Ex Parte Clarke et al

Patent Trial and Appeal Board

Nov 9, 2017

11421250 (P.T.A.B. Nov. 9, 2017)

United States Patent and Trademark Office
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O.Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
11/421,250 05/31/2006 Adam R. Clarke RSW920050210US1 2306
(578U)
46320 7590
CRGO LAW
STEVEN M. GREENBERG
7900 Glades Road
SUITE 520
BOCA RATON, EL 33434
EXAMINER
MUELLER, KURT A
ART UNIT PAPER NUMBER
2157
NOTIFICATION DATE DELIVERY MODE
11/14/2017 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
docketing@crgolaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ADAM R. CLARKE, MATTHEW J. HICKS,
and JOSEPH J. KUBIK
Appeal 2017-002636
Application 11/421,2501
Technology Center 2100
Before MAHSHID D. SAADAT, THU A. DANG, and
JASON J. CHUNG, Administrative Patent Judges.
CHUNG, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a) of the Final
Rejection of claims 21, 23, 24, 26, 31, 33, 34, and 36.2 We have jurisdiction
under 35 U.S.C. § 6(b).
We affirm.
INVENTION
The invention is directed to an efficient transfer of large amounts of
data using a service data object (SDO). Spec. 12. Claim 21 is illustrative of
the invention and is reproduced below:
1 According to Appellants, the real party in interest is International Business
Machines Corp. App. Br. 2.
2 Claims 1—20, 22, 25, 27—30, 32, 35, 37-40 have been cancelled. App. Br.
11-14.
Appeal 2017-002636
Application 11/421,250
21. A computer-implemented method for data
streaming a document including metadata and a content body and
having an in-memory model architecture to a repository,
comprising:
providing a computer hardware device having a processor
and a memory, the processor being configured to perform:
creating a data type as a pointer to the content body
of the document;
attaching the created data type to the metadata; and
data streaming the document to the repository by
reading into the memory of the computer hardware device
the metadata including the created data type, while
excluding the content body from the memory.
REJECTIONS AT ISSUE3
Claims 31 and 36 stand rejected under 35 U.S.C. § 101 as being
directed to non-statutory subject matter. Final Act. 7.
Claims 21, 23, 24, 26, 31—34, and 36 stand rejected under 35 U.S.C.
§ 102(b) as being anticipated by Gelemter (U.S. Patent App. Pub. No.
2004/0139396 Al; published July 15, 2004) (hereinafter, “Gelemter”).
Final Act. 7—11.
3 We have decided the Appeal before us, however, in the event of further
prosecution, we leave it up to the Examiner to also evaluate dependent
claims 33 and 34 in light of Ex parte Mewherter, 107 USPQ2d 1857 (PTAB
2013) (precedential) (“Mewherter”) and Subject Matter Eligibility of
Computer Readable Media, 1351 Off. Gaz. Pat. Office 212 (Feb. 23,
2010). In addition, we note Appellants’ Specification states “memory 110..
. can comprise any combination of various types of data storage and/or
transmission media” and “computer-readable/usable medium can comprise .
. . a data signal (e.g., a propagated signal) traveling over a network (e.g.,
during a wired/wireless electronic distribution of the program code.” Spec.
1143,48.
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Application 11/421,250
ANALYSIS
Rejection of Claims 31 and 36 under 35 U.S.C. § 101
The Examiner refers to paragraph 43 of the Specification, which states
“memory 110... can comprise any combination of various types of data
storage and/or transmission media” and paragraph 48 of the Specification,
which states a “computer-readable/usable medium can comprise ... a data
signal (e.g., a propagated signal) traveling over a network (e.g., during a
wired/wireless electronic distribution of the program code.” Final Act. 2—3,
7; Ans. 2—3. The Examiner finds the aforementioned disclosure in
paragraphs 43 and 48 of the Specification support a broadest reasonable
construction of “storage memory device” (claims 31 and 36) being a signal.
Final Act. 7; Ans. 2—3.
Appellants argue a reasonable interpretation of “device” is a physical,
tangible object and paragraphs 42 through 46 of the Specification lacks any
mention of “device” being a “signal.” App. Br. 3^4; Reply Br. 2—5.
Moreover, Appellants argue memory Figure 6 illustrates memory element
110 as a physical computer system without any reference to a signal. App.
Br. 4—5. Appellants also argue In reNuijten, 84 USPQ2d 1495 (Fed. Cir.
2007) does not provide that: (1) a physical device storing program code is a
signal; and (2) that a physical device storing program code is not patentable.
App. Br. 4. We disagree with Appellants.
At the outset, in the precedential Mewherter Decision, the Board held
that a recited machine-readable storage medium was ineligible under § 101
since it included transitory signals. Mewherter, slip op. at 4—14 (PTAB
2013). Notably, the Specification was silent regarding the nature of medium
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Application 11/421,250
and the ordinary and customary meaning of the term “storage” did not
exclude transitory media (e.g., signals). Id.
Similarly, in the present case, claims 31 and 36 recite a “storage
memory device.” Also significant is the Specification’s disclosure of
“memory 110... can comprise any combination of various types of data
storage and/or transmission media” and “computer-readable/usable
medium can comprise ... a data signal (e.g., a propagated signal)
traveling over a network (e.g., during a wired/wireless electronic distribution
of the program code.” Spec. Tflf 43, 48 (emphases added). Therefore, we
sustain the Examiner’s finding that claim 31 and 36’s “computer-readable
storage memory device” encompasses a signal based on: (1) our
precedential Decision in Mewherter, (2) paragraphs 43 and 48 of the
Specification support a broadest reasonable construction of “computer-
readable storage memory device” (claims 31 and 36) being a signal.
Accordingly, for the reasons stated supra, we sustain the Examiner’s
rejection of claims 31 and 36 under 35 U.S.C. § 101.
Rejection of Claims 31 and 36 under 35 U.S.C. § 102(b)
The Examiner finds Gelemter’s standard document object model
being a document shell or wrapper of the underlying full document that
contains metadata discloses claim 21 and claim 31 ’s limitation “attaching
the created data type to the metadata.” Final Act. 8, 10. In addition, the
Examiner finds claims 21 and 31 do not recite “‘a pointer to meta-data in the
document attached to the very same document.’” Ans. 3.
Appellants argue Gelemter fails to disclose “attaching of a pointer to
meta data of a document in the document itself.” App. Br. 10. Appellants
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Application 11/421,250
also argue Gelemter fails to disclose an “attachment of a pointer to meta­
data for the document within the document itself.” Id. Appellants argue the
Examiner’s conclusion is flawed because it is based on an incorrect premise;
that is, the Examiner states claims 21 and 31 recite ‘“creating a data type as
a pointer to a document.’” Reply Br. 6—7. Moreover, Appellants argue
“‘creating a data type as a pointer to a document’” is not recited in the
claims. Id. We disagree with Appellants.
At the outset, “[A]ppellant[s’] arguments fail from the outset because .
. . they are not based on limitations appearing in the claims.” See In re Self,
671 F.2d at 1348 (CCPA 1982). Furthermore, we disagree with Appellants
that the claims require “attaching of a pointer to meta data of a document in
the document itself’ and “attachment of a pointer to meta-data for the
document within the document itself’; this language is not recited in claims
21 and 31. App. Br. 10.
The cited portions of Gelemter relied upon by the Examiner disclose a
standard document object model is a document shell or wrapper of the
underlying full document that contains metadata (Final Act. 8, 10 (citing
Gelemter || 84, 129, 131)), which discloses “attaching the created data type
to the metadata” recited in claims 21 and 31. Regardless of whether the
Examiner misquoted claim 21 and 3l’s language, as Appellants urge us to
consider (Reply Br. 6—7), this is not fatal to the Examiner’s rejection, which
we find to be a sufficient disclosure of claim 21 and 3 l’s limitation argued
by Appellants. Final Act. 8, 10 (citing Gelemter || 84, 129, 131).
Accordingly, for the reasons stated supra, we sustain the Examiner’s
rejection of: (1) claims 21 and 31 under 35 U.S.C. § 102 (b); and
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Application 11/421,250
(2) dependent claims 23, 24, 26, 32—34, and 36, which depend from one of
independent claims 21 and 31.
DECISION
The Examiner’s decision rejecting claims 31 and 36 under 35 U.S.C.
§ 101 is affirmed.
The Examiner’s decision rejecting claims 21, 23, 24, 26, 31—34, and
36 under 35 U.S.C. § 102(b) 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)(l)(iv).
AFFIRMED
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