Ex Parte Celi et alDownload PDFPatent Trial and Appeal BoardJul 29, 201310999413 (P.T.A.B. Jul. 29, 2013) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE 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. 10/999,413 11/30/2004 Joseph Celi BOC920040053US1 (041) 4193 46322 7590 07/30/2013 CAREY, RODRIGUEZ, GREENBERG & O''''KEEFE, LLP STEVEN M. GREENBERG 7900 Glades Road SUITE 520 BOCA RATON, FL 33487 EXAMINER SURVILLO, OLEG ART UNIT PAPER NUMBER 2442 MAIL DATE DELIVERY MODE 07/30/2013 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 JOSEPH CELI, CHARLES W. CROSS, BRETT J. GAVAGNI, PETER J. GUASTI, and PEEYUSH JAISWAL ____________ Appeal 2012-009363 Application 10/999,413 Technology Center 2400 ____________ Before JEAN R. HOMERE, ST. JOHN COURTENAY III, and THU A. DANG, Administrative Patent Judges. COURTENAY, Administrative Patent Judge. DECISION ON APPEAL Appeal 2012-009363 Application 10/999,413 2 STATEMENT OF THE CASE The Patent Examiner finally rejected claims 1-17. Appellants appeal therefrom under 35 U.S.C. § 134(a). We have jurisdiction under 35 U.S.C. § 6(b). We affirm. INVENTION This invention relates to transmission of real time data over a computer communications network. More particularly, Appellants’ invention is directed to managing unreliable connections when transferring real time data over a computer communications network. (Spec. 1). Claim 1, reproduced below, is representative of the claimed subject matter: 1. A real time data exchange suspension method comprising the steps of: [a] detecting a network outage condition affecting a real time data exchange over a single connection in a computer communications network; [b] selectively suspending but not terminating said real time data exchange over the single connection in the computer communications network; and, [c] resuming said real time data exchange over the single connection in the computer communications network when said network outage condition has been alleviated. (Disputed limitations emphasized). The Examiner relies on the following prior art references as evidence of unpatentability: Ahuja US 5,752,185 May 12, 1998 Celi US 2002/0150082 A1 Oct. 17, 2002 Burmeister US 2003/0156550 A1 Aug. 21, 2003 Appeal 2012-009363 Application 10/999,413 3 REJECTIONS R1. Claims 8-17 stand rejected under 35 U.S.C. §101 as being directed to non-statutory subject matter. R2. Claims 1, 2, 5, 6, 11, 12, 15, and 16 stand rejected under 35 U.S.C. § 102(b) as being anticipated by Ahuja. R3. Claims 3, 4, 7-9, 13, 14, and 17 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over the combination of Ahuja and Celi. R4. Claim 10 stands rejected under 35 U.S.C. § 103(a) as being unpatentable over the combination of Ahuja, Celi, and Burmeister. PRIOR DECISION Appeal No. 2009-006879 (Application No. 10/999,413), mailed Jan. 31, 2011. (Examiner Affirmed). ANALYSIS R1. REJECTION UNDER § 101 A. CLAIM 8 Issue: Under §101, did the Examiner err in concluding that claim 8, which recites "[a] real time data exchange system configured to . . . a computer readable medium in a data processing system," is unpatentable as being directed to nonstatutory subject matter? (Emphasis added). Claim 8 recites: 8. A real time data exchange system configured to selectively suspend a real time data exchange responsive to network outages, the system comprising: Appeal 2012-009363 Application 10/999,413 4 a real time streaming engine disposed in a computer readable medium in a data processing system . . . (Claim 8). We agree with the Examiner’s broader construction, i.e., the claimed "real time data exchange system" and "computer readable medium in a data processing system" of claim 8 cover both statutory embodiments and non- statutory embodiments (optical and RF signals, carrier waves, and the like), because Appellants' Specification does not limit the terms to statutory subject matter by an express definition or disclaimer. We also adopt the Examiner’s responsive arguments as our own. (Ans. 15-17). Our reviewing court guides that “[t]he four categories [of § 101] together describe the exclusive reach of patentable subject matter. If a 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). See also the February 23, 2010 “Subject Matter Eligibility of Computer Readable Media” policy statement by former USPTO Director David J. Kappos, as published in the Official Gazette of the United States Patent and Trademark Office (USPTO).1 The aforementioned USPTO policy statement states: 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 transitory propagating signals per se in view of the ordinary and customary meaning of 1 1351 Off. Gaz. Pat. Office 212 (Feb. 23, 2010) (Italics added), available at http://www.uspto.gov/web/offices/com/sol/og/2010/week08/TOC.htm#ref20 Appeal 2012-009363 Application 10/999,413 5 computer readable media, particularly when the specification is silent. (Emphasis added). As set forth in the aforementioned USPTO guidance, a claim drawn to 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. (Id.). However, in considering Appellants’ unamended claim 8, we are constrained by the record and guided by the aforementioned USPTO policy memorandum under agency authority. Appellants also fail to cite to an express definition or disclaimer in the Specification limiting "computer readable media" to non-transitory tangible media. Therefore, we conclude the broadest reasonable interpretation of claim 8's "computer readable media" also covers non-statutory transitory propagating signals. See n.1 supra ("Subject Matter Eligibility of Computer Readable Media" policy statement). Regarding "a data processing system" and "[a] real time data exchange system," Appellants' contention that the "data processing system" "could be a general purpose computer" (emphasis added) is not persuasive because the "system[s]" could consist of non-statutory software per se embodiments. (App. Br. 8; ¶ [0024]). Appellants' cited section of the Specification does not define2 "a data processing system" as being limited to a general purpose computer. (¶ [0024]). 2 Any special meaning assigned to a term "must be sufficiently clear in the specification that any departure from common usage would be so understood Appeal 2012-009363 Application 10/999,413 6 Moreover, Appellants' Specification expressly discloses "[t]he present invention can be realized in hardware, software, or a combination of hardware and software." (Emphasis added; Spec.¶[0023]) Thus, Appellants' "real time data exchange system" and "data processing system" also broadly cover non-statutory software per se embodiments. For these reasons, we sustain the Examiner’s § 101 rejection R1 of claim 8 and of claims 9 and 10, which depend from and incorporate the limitations of claim 8. B. CLAIM 11 Issue: Under §101, did the Examiner err in concluding that claim 11, which recites "a machine readable storage," is unpatentable as being directed to nonstatutory subject matter? We agree with the Examiner that the scope of the recited “machine readable storage” encompasses transitory media (Ans. 6; claim 11), such as signals or carrier waves, where, as here, the Specification does not limit the machine readable storage to non-transitory forms. Accord Ex parte Mewherter, No. 2012-007692 (PTAB May 8, 2013) (expanded panel) (holding recited machine-readable storage medium ineligible under § 101 since it encompasses transitory media). Therefore, we sustain the by a person of experience in the field of the invention." Multiform Desiccants Inc. v. Medzam Ltd., 133 F.3d 1473, 1477 (Fed. Cir. 1998); see also Helmsderfer v. Bobrick Washroom Equip., Inc., 527 F.3d 1379, 1381 (Fed. Cir. 2008) ("A patentee may act as its own lexicographer and assign to a term a unique definition that is different from its ordinary and customary meaning; however, a patentee must clearly express that intent in the written description."). Appeal 2012-009363 Application 10/999,413 7 Examiner’s rejection R1 of representative claim 11, and associated dependent claims 12-17 under § 101. (Ans. 6-8). R2. REJECTION UNDER § 102 Issue: Does Ahuja disclose "selectively suspending but not terminating said real time data exchange over the single connection . . . " within the meaning of claim 1, and commensurate limitation of claim11? Appellants contend the claimed "single connection" is comprised of "linear point-to-point segments connecting one device to another." (App. Br. 16). Appellants further contend "Ahuja is clear that an ‘initial end-to- end communications link’ is established and subsequently, a ‘new end-to- end communications link’ is established." (Id.). Appellants conclude that "while the claim language of Appellants' claims 1 and 11 require the suspension of communications to occur over the single communications link, in Ahuja the communications link is not suspended but terminated over one link and reinitiated over another, different link." (App. Br. 16-17). Appellants' contentions are not persuasive. Appellants' contention that a "single connection" is "linear point-to-point segments connecting one device to another" is not commensurate with the broader scope of the claims. Specifically, the claims do not limit the "single connection" to a static path of point-to-point segments because "single connection" is not defined in the Specification. (App. Br. 16-17). We also agree with the Examiner's broad but reasonable interpretation of the claim term "single connection" as including an "end-to-end connection between two end devices." (Ans. 18; 19-21). As such, we agree that the broadest reasonable interpretation of "single connection" Appeal 2012-009363 Application 10/999,413 8 encompasses Ahuja's phone call between a cell phone and a landline phone, where real time data is exchanged over the call in the computer communications network. (Id.). The Examiner finds, and we agree, that Ahuja discloses the limitations at issue, where Ahuja puts the call on hold (suspends, not terminates, the single connection), while the wireless segment is restored. (Ans. 20; Ahuja col. 4, ll. 40-67). Ahuja resumes the call ("resumes the real time data exchange over the single connection") when the wireless segment is restored. (Ans. 19-20). The call ("single connection") can be resumed over the network over different segments. (Ans. 19-20). The Examiner's claim interpretation is consistent with the Specification. (Spec. ¶ [0022]). Specifically, the Specification ¶ [0022] describes a communication linkage that is suspended (call on hold) when a remote network outage occurs (e.g., wireless segment down). Set up parameters are exchanged3 (call off hold), to restore the communicative linkage when the remote network is back up (e.g., wireless segment back up). (Spec. ¶ [0022]). Appellants fail to rebut the Examiner specific findings by filing a Reply Brief. For these reasons, on this record, we are not persuaded of Examiner error. We sustain the rejection R2 of claim 1 and of claim 11, which recites commensurate limitations. 3 We conclude the claimed "resuming ... single connection" broadly covers redialing a phone number as Appellants’ Specification ¶ [0022] describes restoring the communication linkage by exchanging new set up parameters (e.g., dialing a phone number). Appeal 2012-009363 Application 10/999,413 9 R3. REJECTION UNDER § 103 A. CLAIM 8 Regarding the obviousness rejection R3 of independent claim 8, Appellants argue that independent claim 8 is patentable for the reasons argued regarding claims 1 and 11. (App. Br. 18). Appellants also contend that the additionally cited reference “Celi” does not cure the deficiencies of the rejections of claims 1 and 8. However, we find no defects regarding Ahuja for the reasons discussed above. Therefore, we sustain the Examiner's § 103 rejection of claim 8. R2-R4. REMAINING CLAIMS Although Appellants present nominal separate arguments for rejected claims not addressed above, we affirm the Examiner's rejections of all rejected claims under rejections R2-R4 for the reasons set forth by the Examiner in the Answer and for the reasons discussed above regarding commensurate limitations and issues. DECISION We affirm the Examiner's rejection R1 of claims 8-17 under § 101. We affirm the Examiner's rejection R2 of claims 1, 2, 5, 6, 11, 12, 15, and 16 under §102. We affirm the Examiner's rejections R3-R4 of claims 3, 4, 7-10, 13, 14, and 17 under § 103. No time period for taking any action connected with this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED Appeal 2012-009363 Application 10/999,413 10 tkl Copy with citationCopy as parenthetical citation