Ex Parte Chang

Board of Patent Appeals and Interferences

Jul 31, 2009

10299616 (B.P.A.I. Jul. 31, 2009)

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