Ex Parte Cheston et alDownload PDFPatent Trial and Appeal BoardMar 4, 201411950755 (P.T.A.B. Mar. 4, 2014) Copy Citation 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 Copy with citationCopy as parenthetical citation