data cache corresponding to the user session is
invalidated.
Representative claim 35 is reproduced as follows:

35. A program product comprising:
(A) a common session manager that stores data in the global data
cache during a user session, and that invalidates the data in the global data
cache after the user session is terminated, the global data cache comprising:

(A1) a trusted section that includes authorization information
for a user session;

(A2) a protected section that includes information that may be
accessed only if the user is authorized to access the information stored in
the protected section; and

(A3) an unprotected section that includes information that may
be accessed by any user that has a valid session identifier;
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(B) an authorization mechanism that is called by a software
application to determine whether a user is authorized to access the software
application, the authorization mechanism providing single sign-on capability for
all software applications that access the global data cache; and

(C) computer-readable signal bearing media bearing the common
session manager and the authorization mechanism.

The examiner does not rely on any references.
Claims 35, 37, and 38 stand rejected under 35 U.S.C. § 101 as being
directed to non-statutory subject matter.
Rather than repeat the arguments of appellant or the examiner, we make
reference to the briefs and the answer for the respective details thereof.
OPINION
We have carefully considered the subject matter on appeal and the
rejection advanced by the examiner. We have, likewise, reviewed and taken
into consideration, in reaching our decision, the appellant’s arguments set forth
in the briefs along with the examiner’s rationale in support of the rejection and
arguments in rebuttal set forth in the examiner’s answer.
It is our view, after consideration of the record before us, that the claims
on appeal are not directed to statutory subject matter. Accordingly, we affirm.

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The examiner’s rejection, in essence, appears to be based on the
examiner’s belief that the claimed invention is not limited to tangible products
or mediums, but could include a medium such as a carrier wave. The examiner
asserts that a signal encoded with functional descriptive material does not fall
within any of the categories of patentable subject matter under 35 U.S.C. § 101
[answer, pages 4-7].
Appellant argues that the requirement that the signal bearing media be
tangible is without support in the patent laws or regulations. Appellant argues
that the examiner is exalting form over substance. Appellant argues that there is
no reason why wireless forms of transmission should be treated differently from
disks, memories and tangible wires used for transmission. Appellant asserts
that if the medium is computer readable, then it is directed to patentable subject
matter under 35 U.S.C. § 101 [brief, pages 5-12].
The examiner remains unpersuaded by any of appellant’s arguments. The
examiner also responds that a carrier wave is not reproducible (useful) at any
time, but only works while being transmitted. The examiner notes that this is
different from a program stored on a disk which may be useful at any time
[answer, page 7].
Appellant responds that the claimed invention is directed to a computer
readable signal bearing media. Appellant acknowledges that such media
includes tangible media but may also include intangible media. Appellant
argues that the technology of today’s world requires that software that is

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transferred through wireless communications be protected in the same manner
that software on a disk is protected. Appellant also responds that the
examiner’s standard of being reproducible or useful is without any support in
the law. Appellant reiterates the arguments made in the main brief and notes
that there is no legislative history that supports the distinctions being made by
the examiner [reply brief].
We will sustain the examiner’s rejection of the claims on appeal. The
issue, quite simply, is whether a claimed program product that is broad enough
to include a carrier wave is statutory subject matter. We acknowledge that we
are not aware of any case law that has specifically decided this question either
way. It could be argued that a carrier wave is not statutory subject matter
because it is does not fall within any of the four categories of statutory subject
matter. Even if a carrier wave could be considered to be an article of
manufacture, however, we find that such a carrier wave does not operate as the
claimed program product. Independent claim 35 recites a common session
manager and an authorization mechanism that interact with a computer to
perform specific functions and that are stored on computer-readable signal
bearing media. It is our view that the functions to be performed by the
computer of claim 35 cannot be performed while the information relating to the
common session manager and authorization mechanism are within a carrier
wave. Specifically, information sent by carrier wave is transmitted by
modulating the carrier wave with the information. This information must be
received and

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demodulated before the information is available for use. Thus, the information,
while on the carrier wave, is unavailable to the computer for performing the
functions recited in claim 35. It is also likely that all the information necessary
to perform the functions of claim 35 never exists within the carrier wave at any
one time. In other words, it is typical for information that is
transmitted by carrier wave to begin to be received at the receiver before all the
information is transmitted. Therefore, it appears to us that a program product
for carrying out the claimed invention cannot exist while the information is
being transmitted on a carrier wave.
We are sympathetic to appellant’s concerns regarding the practical needs
caused by today’s technology. When technology begins to outpace the patent
laws, a question such as the one presented on this appeal can occur. The
question of what constitutes statutory subject matter is best resolved by the
Congress or by an Article III court. We could reverse this rejection because it
raises a new question of patentability, and the limited question presented
on this appeal never gets resolved because panel decisions of the Board are non-
precedential. By affirming the examiner’s rejection, however, we have at least
given appellant an opportunity to have this decision considered by a higher
authority.
In summary, we have sustained the examiner’s rejection of the claims on
appeal. Therefore, the decision of the examiner rejecting claims 35, 37, and 38
is affirmed.

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No time period for taking any subsequent action in connection with this
appeal may be extended under 37 CFR § 1.136(a)(1)(iv).
AFFIRMED

ERROL A. KRASS )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
JERRY SMITH ) APPEALS AND
Administrative Patent Judge ) INTERFERENCES
)
)
)

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Judge MacDonald, concurring.
A. INTRODUCTION
I concur with the result reached by the majority and add the following
analysis.
Appellant has admitted at pages 2-3 of the Reply Brief filed May 9, 2006,
that claims 35, 37, and 38 are intended to include intangible embodiments, as
follows:
The word "signal" does appear in the claims, but taken in
context, the term signal is part of a phrase "signal bearing" that
modifies the term "media." The term "computer-readable signal
bearing media" is term is used by appellant to describe in a
succinct manner in the claims any media that is computer-readable
and that bears a signal. The claimed computer-readable signal
bearing media includes tangible embodiments, such as recordable
media recited in claim [36]. The claimed computer-readable signal
bearing media also includes transmission media, which can include
both tangible embodiments (tangible wire transmission) and
intangible embodiments (wireless transmission).
The crux of Appellant’s argument is as follows (page 5 of Brief filed
November 28, 2005):
The examiner has imposed a requirement that the signal
bearing media be tangible without support in the patent laws or
regulations. In the Response to Arguments section of the final
office action, the examiner cites the State Street Bank case as
requiring that the claimed invention as a whole must accomplish a
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practical application by producing a "useful, concrete, and tangible
result." This citation to State Street Bank confuses the issue of
patentability under 35 U.S.C. § 101 with respect to the pending
independent claims. (emphasis added)

B. DISCUSSION
Appellant has admitted that in claims 35, 37, and 38, the “computer-
readable signal bearing media” includes “intangible embodiments (wireless
transmissions).” On its face, this in turn includes “carrier waves” or
“propagated signals” which are not statutory subject matter. A case involving
this issue is presently on appeal to the Federal Circuit: In re Nuijten, No. 06-
1301.
A man-made signal represents coded information. A signal can be an
abstract quantity describing the information or a measurable physical quantity
(e.g., the fluctuations of an electrical quantity, such as voltage) containing
information. See In re Walter, 618 F.2d 758, 770, 205 USPQ 397, 409 (CCPA
1980) ("The 'signals' processed by the inventions of claims 10-12 may represent
either physical quantities or abstract quantities; the claims do not require one or
the other"). Here we interpret the “computer-readable signal bearing media” of
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claim 35 to include a time varying electromagnetic signal instead of just an
abstract quantity, such as a data format.
The “computer-readable signal bearing media” of claim 35 is considered
to be nonstatutory subject matter because a "carrier wave" or a "propagated
signal" does not fall within one of the four statutory categories of subject matter
under 35 U.S.C. § 101.
The categories of statutory subject matter are "process, machine,
manufacture, or composition of matter." 35 U.S.C. § 101. "[N]o patent is
available for a discovery, however useful, novel, and nonobvious, unless it falls
within one of the express categories of patentable subject matter of 35 U.S.C. §
101." Kewanee Oil Co. v. Bicron Corp., 416 U.S. 470, 483, 181 USPQ 673,
679 (1974).
A "process" is a series of acts and, since claims 35, 37, and 38 do not
recite acts, it is not a process. Compare the method of sharing data in claims 20-
22, which are not rejected.
The three product classes of machine, manufacture, and composition of
matter have traditionally required physical structure or substance. "The term
machine includes every mechanical device or combination of mechanical
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powers and devices to perform some function and produce a certain effect or
result." Corning v. Burden, 56 U.S. 252, 267 (1854); see also Burr v. Duryee,
68 U.S. 531, 570 (1863) (a machine is a concrete thing, consisting of parts or of
certain devices and combinations of devices). Machines do not have to have
moving parts. In modern parlance, electrical circuits and devices, such as
computers, are referred to as machines. The intangible "carrier wave" or a
"propagated signal" embodiment of claim 35 has no concrete tangible physical
structure, and does not perform any functions itself. Therefore, any such
intangible does not fit within the definition of a "machine."
A "manufacture" and a "composition of matter" are defined in Diamond
v. Chakrabarty, 447 U.S. 303, 308, 206 USPQ 193, 196-97 (1980):
[T]his Court has read the term "manufacture" in accordance with its
dictionary definition to mean "the production of articles for use from raw
or prepared materials by giving to these materials new forms, qualities,
properties, or combinations, whether by hand-labor or by machinery."
American Fruit Growers, Inc. v. Brogdex Co., 283 U.S. 1, 11 (1931).
Similarly, "composition of matter" has been construed consistent with
common usage to include "all compositions of two or more substances
and ... all composite articles, whether they be results of chemical union,
or of mechanical mixture, or whether they be gases, fluids, powders or
solids." Shell Development Co. v. Watson, 149 F. Supp. 279, 280 (D.C.
1957) (citing 1 A. Deller, Walker on Patents § 14, p. 55 (1st ed. 1937).
[Parallel citations omitted.]

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The intangible embodiment is not composed of matter and is clearly not a
"composition of matter."
A "manufacture" is the residual category for products. 1 Chisum, Patents
§ 1.02[3] (2004) (citing W. Robinson, The Law of Patents for Useful Inventions
270 (1890)). If a signal falls within any category of § 101, it must fall within
this category. The definition of "manufacture" from Diamond v. Chakrabarty
requires a tangible article prepared from materials. "Tangible" refers to
something that is discernible by touch. The other cases dealing with
manufactures also require a tangible physical article. The CCPA held in In re
Hruby, 373 F.2d 997, 153 USPQ 61 (CCPA 1967) that there was no distinction
between the meaning of "manufacture" in § 101 and "article of manufacture" in
§ 171 for designs. The issue in Hruby was whether that portion of a water
fountain which is composed entirely of water in motion was an article of
manufacture. The CCPA relied on the analysis of the term "manufacture" in
Riter-Conley Mfg. Co. v. Aiken, 203 F. 699 (3d Cir.), a case involving a utility
patent. The CCPA stated in Hruby: "The gist of it is, as one can determine from
dictionaries, that a manufacture is anything made 'by the hands of man' from
raw materials, whether literally by hand or by machinery or by art." 373 F.2d at
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1000, 153 USPQ at 65. The CCPA held that the fountain was made of the only
substance fountains can be made of--water--and determined that designs for
water fountains were statutory. Articles of manufacture in designs manifestly
require physical matter to provide substance for embodiment of the design.
Since an "article of manufacture" under § 171 has the same meaning as a
"manufacture" under § 101, it is inevitable that a manufacture under § 101
requires physical matter.
Some further indirect evidence that Congress intended to limit patentable
subject matter to physical things and steps is found in 35 U.S.C. § 112, sixth
paragraph, which states that an element in a claim for a combination may be
expressed as a "means or step" for performing a function and will be construed
to cover the corresponding "structure, material, or acts described in the
specification and equivalents thereof." "Structure" and "material" indicate
tangible things made of matter, not energy.
By Appellant’s admission, claims 35. 37, and 38, include intangible
embodiments that do not have any tangible physical structure or substance and
do not fit the definition of a "manufacture" which requires a tangible object.
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My conclusion that a "signal" does not fit within any of the four
categories of § 101 is consistent with In re Bonczyk, 10 Fed. Appx. 908 (Fed.
Cir. 2001) (unpublished) ("fabricated energy structure" does not correspond to
any statutory category of subject matter and it is unnecessary to reach the
alternate ground of affirmance that the subject matter lacks practical utility) and
with the Interim Guidelines for Examination of Patent Applications for Patent
Subject Matter Eligibility, 1300 Off. Gaz. Patent and Trademark Off. (O.G.)
142, 152 (Nov. 22, 2005), in the section entitled "Electro-Magnetic Signals."
C. CONCURRENCE
Upon consideration of the record, and for the reasons given I agree, the
decision of the Examiner rejecting claims 35, 37, and 38 under 35 U.S.C. § 101
for failing to recite statutory subject matter is affirmed.
AFFIRMED
)
) BOARD OF PATENT
)
ALLEN R. MacDONALD ) APPEALS AND
Administrative Patent Judge )
) INTERFERENCES
)

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