Ex Parte Dean

Patent Trial and Appeal Board

Apr 10, 2014

10786709 (P.T.A.B. Apr. 10, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte RICHARD F. DEAN
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Appeal 2011-009803
Application 10/786,709
Technology Center 2600
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Before DEBRA K. STEPHENS, BRADLEY W. BAUMEISTER, and
DAVID M. KOHUT, Administrative Patent Judges.

BAUMEISTER, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claim 22 under 35 U.S.C. § 101 for being directed to non-
statutory subject matter. Claim 22 reads as follows:
22. A machine-readable storage medium having instructions
encoded thereon, which, when executed by a machine that is
configured to read the encoded instructions from the machine-
readable medium, cause the machine to perform operations, the
instructions comprising:
program code to process communication signals with a
wireless communication device circuit embedded in a repeater;
program code to attempt to establish a call from the
wireless communication device circuit to a base station; and
program code to determine oscillation if the call cannot
be established.
We have jurisdiction under 35 U.S.C. § 6(b). We review the appealed
rejections for error based upon the issues identified by Appellant, and in
light of the arguments and evidence produced thereon. Cf. Ex parte Frye, 94
USPQ2d 1072, 1075 (BPAI 2010) (precedential) (citing In re Oetiker, 977
F.2d 1443, 1445 (Fed. Cir. 1992)).
We affirm.

CONTENTIONS
The Examiner finds that the claim language of “[a] machine-readable
storage medium” is broad enough to read on a transient signal, which is not
statutory subject matter. Ans. 4 (citing In re Nuijten, 500 F.3d 1346 (Fed.
Cir. 2007) for the proposition that transient signals are non-statutory subject
matter). The Examiner primarily reaches this conclusion because
Appellant’s Specification states that a storage medium may represent
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machine readable mediums for storing information, and “[t]he term
‘machine readable medium’ includes . . . wireless channels and various other
mediums capable of storing, containing or carrying instruction(s) and/or
data.” Ans. 5 (citing Spec. ¶ 13). The Examiner also notes that Appellant
could have overcome the rejection by amending claim 22’s recitation of “[a]
machine-readable medium” to include the term “non-transitory.” Ans. 4.
Appellant asserts that the Specification’s usage of the term “storage
medium” is consistent with the term’s plain meaning in the field of
electronics, and this plain meaning excludes media that carry data or
propagate signals. App. Br. 5-7. Appellant further argues that a storage
medium belongs to one or more statutory classes. App. Br. 7-9. In the
Reply Brief, Appellant reiterates that the Specification’s recitation in
paragraph 131 of “media capable of ‘storing, containing or carrying
instruction(s) and /or data’” indicates that the terms “storing” and “storage”
are distinguishable from signals, which carry data, or on which, data is
modulated. Reply Br. 2.

FINDINGS OF FACT
The record supports the following Findings of Fact (Fact) by a
preponderance of the evidence:
1. Paragraph 13 of Appellant’s Specification reads as follows:
[0013] Moreover, as disclosed herein, a storage medium
may represent one or more devices for storing data, including
read only memory (ROM), random access memory (RAM),
magnetic disk storage mediums, optical storage mediums, flash

1 We interpret Appellant’s references in the Briefs to paragraph 21 of the
Specification as intending to refer to paragraph 13.
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memory devices and/or other machine readable mediums for
storing information. The term “machine readable medium”
includes, but is not limited to portable or fixed storage devices,
optical storage devices, wireless channels and various other
mediums capable of storing, containing or carrying
instruction(s) and/or data.
2. US 6,760,587 B2; filing date: Feb. 23, 2001 (assigned to Qualcomm
Inc.) states the following:
The signal bearing media may comprise any type of
digital data storage media. An exemplary digital data storage
medium is shown in FIG. 7. Other exemplary storage media
may comprise an application specific integrated circuit (ASIC),
a digital data or optical storage device accessible by the base
station, electronic read-only memory, or other suitable signal
bearing media. . . .
US ’587, col. 12, l. 66 – col. 13, l. 4 (emphasis added).

3. US 7,734,285 B2; filing date: Apr. 3, 2001 (assigned to Qualcomm
Inc.) states the following:
In the context of FIGS. 1-3, these methods may be
implemented, for example, by operating portion(s) of the
network 200 to execute a sequence of machine-readable
instructions. These instructions may reside in various types of
signal-bearing media. This signal-bearing media may
comprise, for example, RAM (not shown) accessible by, or
residing within, the components of the network 200.
Alternatively, the instructions may be contained in another
signal-bearing media, such as a magnetic data storage diskette
(not shown). Whether contained in RAM, a diskette, or
elsewhere, the instructions may be stored on a variety of
machine-readable data storage media, such as DASD storage
(e.g., a conventional “hard drive” or a RAID array), magnetic
tape, electronic read-only memory (e.g., ROM, EPROM, or
EEPROM), an optical storage device (e.g. CD-ROM, WORM,
DVD, digital optical tape), paper “punch” cards, or other
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suitable signal-bearing media including transmission media
such as digital and analog.
US ’285, col. 12, ll. 15-32 (emphasis added).
4. US 7,924,711 B2; filing date: Oct. 20, 2004 (assigned to Qualcomm
Inc.) states the following:
Those skilled in the art will appreciate that the method
described in this specification and any associated algorithms
can be implemented in any form, ranging from code running on
a general purpose computer to dedicated circuitry, and any
combination in between. In the context of FIGS. 2-4 described
in the specification, the method may be implemented, for
example, by operating portion(s) of the wireless network (such
as the one shown in FIG. 1), such as a wireless communications
device or the server (or any other device and combination of
devices), to execute a sequence of machine-readable
instructions. The instructions can reside in various types of
signal-bearing or data storage primary, secondary, tertiary or
other levels of storage media. For example, the media may
comprise RAM (not shown) accessible by, or residing within,
the components of the wireless network. Whether contained in
RAM, a diskette, or other, secondary storage media, the
instructions may be stored on a variety of machine-readable
data storage media, such as a direct access storage device
(DASD) [e.g. a conventional hard drive or a redundant array of
inexpensive disks (RAID) array], magnetic tape, electronic
read-only memory (e.g., ROM, EPROM, or EEPROM), flash
memory cards, an optical storage device (e.g. CD-ROM,
WORM, DVD, digital optical tape), paper “punch” cards, or
other suitable data storage media including digital and
analog transmission data.
US ’711, col. 13, ll. 21-46 (emphasis added).

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ISSUE
Does Appellant’s addition of the word “storage” to the claim term
“computer readable media” serve to exclude wireless channels or signals and
thereby limit the scope of claim 22 to statutory subject matter?

ANALYSIS
We agree with the Examiner’s conclusion. An expanded PTAB panel
recently held in an appeal involving a similar issue (Ex parte Mewherter,
107 USPQ2d 1857 (PTAB 2013) (precedential)) that where Appellants’
Specification fails to define a computer-readable storage medium (or any
variants thereof), the term must be broadly and reasonably construed
according to its ordinary and customary meanings to a person of ordinary
skill in the art to encompass both non-transitory and transitory media.2 In

2 See Ex parte Mewherter, 107 USPQ2d at 1859 n.4 (“Although not binding
on this Board, we do find noteworthy that the Office recently mandated in
training to its examiners that, in such cases, a claim reciting computer-
readable storage media must be construed under the broadest reasonable
interpretation as encompassing a signal per se unless amended to avoid such
language. U.S. Patent & Trademark Office, Evaluating Subject Matter
Eligibility Under 35 USC § 101 (Aug. 2012 Update); pp. 11-14, available at
http://www.uspto.gov/patents/law/exam/101_training_aug2012.pdf.”).
See id. at 1860 n.5 (“[T]here are several factors to consider when
determining whether a ‘computer readable storage medium’ type claim
avoids encompassing a non-statutory signal:
(1) Extrinsic evidence relevant to the meaning as would be
understood by one skilled in the art at the time of the effective
filing date of the patent application. As opposed to the
voluminous extrinsic evidence dated 2002 and thereafter which
is discussed in this decision, before 2002 there is little evidence
that the ordinary and customary meaning of such ‘storage
medium’ terms encompassed a signal.
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assessing the ordinary and customary meanings attributed to the term
computer-useable medium, the ordinary skilled artisan needs to consider
several factors including intrinsic evidence as provided in Appellants’
Specification, as well extrinsic evidence (e.g., dictionary definitions, prior
uses of the term or equivalents thereof by Appellants and other industry
participants). Id. at 1860-62. In particular, we 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/2
009-08-25_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.

(2) Whether there is express intent in applicant’s specification
to limit the term, i.e., applicant’s specification is not silent as to
the meaning of such terms.
(3) Whether the claim expressly limits the medium to ‘non-
transitory’ embodiments.
(4) Whether the claim implicitly limits the medium to ‘non-
transitory’ embodiments. The most common form of this is the
use of ‘means plus function’ elements in the claim (i.e., a true
Beauregard type claim). Such means plus function elements are
limited by statute to the corresponding structure in the
specification and equivalents thereof. Such a structure
requirement limits the claim to non-transitory embodiments.”).
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We note that Appellants are not precluded from
amending these claims to overcome this rejection. Guidance on
this point is provided 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.”). See also 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 the recitation “non-transitory” is a viable
option for overcoming the presumption that those media
encompass signals or carrier waves, merely indicating that such
media are “physical” or tangible” will not overcome such
presumption).
Id. at 1862.
Turning to the present appeal, the Examiner’s construction of a
computer-useable medium as encompassing transitory media is appropriate
for at least the following reasons. First, Appellant’s Specification fails to
expressly limit a “computer-useable medium” to non-transitory media.
Second, relevant extrinsic evidence indicates that one skilled in the art at the
time of the effective filing date of the patent application would have
understood the broader meaning would have been covered by the claim
term. Finally, the claim does not include recitations either expressly or
implicitly limiting the “computer-useable medium” to non-transitory media.
We address these factors individually.
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Appellant’s Specification fails to expressly limit a “computer-useable
medium” to non-transitory media.
Appellant notes that paragraph 13 of the Specification (see Fact 1)
recites “various other mediums capable of storing, containing or carrying
instruction(s) and/or data.” App. Br. 5-6; Reply Br. 2. Appellant contends
this passage indicates that media that store data are distinct from media that
carry data—transmission media such as signals and wireless channels carry
or propagate data, whereas storage media is limited to statutory
manufactures. App. Br. 5-7.
It is well settled that during examination of a patent application,
pending claims are given their broadest reasonable construction consistent
with the Specification. In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359,
1364 (Fed. Cir. 2004); In re Prater, 415 F.2d 1393, 1404-05 (CCPA 1969).
“It is the applicants’ burden to precisely define the invention, not the
[US]PTO’s.” In re Morris, 127 F.3d 1048, 1056 (Fed. Cir. 1997).
Moreover, Appellants always have the opportunity to amend the claims
during prosecution, and broad interpretation by the Examiner reduces the
possibility that the claim, once issued, will be interpreted more broadly than
is justified. In re Prater, 415 F.2d at 1404-05. The Specification must
express a clear intent in order to deviate from a term’s plain meaning. See
Thorner v. Sony Computer Entm’t Am. LLC, 669 F.3d 1362, 1365 (Fed. Cir.
2012) (“It is not enough for a patentee to simply disclose a single
embodiment or use a word in the same manner in all embodiments, the
patentee must clearly express an intent to redefine the term.” (citations
omitted) (internal quotation marks omitted)).
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With these principles in mind, we cannot say that paragraph 13 of
Appellant’s Specification clearly and unambiguously expresses the intent
that “storing” has a meaning completely distinct from “carrying,” such that
storage media refers to statutory subject matter and carrying media refers to
non-statutory subject matter. We instead find it reasonable to interpret
paragraph 13’s recitation of “mediums capable of storing, containing or
carrying instruction(s) and/or data” as setting forth synonyms of potentially
overlapping scope. That is, we understand paragraph 13 as merely intending
to cover all known forms of media and employing the various terms
“storing,” “containing,” and “carrying” to ensure that all forms of media are,
in fact, covered.
Relevant extrinsic evidence indicates that one skilled in the art at the
time of the effective filing date of the patent application would have
understood the broader meaning would have been covered by the claim
term.
Because the Specification does not clearly express an unambiguous
definition of the claim term “machine readable storage medium,” we look to
relevant extrinsic evidence. As noted above, Appellant sets forth various
arguments for why the plain meaning of storage medium is limited to
statutory subject matter. App. Br. 5-9. Appellant’s arguments may well
indicate that Appellant’s proffered definition is one of the reasonable
potential definitions. However, we are not tasked with determining what
may be the best construction of the claim term. Rather, we are tasked with
determining what is the broadest reasonable construction that is consistent
with the Specification. See In re Am. Acad. of Sci. Tech Ctr., 367 F.3d at
1364. We therefore look to other issued patents that were assigned to the
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present assignee, Qualcomm, and that were filed either around the same time
as the present application’s February 24, 2004 filing date and prior thereto.
Various of these patents provide compelling evidence that at the time of the
invention, the term “storage media” was considered by those in the art to be
broad enough to include the non-statutory signal-bearing media and
transmission-bearing media. Facts 2-4.
Claim 22 does not include recitations either expressly or implicitly
limiting the “computer-useable medium” to non-transitory media.
Claim 22 does not expressly limit the claim to a non-transitory
machine-readable storage medium. In fact, the omission of the term non-
transitory is intentional. Appellant argues that the addition of the term “non-
transitory” is unnecessary because the claim is already limited to statutory
subject matter. App. Br. 9. For the reasons set forth above, though, we find
that claim 22 is neither expressly nor implicitly limited to statutory subject
matter. Rather, claim 22 is broad enough to encompass a transitory medium
and is, therefore, directed to non-statutory subject matter under 35 U.S.C.
§ 101.
Accordingly, we will sustain the Examiner’s rejection of claim 22.

DECISION
The Examiner’s decision rejecting claims 22 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). See 37 C.F.R.
§ 1.136(a)(1)(iv)(2010).

AFFIRMED
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