Ex Parte Cheston et al

Patent Trial and Appeal Board

Mar 4, 2014

11950755 (P.T.A.B. Mar. 4, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte RICHARD W. CHESTON, MICHAEL T. VANOVER,
and STEVEN R. WELCH
____________

Appeal 2011-009506
Application 11/950,755
Technology Center 2400
____________

Before JEAN R. HOMERE, JOHN A. EVANS, and
CATHERINE SHIANG, Administrative Patent Judges.

SHIANG, Administrative Patent Judge.

DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 9 and 11-21. We have jurisdiction under 35 U.S.C. §
6(b). We affirm.
In reaching the decision, we have considered only the arguments that
Appellants actually raised. Arguments that Appellants did not make are
deemed to be waived. See 37 C.F.R. § 41.37(c)(1)(vii) (2010).

Appeal 2011-009506
Application 11/950,755

2
STATEMENT OF THE CASE
The present invention relates to computing devices. See generally
Spec. 1. Claim 9 is exemplary:
9. A service comprising:
maintaining a count of a number of failed log on attempts;
making the count available to a secondary computer operating system
(O.S.), the secondary O.S. being a different O.S. than a primary O.S. used by
a computer associated with the log on attempts; and
based at least in part on the relationship of the count with a threshold,
using the secondary O.S., selectively generating a password reset signal.

THE REJECTIONS1
Claims 9 and 11-21 are rejected under the judicially created doctrine
of obviousness-type double patenting as unpatentable over claims 1-10 of
U.S. Patent No. 7,383,575.
Claim 12 is rejected under 35 U.S.C. § 101 as directed to non-
statutory subject matter.
Claims 9, 11, and 12 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Cagle (US 6,871,286 B1) and Nicholson (US
2004/0153724 A1).
Claims 13-15 and 21 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Harrington (US 2002/0065913 A1), Cagle, and Nicholson.
Claims 16-20 are rejected under 35 U.S.C. § 103(a) as unpatentable
over Harrington, Cagle, Nicholson, and Banes (US 2003/0182584 A1).

1 The Examiner withdrew the indefiniteness rejection (Ans. 3).
Appeal 2011-009506
Application 11/950,755

3
ISSUES
1. Under 35 U.S.C. § 101, has the Examiner erred by concluding claim 12 is
directed to non-statutory subject matter?
2. Under 35 U.S.C. § 103, has the Examiner erred by finding Cagle and
Nicholson collectively teach
“maintaining a count of a number of failed log on attempts;
making the count available to a secondary computer operating system
(O.S.)”
as recited in claim 9?
3. Under 35 U.S.C. § 103, has the Examiner erred by finding Harrington
and Nicholson collectively teach a primary operating system and a
secondary operating system both residing on the same computer as
required by claim 13?

ANALYSIS
THE DOUBLE PATENTING REJECTION
Because Appellants fail to respond to the Examiner’s rejection, we
summarily sustain the Examiner’s rejection of claims 9 and 11-21 under the
judicially created doctrine of obviousness-type double patenting.

THE REJECTION UNDER 35 U.S.C. § 101
Issue 1
On this record, we find no error in the Examiner’s rejection of claim
12.
Appeal 2011-009506
Application 11/950,755

4
Claim 12 recites “a computer readable medium.” The Specification
does not assign any special meaning to the term “a computer readable
medium,” and Appellants do not argue the term has a special meaning.
In Ex parte Mewherter, 107 USPQ2d 1857 (PTAB 2013)
(precedential), in light of the Specification’s silence, the Board relied on
extrinsic evidence and held that:
[T]hose of ordinary skill in the art would understand the claim
term “machine-readable storage medium” would include signals
per se. Further, where, as here, the broadest reasonable
interpretations of all the claims each covers a signal per se, the
claims must be rejected under 35 U.S.C. § 101 as covering
non-statutory subject matter. See In re Nuijten, 500 F.3d 1346,
1356-57 (Fed. Cir. 2007) (transitory embodiments are not
directed to statutory subject matter); Subject Matter Eligibility
of Computer-Readable Media, supra; U.S. Patent & Trademark
Office, Interim Examination Instructions for Evaluating Subject
Matter Eligibility Under 35 U.S.C. § 101, Aug. 24, 2009; p. 2,
available at
http://www.uspto.gov/web/offices/pac/dapp/opla/2009-08-
25_interim_101_ instructions.pdf; U.S. Patent & Trademark
Office, Evaluating Subject Matter Eligibility Under 35 USC
§ 101 (August 2012 Update); pp. 11-14, available at
http://www.uspto.gov/patents/law/exam/101_training_aug2012.
pdf.

Id. at 13-14. The Board noted “[t]he term ‘machine-readable medium’ is
equivalent to the more commonly used term ‘computer-readable medium.’”
Id. at 4 n.2. The Board also rejected the contention that a machine-readable
storage medium is distinguishable from a machine-readable medium with
respect to the 35 U.S.C. § 101 analysis. See id. at 4, 6.
Appellants have not persuaded us the claimed computer readable
medium necessarily excludes transitory media from the scope of the term.
Appeal 2011-009506
Application 11/950,755

5
See App. Br. 4-5; Reply Br. 1-2. Therefore, the Examiner correctly
concludes the broadest reasonable interpretation of the term “a computer
readable medium,” according to its ordinary and customary meaning to a
person of ordinary skill in the art, encompasses nonstatutory subject matter.
See Ans. 13-14.
We note Appellants are not precluded from amending the claim to
overcome the rejection. Relevant guidance is in U.S. Patent & Trademark
Office, Subject Matter Eligibility of Computer Readable Media, 1351 Off.
Gaz. Pat. Office 212 (Feb. 23, 2010) (“A claim drawn to such 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.”); U.S. Patent & Trademark Office,
Evaluating Subject Matter Eligibility Under 35 USC § 101 (August 2012
Update) pp. 11-14, available at
http://www.uspto.gov/patents/law/exam/101_training_aug2012.pdf (noting
that while “non-transitory” is a viable option for overcoming the
presumption that the media encompass signals or carrier waves, merely
indicating that such media are “physical” or “tangible” will not overcome
such presumption).
Accordingly, we sustain the Examiner’s rejection of claim 12 under
35 U.S.C. § 101 as being directed to non-statutory subject matter.

Appeal 2011-009506
Application 11/950,755

6
THE OBVIOUSNESS REJECTIONS
Claims 9 and 11-12
Issue 2
On this record, we find the Examiner did not err in rejecting claim 9.
Appellants assert Cagle does not send the count of failed login
attempts because it sends a password reset signal instead. See App. Br. 5;
Reply Br. 2. Appellants contend Nicholson does not teach maintaining a
count of a number of failed log on attempts, or making the count available to
a secondary O.S. See App. Br. 6; Reply Br. 2. Appellants argue password
resetting is not an established function of Nicholson, and combining
Nicholson with Cagle would result in a strange hybrid—not predicable use
of prior art elements. See App. Br. 6; Reply Br. 2.
We disagree with Appellants’ arguments (App. Br. 5-6; Reply Br. 2),
and agree with the Examiner’s conclusions. We adopt the Examiner’s
reasoning and findings on pages 15-16 of the Answer as our own. We limit
our discussions to the following points of emphasis. The Examiner correctly
finds Cagle teaches maintaining a count of a number of failed log on
attempts. See Ans. 15; Cagle 6:21-26 (“if a user attempts to login as the
administrator a predetermined number of times (e.g., 3) . . . .”). Nicholson
teaches after a certain number of failed attempts, the BIOS access the
secondary O.S. to boot the server. See Ans. 15; Nicholas, ¶ 32; Fig. 4.
Therefore, one skilled in the art would have found Nicholson teaches
“making [a record] available to a secondary computer operating system
(O.S.)” or at least that limitation is obvious in light of Nicholson’ teachings.
See Ans. 15. Because Cagle teaches “a count of a number of failed log on
attempts,” Cagle and Nicholson collectively teach making the count
Appeal 2011-009506
Application 11/950,755

7
available to a secondary computer operating system (O.S.). See Ans. 15.
Combining the teachings of Cagle and Nicholson would have predictably
used prior art elements according to their established functions—an obvious
improvement. See KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 417 (2007).
Appellants’ attack on the combination is unpersuasive because it is well
settled that “a determination of obviousness based on teachings from
multiple references does not require an actual, physical substitution of
elements.” In re Mouttet, 686 F.3d 1322, 1332 (Fed. Cir. 2012) (citations
omitted). Nor is the test for obviousness whether a secondary reference’s
features can be bodily incorporated into the structure of the primary
reference. See In re Keller, 642 F.2d 413, 425 (CCPA 1981).
Accordingly, we sustain the Examiner’s rejection of claim 9, and
claims 11 and 12 for the same reason.

Claims 13-15 and 21
Issue 3
On this record, we find the Examiner did not err in rejecting claims 13
and 21.
Appellants assert Harrington “[c]laims 13 and 21 require . . . both
O.S. reside on the same computer . . . Harrington . . . fails to suggest Claims
13 and 21 regardless of any secondary reference teaching such, since such a
modification to Harrington would render it unsuitable for its intended
purpose[.]” App. Br. 6-7; see also Reply Br. 2.
Appellants’ assertion is unpersuasive because Appellants fail to
provide any analysis—let alone show—the combination would have
rendered Harrington unsuitable for its intended purpose. We note it is well
Appeal 2011-009506
Application 11/950,755

8
settled that “a determination of obviousness based on teachings from
multiple references does not require an actual, physical substitution of
elements.” Mouttet, 686 F.3d at 1332. Nor is the test for obviousness
whether a secondary reference’s features can be bodily incorporated into the
structure of the primary reference. Keller, 642 F.2d at 425.
Accordingly, we sustain the Examiner’s rejection of claims 13 and 21,
and dependent claims 14 and 15, which Appellants do not separately argue.

Claims 16-20
Appellants argue they inherit the patentability of their base claims.
Therefore, for similar reasons discussed above, we sustain the Examiner’s
rejection of claims 16-20.

DECISION
The Examiner’s decision (1) rejecting claims 9 and 11-21 under the
judicially created doctrine of obviousness-type double patenting; (2)
rejecting claim 12 under 35 U.S.C. § 101; and (3) rejecting claims 9 and 11-
21 under 35 U.S.C. § 103(a) is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED

cdc