Ex Parte Chessell et al

Patent Trial and Appeal Board

Jan 31, 2018

13356571 (P.T.A.B. Jan. 31, 2018)

United States Patent and Trademark Office
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
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Alexandria, Virginia 22313-1450
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APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
13/356,571 01/23/2012 Amanda E. Chessell GB920110055US1 (749) 3695
46320 7590
CRGO LAW
STEVEN M. GREENBERG
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EXAMINER
OFORI-AWUAH, MAAME
ART UNIT PAPER NUMBER
3629
NOTIFICATION DATE DELIVERY MODE
02/02/2018 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
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PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte AMANDA E. CHESSELL and KAMORUDEEN L. YUSUF
Appeal 2016-005402
Application 13/356,5711
Technology Center 3600
Before JOHN A. EVANS, JAMES W. DEJMEK, and
STEVEN M. AMUNDSON, Administrative Patent Judges.
EVANS, Administrative Patent Judge.
DECISION ON REQUEST FOR REHEARING
1 The Appeal Brief identifies International Business Machines Corporation
as the real party in interest. App. Br. 2.
Appeal 2016-005402
Application 13/356,571
INTRODUCTION
Appellants request rehearing of the Patent Trial and Appeal Board’s
(“Board”) Decision mailed October 25, 2017 (“Decision”), in which we
AFFIRMED the rejection of Claims 6—15 under 35 U.S.C. § 101 as being
directed to unpatentable subject matter.2
ANALYSIS
In the Request for Rehearing (filed December 26, 2017, “Request” or
“Req.”), Appellants allege that the Board misapprehended or overlooked
certain arguments so as to consider their claims as directed to unpatentable
subject matter. Req. 2—5. We disagree.
Claims 11-15: Computer Readable Storage Medium
Independent Claim 11 recites, inter alia, “[a] computer readable
[storage] medium comprising computer executable instructions.” The
Examiner interprets this limitation as including “a computer data signal
embedded in a digital data stream (carrier wave).” Final Act. 2—3. The
Examiner finds Appellants’ definition of “a computer readable storage
medium” encompasses “<2 signal.” Ans. 13—14 (citing Spec., 127).
Appellants merely argue that Claim 11 recites a “computer readable
storage medium that includes a memory device that has computer readable
program code embodied therewith.”
2 Our Decision to REVERSE the rejections of Claims 6—15 under 35 U.S.C.
§§102 and 103 is not a subject of the present re-hearing.
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Application 13/356,571
Appellants fail to draw to our attention any intrinsic evidence, or
relevant case law, that would exclude from the claimed “computer readable
storage medium” a transient, carrier-wave signal.
Appellants’ Specification merely discloses a “computer readable
storage medium may be, for example, but not limited to,” certain media, and
“specific examples (a nonexhaustive list) of the computer readable storage
medium would include” certain other media. Spec., 133 (emphases added).
Additionally, the Specification mentions program code “may also be stored
in a computer readable medium,” but the Specification does not limit the
claimed computer readable storage medium to non-transitory embodiments.
See Spec., 127.
Accordingly, the claimed “computer readable storage medium” is not
limited to a non-transitory embodiment. Similarly, the Board in Mewherter
did “not find any limitation on the form of the ‘machine-readable storage
medium’ in Appellants’ Specification.” Ex parte Mewherter, 107USPQ2d
1857, 1859 (PTAB 2013) (precedential). Absent such express limitation on
the claimed “computer readable storage medium,” the relevant body of
extrinsic evidence compels a finding that “the ordinary and customary
meaning of ‘computer readable storage medium’ to a person of ordinary skill
in the art [is] broad enough to encompass both non-transitory and transitory
media.” Id. at 1860.
For the reasons discussed supra, we are not persuaded the Examiner
erred in rejecting Claims 11—15 as non-statutory. Moreover, we are not
persuaded that we may have overlooked or misapprehended Appellants’
arguments in this regard.
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Appeal 2016-005402
Application 13/356,571
Claims 6-15: Abstract Ideas
Incorporation by reference.
Appellants contend that in “the Reply Brief and the Appeal Brief,
Appellants demonstrated that Applicants’ claims specify with particularity
exactly how the abstract concept of modeling and validating a user process
is achieved without foreclosing all possible methodologies for achieving the
abstract concept of modeling and validating a user process.” Req. 4.
Appellants argue that their prior briefs, “in line with the jurisprudence of
[Federal Circuit case law],. . . concluded that Appellants’ claims specified
with particularity exactly how the abstract concept of modeling and
validating a user process is achieved without foreclosing all possible
methodologies for achieving the abstract concept of modeling and validating
a user process.” Id.
Appellants do not set forth their supporting arguments, but merely
invite our perusal of prior submissions. An invitation we decline. “A brief
must make all arguments accessible to the judges, rather than ask them to
play archaeologist with the record.” Corning Inc. v. Danjou’s DSMIP
Assets B. V, Case No. IPR2013-00043, Paper No. 95 at 12, n.3 (PTAB May
1, 2014) (citing DeSilva v. DiLeonardi, 181 F.3d 865, 866—67 (7th Cir.
1999)). The MPEP provides:
The mere filing of a document entitled as [an appeal] brief will
not necessarily be considered to be in compliance with 37 CFR
41.37(c). The rule requires that the brief must set forth
arguments and the basis therefor, with citations of the statutes,
regulations, authorities and parts of the record relied upon. It is
essential that the Board be provided with a brief fully stating
the position of the appellant with respect to each ground of
rejection presented for review in the appeal so that no search of
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Appeal 2016-005402
Application 13/356,571
the Record is required in order to determine that position.
Thus, the brief should not incorporate or reference previous
responses.
MPEP § 1205.02. “Accordingly, we will not consider arguments that are not
made in the [Request], but are instead incorporated by reference.” Cisco
Sys., Inc. v. C-Cation Techs., LLC, IPR2014-00454, slip op. 10 (PTAB, Aug.
29, 2014) (informative).
Federal Circuit Jurisprudence.
Appellants contend that our Decision elected not to address the
jurisprudence including: DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d
1245, 1258 (Fed. Cir. 2014); Internet Patents Corp. v. Active Network, Inc.,
790 F.3d 1343 (Fed. Cir. 2015); and Intellectual Ventures I LLC v. Capital
One Bank (USA), 792 F.3d 1363 (Fed. Cir. 2015). Req. 4.
As noted by Appellants (see id.), we were not persuaded by
Appellants’ arguments because we found “nothing in the claim recitation
that, facially, explains how the validating step is performed.” Decision 7.
The Request cites Federal Circuit case law, but without any analysis to
explain how the adjudicated claims are similar to the claims at issue. It is
not the case that the Board has ignored precedent. Rather, Appellants have
failed to show which precedent is relevant and how that precedent may
apply.3 See Req. 4—5. The Request fails to direct our attention to where the
required specificity may be found in either the claims or the Specification.
3 The issue is not that the Federal Circuit has held various claims to recite
eligible subject matter under 35 U.S.C. § 101. As Appellants are
undoubtedly aware, a far larger body of Federal Circuit jurisprudence has
found other claims fail to recite eligible subject matter. The burden is on
Appellants, not the Board, to show how their claims distinguish the body of
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Application 13/356,571
DECISION
Accordingly, we have granted Appellants’ Request to the extent that
we have reconsidered the original Decision but have DENIED it with respect
to making any changes to the Decision.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv).
REHEARING DENIED
Federal Circuit case law. See In re Jung, 637 F.3d 1356, 1365 (Fed. Cir
2011).
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