Ex Parte Clarke et al

Patent Trial and Appeal Board

Feb 5, 2018

11421250 (P.T.A.B. Feb. 5, 2018)

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
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SUITE 520
BOCA RATON, EL 33434
EXAMINER
MUELLER, KURT A
ART UNIT PAPER NUMBER
2157
NOTIFICATION DATE DELIVERY MODE
02/07/2018 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 REQUEST FOR REHEARING
Appellants filed a paper under 37 C.F.R. § 41.52 requesting
reconsideration of our November 14, 2017, Decision where we affirmed the
rejections of claims 31 and 36 under 35 U.S.C. § 101 as being directed to
non-statutory subject matter and affirmed claims 21, 23, 24, 26, 31, 33, 34,
and 36 under 35 U.S.C. § 102(b) as being anticipated over Gelemter (US
2004/0139396 Al; published July 15, 2004) (hereinafter, “Gelemter”).
Appellants specifically request Rehearing with respect to independent claims
21, 23, 24, 26, 31, 33, 34, and 36. Req. Reh’g 2-A.
1 According to Appellant, is International Business Machines Corp., the real
party in interest. App. Br. 2.
Appeal 2017-002636
Application 11/421,250
We have reconsidered the Decision in light of Appellants’ arguments
in the Request for Rehearing, but find no errors. Therefore, we do not
modify the Decision for the reasons discussed below.
ANALYSIS
35 U.S.C. § 101
Appellants argue we acknowledged, but neglected to address whether:
(1) the claimed device can be a “signal” when the claim 31 language recites
a memory device that stores computer usable program code for data
streaming a document such that the program code executes on a computer
hardware device that has a processor and a memory, and causes the
computer hardware device to perform the method of the invention (Req.
Reh’g 2—3); and (2) In re Nuijten concludes that a physical device storing
program code is a signal {Id. at 3). We disagree with Appellants.
Although we acknowledged those two arguments (see Dec. 3) as
Appellants point out (Req. Reh’g 2—3), we need not address those two
arguments because Ex parte Mewherter, 107 USPQ2d 1857 (PTAB 2013)
(precedential) (“Mewherter”) is dispositive of the 35 U.S.C. § 101 issue for
the reasons infra.
In the precedential Mewherter Decision, the Board held that a recited
machine-readable storage medium was ineligible under 35 U.S.C. § 101
since it included transitory signals. Mewherter, slip op. at 4—14 (PTAB
2013). Notably, the Specification was silent regarding the nature of medium
and the ordinary and customary meaning of the term “storage” did not
exclude transitory media (e.g., signals). Id.
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Appeal 2017-002636
Application 11/421,250
Similarly, in the present case, claims 31 and 36 recite a “storage
memory device.” Significantly, claim 31 does not recite “non-transitory.”
What is also significant is that the specification does not recite verbatim a
“computer-readable storage memory device.” See generally Spec. 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.
43, 48 (emphases added). Therefore, the broadest reasonable
interpretation of “computer-readable storage memory device” is a data signal
(e.g., a propagated signal) traveling over a wire.
Accordingly, Appellants’ contentions do not persuade us of error in
our November 14, 2017, Decision.
35 U.S.C. § 102(b)
Appellants argue we failed to address claim 21’s preamble reciting the
document includes a content body and metadata, claim 21’s requirement that
a data type is created as a pointer to the content body of the document, claim
21’s requirement that the created data type (the pointer) is attached to the
metadata, which means attaching of a pointer to the metadata of a document
in the document itself. Req. Reh’g 4. We disagree with Appellants.
Appellants’ argument fails because claim 21 (and similarly recited
claim 31) does not state explicitly or implicitly “attaching of a pointer to
meta data of a document in the document itself’ for the following reasons.
Claim 21’s preamble recites a document including a content body and
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Appeal 2017-002636
Application 11/421,250
metadata. Claim 21 requires that a data type is created as a pointer to the
content body of the document and that the created data type (i.e., the pointer)
is attached to the metadata. Because claim 2l’s preamble recites a document
includes metadata, this does not mean the attachment of a pointer to
metadata of a document is “in the document itself.” Rather, claim 21 can be
construed reasonably to state implicitly “attaching of a pointer to meta data
of a document” not necessarily in the document itself. Put another way, the
broadest reasonable interpretation of claims 21 and 31 includes an
interpretation that an attachment of a pointer to metadata of a document can
be outside of the document.
Therefore, Appellants’ contentions do not persuade us of error in our
November 14, 2017, Decision.
CONCLUSION
Appellants’ Request does not persuade us of any points we
misapprehended or overlooked in the Decision, or that we misapplied the
relevant law. For the reasons stated supra, we have granted Appellants’
request to the extent that we have reconsidered our decision, but we deny the
request with respect to making any changes therein.
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)(l)(iv).
DENIED
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