Ex Parte Davis et alDownload PDFPatent Trial and Appeal BoardNov 26, 201412204928 (P.T.A.B. Nov. 26, 2014) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte ERIC JASON ERWAY and NATALIE MALASZENKO DAVIS ____________ Appeal 2012-007202 Application 12/204,928 Technology Center 2100 ____________ Before and JEFFREY S. SMITH, JOHNNY A. KUMAR, and DANIEL N. FISHMAN, Administrative Patent Judges. SMITH, Administrative Patent Judge. DECISION ON APPEAL Appeal 2012-007202 Application 12/204,928 2 STATEMENT OF THE CASE This is an appeal under 35 U.S.C. § 134(a) from the Examiner’s final rejection of claims 1–30, which are all the claims pending in the application. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. Representative Claim 1. A computer-implementable method for providing potential solutions within a solution network, comprising: authoring a potential solution to an issue having an associated symptom; storing the potential solution in a solution repository; indexing the potential solution to the associated symptom; receiving a symptom of an issue; receiving user information, system information, and diagnostics information generated by on-the-box (OTB) diagnostics running on an information handling system of a user; and searching the solution network based upon the received symptom as well as the user information, system information, and diagnostics information, the searching including accessing the solution repository. Prior Art Adams US 2003/0033387 A1 Feb. 13, 2003 Gundy US 2007/0027893 A1 Feb. 1, 2007 Hu US 2007/0150812 A1 June 28, 2007 Examiner’s Rejections Claims 11–30 stand rejected under 35 U.S.C. § 101 as directed to non–statutory subject matter. Appeal 2012-007202 Application 12/204,928 3 Claims 1–5, 11–15, and 21–25 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Gundy and Adams. Claims 6–10, 16–20, and 26–30 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Gundy, Adams, and Hu. ANALYSIS Section 101 rejection of claims 11–20 The Examiner finds claims 11–20 encompasses software per se. Ans. 4, 9. Appellants contend the means plus function limitations recited in claims 11–20 correspond to software stored in a computer memory to configure a computer system to perform functions, as discussed in paragraphs 20–21 and as shown in Figure 1 of Appellants’ Specification. Br. 3. We agree with Appellants. An applicant must disclose more than merely a general purpose computer as supporting structure for a means plus function claim. The applicant must disclose the general purpose computer and an algorithm that converts the general purpose computer to a special purpose computer performing the recited function. See MPEP 2181(II)(B) (“if there is no corresponding structure disclosed in the specification (i.e., the limitation is only supported by software and does not correspond to an algorithm and the computer or microprocessor programmed with the algorithm) . . . and the claim should be rejected under 35 U.S.C. 112, second paragraph.”) The Examiner has not persusively explained how Appellants’ Specification fails to disclose a computer programmed with algorithms for performing the recited functions of the corresponding means plus function limitations of claims 11–20. Appeal 2012-007202 Application 12/204,928 4 We do not sustain the rejection of claims 11–20 under 35 U.S.C. § 101. Section 101 rejection of claims 21–30 The Examiner finds claims 21–30 lack the necessary physical articles or objects to constitute a machine or article of manufacture. Ans. 4. Appellants contend claim 21 recites “user information, system information, and diagnostics information generated by on–the–box (OTB) diagnostics running on an information handling system of a user,” which satisfies the requirements of 35 U.S.C. § 101. Br. 3. However, claim 21 does not positively recite the information handling system of a user that generates the user, system, and diagnostics information. Rather, the user, system, and diagnostics information by themselves are positively recited in claim 21. The scope of “user information, system information, and diagnostics information generated by on-the-box (OTB) diagnostics running on an information handling system of a user” encompasses data. Appellants have not provided persuasive evidence or argument to rebut the Examiner’s finding that claim 21 is directed to non– statutory subject matter. We sustain the rejection of claims 21–30 under 35 U.S.C. § 101. Section 103 rejections of claims 1–30 We adopt the findings of fact made by the Examiner in the Final Rejection and Examiner’s Answer as our own. We concur with the conclusions reached by the Examiner in the Examiner’s Answer. We highlight the following for emphasis. Appeal 2012-007202 Application 12/204,928 5 Appellants contend the combination of Gundy and Adams does not teach “receiving user information, system information, and diagnostics information generated by on–the–box (OTB) diagnostics running on an information handling system of a user” as recited in claim 1. Br. 4. The Examiner finds paragraphs 34 and 41 of Gundy teach this limitation. Ans. 5. Appellants have not provided persuasive evidence or argument to rebut the Examiner’s finding. Appellants further contend the combination of Gundy and Adams does not teach “searching the solution network based upon the received symptom as well as the user information, system information, and diagnostics information, the searching including accessing the solution repository,” as recited in claim 1. The Examiner finds paragraph 34 of Gundy teaches this limitation. Appellants have not provided persuasive evidence or argument to rebut the Examiner’s finding. Further, Appellants’ contention that the disputed limitations are not taught by the combination of Grundy and Adams is inconsistent with entering a PowerTag to identify a solution as taught by Adams. See Abstract; ¶¶ 23, 33, 56, 62; Fig. 4. Appellants’ arguments fail to persuade us the Examiner erred. Accordingly, we sustain the rejection of claim 1 under 35 U.S.C. § 103. Appellants do not present arguments for separate patentability of claims 2– 30, which fall with claim 1. DECISION The rejection of claims 11–20 under 35 U.S.C. § 101 as directed to non–statutory subject matter is reversed. Appeal 2012-007202 Application 12/204,928 6 The rejection of claims 21–30 under 35 U.S.C. § 101 as directed to non–statutory subject matter is affirmed. The rejection of claims 1–5, 11–15, and 21–25 under 35 U.S.C. § 103(a) as unpatentable over Gundy and Adams is affirmed. The rejection of claims 6–10, 16–20, and 26–30 under 35 U.S.C. § 103(a) as unpatentable over Gundy, Adams, and Hu 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). See 37 C.F.R. § 41.50(f). AFFIRMED tkl Copy with citationCopy as parenthetical citation