Ex Parte ChangDownload PDFBoard of Patent Appeals and InterferencesJul 31, 200910299616 (B.P.A.I. Jul. 31, 2009) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES ____________________ Ex parte KEVIN K. CHANG, ____________________ Appeal 2008-004266 Application 10/299,616 Technology Center ____________________ Decided: July 31, 20091 ____________________ Before ALLEN R. MACDONALD, ST. JOHN COURTENAY III, and DEBRA K. STEPHENS, Administrative Patent Judges. STEPHENS, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellant appeals under 35 U.S.C. § 134 from a final rejection of claim 9 under 35 U.S.C. §101. We have jurisdiction under 35 U.S.C. § 6(b). 1 The two-month time period for filing an appeal or commencing a civil action, as recited in 37 C.F.R. § 1.304, begins to run from the decided date shown on this page of the decision. The time period does not run from the Mail Date (paper delivery) or Notification Date (electronic delivery). Appeal 2008-004266 Application 10/299,616 We AFFIRM. Introduction According to Appellant, the invention is directed to a data replication system and method for clustered systems (Abstract). Exemplary Claim(s) Claims 1 and 9 are exemplary claims and are reproduced below: 1. A system of replicating object data from a container instance within a clustered processing system, the system comprising: replication logic for controlling replication of object data from a container instance to one or more replica instances; and correction logic for generating correction data based on the object data and for generating code words by combining the object data and the correction data, the code words being transmittable to the one or more replica instances such that correctable errors in the object data can be corrected without re- transmission of the object data. 9. An article of manufacture embodied in a computer- readable medium for use in a computer system, the article of manufacture comprising: first computer executable instructions for causing a computer to establish a clustered system having at least one application instance for processing user requests; second computer executable instructions for causing a computer to dynamically replicate the at least one application instance to at least one replica instance on one or more remote 2 Appeal 2008-004266 Application 10/299,616 devices; third computer executable instructions for causing a computer to generate and add correction data to the at least one application instance, the correction data allowing the one or more remote devices to recover portions of the at least one application instance if received by the at least one replica instance in error. Rejections The Examiner rejected claim 9 under 35 U.S.C. § 101 as being directed to non-statutory matter. Appellant’s Contentions With respect to all claims on appeal, Appellant argues the Examiner, in using Appellant’s definition of “computer-readable medium” from the Specification, is improperly reading limitations from the Specification into the claim (App. Br. 11, §7. Argument, subsec. I.). Additionally, Appellant argues the only rationale provided by the Examiner is that, since “transmission media” is a non-tangible object, it is non-statutory subject matter (Id.). Appellant further argues the Examiner did not address the actual limitations of the claim and did not provide any reasoning, rationale, or substantive law but instead made a conclusory rejection (App. Br. 12, §7. Argument, subsec. I; App. Br. 14, §7. Argument, subsec. I.). 3 Appeal 2008-004266 Application 10/299,616 Examiner’s Response In response, the Examiner finds the claim recites “a computer readable medium,” which Appellant in his Specification defines as including “volatile media or transmission media” (Ans. 3-4, §9). The Examiner further finds Appellant’s Specification states “transmission media” could be “acoustic or light waves” which are both forms of energy (Ans. 4, §10). Therefore, the Examiner concludes “computer-readable medium” does not fall into one of the four statutory classes of invention and, as a result, is not eligible for patent protection under 35 U.S.C. §101. ISSUE Have Appellants met the burden of showing the Examiner erred in concluding an article of manufacture embodied in a computer-readable medium that includes acoustic or light waves is directed to non-statutory subject matter? FINDINGS OF FACT (FF) Appellant’s Invention (1) “Computer-readable medium" refers to any medium that participates in directly or indirectly providing signals, instructions and/or data to a processor for execution (Spec. 3-4, [0014]). Such a medium may take many forms, including, but not limited to, non-volatile media, volatile media, and transmission media (Id.). 4 Appeal 2008-004266 Application 10/299,616 (2) Transmission media can take the form of acoustic or light waves, such as those generated during radio-wave and infra-red data communications (Spec. 4, [0014]). (3) Common forms of computer-readable media include, for example, a carrier wave/pulse, or any other medium from which a computer or processor can read (Id.). (4) "Logic" includes but is not limited to hardware, firmware, software and/or combinations of each to perform a function(s) or an action(s), and/or to cause a function or action from another component (Spec. 4, [0015]). For example, based on a desired application or needs, logic may include a software controlled microprocessor, discrete logic such as an application specific integrated circuit (ASIC), or other programmed logic device (Id.). Logic may also be fully embodied as software (Id.). (5) "Signal" includes but is not limited to one or more electrical signals, analog or digital signals, a change in a signal's state (e.g. a voltage increase/drop), one or more computer instructions, messages, a bit or bit stream, or other means that can be received, transmitted, and/or detected (Spec. 4, [0016]). (6) "Software" includes but is not limited to one or more computer- readable and/or executable instructions that cause a computer or other electronic device to perform functions, actions, and/or behave in a desired manner (Spec. 4, [0017]). The instructions may be embodied in various forms such as routines, algorithms, modules or programs including separate applications or code from dynamically linked libraries (Id.). The form of software is dependent on, for example, requirements of a desired application, 5 Appeal 2008-004266 Application 10/299,616 the environment it runs on, and/or the desires of a designer/programmer or the like (Spec. 4-5, [0017]). PRINCIPLES OF LAW Claim Construction "The Patent and Trademark Office (PTO) must consider all claim limitations when determining patentability of an invention over the prior art." In re Lowry, 32 F.3d 1579, 1582 (Fed. Cir. 1994) (citing In re Gulack, 703 F.2d 1381, 1385 (Fed. Cir. 1983)). "Claims must be read in view of the specification, of which they are a part." Markman v. Westview Instruments, Inc., 52 F.3d 967, 979 (Fed. Cir. 1995) (en banc) (citations omitted). “A transitory, propagating signal . . . is not a ‘process, machine, manufacture, or composition of matter.’ Those four categories define the explicit scope and reach of subject matter patentable under 35 U.S.C. § 101.” In re Nuijten, 500 F.3d 1346, 1357 (Fed. Cir. 2007), reh’g denied en banc, 515 F.3d 1361 (Fed. Circ. 2008), cert. denied, 129 S. Ct. 70 (2008). “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.” Id. at 1354. ANALYSIS We affirm the Examiner’s rejection of independent claim 9 as being directed to non-statutory subject matter. Claim 9 recites “an article of manufacture embodied in a computer-readable medium.” Appellants define 6 Appeal 2008-004266 Application 10/299,616 “computer-readable medium” as including transmission media that can take the form of acoustic or light waves (FF 2). The recited article of manufacture is directed to a manufactured transient phenomenon as acknowledged by Appellants (App. Br. 13, ¶3). The Court of Appeals has found that a transient electric or electromagnetic transmission does not fit within the definition of “articles” of “manufacture” (In re Nuijten, 500 F.3d 1346, 1356 (Fed. Cir. 2007), reh’g denied en banc, 515 F.3d 1361 (Fed. Circ. 2008), cert. denied, 129 S. Ct. 70 (2008)). Additionally, we find the recited limitations of first, second, and third computer executable instructions do not add structure that would prohibit the recited invention from being a signal. Accordingly, we find claim 9 is directed to a signal. Therefore, we conclude the invention as recited in claim 9 is directed to non-statutory subject matter. CONCLUSION Based on the findings of facts and analysis above, we conclude Appellant has not met the burden of showing the Examiner erred in concluding an article of manufacture embodied in a computer-readable medium includes acoustic or light waves and, therefore, is directed to non- statutory subject matter. Accordingly, Appellant has not met the burden of showing the Examiner erred in rejecting claim 9 under 35 U.S.C. § 101(a) as being directed to non-statutory subject matter. 7 Appeal 2008-004266 Application 10/299,616 NEW GROUND OF REJECTION ADDITIONAL FINDINGS OF FACT (7) The illustrated elements denote "processing blocks" and represent computer software instructions or groups of instructions that cause a computer to perform an action(s) and/or to make decisions (Spec. 14, [0043]). Alternatively, the processing blocks may represent functions and/or actions performed by functionally equivalent circuits such as a digital signal processor circuit, an application specific integrated circuit (ASIC), or other logic device (Id.). (8) After instance data is configured into packets, a correction encoder/decoder logic generates one or more correction bits for each packet based on a selected correction function (Spec. 9, [0030]). (9) A transmitting node transmits data from an object, and a receiving node receives the data and creates a replica object (Spec. 14, [0044]). When an object is to be replicated, data from the object is prepared for replication that may include serializing the data and then configuring it into messages (block 305) (Id.). (A message, packet and bit are synonymous (Spec. 8-9, [0028]). 35 U.S.C. § 101: claims 10-14 Using our authority under 37 C.F.R. § 41.50(b), we reject claims 10- 14 under 35 U.S.C. § 101 as being directed to non-statutory subject matter. We conclude these claims (which are dependent upon claim 9) are directed toward non-statutory subject matter for the same reason as set forth above with respect to claim 9. 8 Appeal 2008-004266 Application 10/299,616 35 U.S.C. § 101: claims 1-8 Using our authority under 37 C.F.R. § 41.50(b), we reject claims 1-8 under 35 U.S.C. § 101 as being directed to non-statutory subject matter. Claim 1 recites a “system of replicating object data” that comprises “replication logic” and “correction logic”. Logic, as defined by Appellant in the Specification, may be entirely software (FF 4). Therefore, we find Appellant’s recited invention recites a computer program. As the MPEP explains: [C]omputer programs claimed as computer listings per se, i.e., the descriptions or expressions of the programs, are not physical "things." They are neither computer components nor statutory processes, as they are not "acts" being performed. Such claimed computer programs do not define any structural and functional interrelationships between the computer program and other claimed elements of a computer which permit the computer program's functionality to be realized. In contrast, a claimed computer-readable medium encoded with a computer program is a computer element which defines structural and functional interrelationships between the computer program and the rest of the computer which permit the computer program's functionality to be realized, and is thus statutory. See Lowry, 32 F.3d at 1583-84, 32 USPQ2d at 1035. MPEP §2106.01(1). Thus, we conclude claim 1 is directed toward non-statutory subject matter. For the same reason as set forth above, we further conclude claims 3, 4, 5, 7, 8, 25, and 26 are directed to non-statutory subject matter. None of these claims recite any structure, but instead recite further software or 9 Appeal 2008-004266 Application 10/299,616 specifics of the already recited software. Specifically, claim 3 further limits the replication logic to include a “data serializer.” Appellant’s Specification discloses a “data serializer” is software (FF 9; Fig. 3, block 305). Similarly, claim 4 further limits the correction logic to include an “encoder.” Appellant’s Specification discloses the encoding function is performed by the correction encoder/decoder logic which we find is software (FF 4 and FF 8). Claim 7 and claim 8 further limit the container instance and the object data, respectively and we find both are software. Claims 25 and 26 further limit the correction and replication logic, respectively. Again, since logic may be entirely software (FF 4), we find both claims recite software elements. Claim 5 recites the type of linear code and thus, we find recites a further limitation on the software. Accordingly, we conclude claims 3-5, 7, 8, 25, and 26 are directed to non-statutory subject matter under 35 U.S.C. § 101. 35 U.S.C. § 112, Second Paragraph Using our authority under 37 C.F.R. § 41.50(b), we reject claim 5 under 35 U.S.C. § 112, second paragraph, as being indefinite. A claim is considered indefinite if it does not reasonably apprise those skilled in the art of its scope. Amgen, Inc. v. Chugai Pharm. Co., 927 F.2d 1200, 1217 (Fed.Cir.1991) (citing Shatterproof Glass Corp. v. Libbey- Owens Ford Co., 758 F.2d 613, 624 (Fed.Cir.1985)). Claim 5 which is dependent on claim 1, recites the linear correction code is a Hamming code; 10 Appeal 2008-004266 Application 10/299,616 however, claim 1 does not recite linear correction code. Therefore, “the linear correction code” lacks an antecedent basis. As such, we would need to use speculation and conjecture to determine what is being claimed. Accordingly, we reject claim 5 under 35 U.S.C. § 112, second paragraph, as being indefinite. DECISION The Examiner’s rejection of claim 9 under 35 U.S.C. § 101 as being directed to non-statutory subject matter is affirmed. We enter new grounds of rejection as to claims 10-14 under 35 U.S.C. § 101; claims 1-5, 7, 8, 25, and 26 under 35 U.S.C. § 101; and claim 5 under 35 U.S.C. § 112, second paragraph, as being indefinite. In addition to affirming the Examiner's rejections of one or more claims, this decision contains new grounds of rejection pursuant to 37 C.F.R. § 41.50(b) (2007). 37 C.F.R. § 41.50(b) provides “[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 Appellant, 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 the appeal 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. . . . 11 Appeal 2008-004266 Application 10/299,616 (2) Request rehearing. Request that the proceeding be reheard under § 41.52 by the Board upon the same record. . . . Should Appellants elect to prosecute further before the Examiner pursuant to 37 C.F.R. § 41.50(b)(1), in order to preserve the right to seek review under 35 U.S.C. §§ 141 or 145 with respect to the affirmed rejection, the effective date of the affirmance is deferred until conclusion of the prosecution before the Examiner unless, as a mere incident to the limited prosecution, the affirmed rejection is overcome. If Appellants elect prosecution before the Examiner and this does not result in allowance of the application, abandonment or a second appeal, this case should be returned to the Board of Patent Appeals and Interferences for final action on the affirmed rejection, including any timely request for rehearing thereof. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. § 1.136(a)(1)(iv) (2007). AFFIRMED 37 C.F.R. § 41.50(b) PEB KRAGULJAC & KALNAY, LLC - ORACLE 4700 ROCKSIDE ROAD SUMMIT ONE, SUITE 510 INDEPENDENCE, OH 44131 12 Copy with citationCopy as parenthetical citation