Ex Parte Dixon

Patent Trial and Appeal Board

Aug 31, 2018

12474497 (P.T.A.B. Aug. 31, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/474,497 05/29/2009
46320 7590 09/05/2018
CRGOLAW
STEVEN M. GREENBERG
7900 Glades Road
SUITE 520
BOCA RATON, FL 33434
FIRST NAMED INVENTOR
Bret W. Dixon
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
AU920080056US1 (013) 1675
EXAMINER
SYED,FARHANM
ART UNIT PAPER NUMBER
2165
NOTIFICATION DATE DELIVERY MODE
09/05/2018 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 BRET W. DIXON
Appeal2017-009641
Application 12/474,497
Technology Center 2100
Before CAROLYN D. THOMAS, LINZY T. McCARTNEY, and
MELISSA A. RAAP ALA, Administrative Patent Judges.
McCARTNEY, Administrative Patent Judge.
DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134 from the Examiner's final
rejection of claims 1-17. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
Appeal2017-009641
Application 12/474,497
BACKGROUND
In a prior appeal, we reversed the Examiner's rejection of claims 1-17
under 35 U.S.C. § I03(a) over combinations of Buxton (US 2004/0215998
Al; Oct. 28, 2004), Eisner (US 2007/0180150 Al; Aug. 2, 2007), and Brown
(US 2006/0122882 Al; June 8, 2006). Decision on Appeal, mailed October
7, 2015. The Examiner then rejected claims 1-17 under 35 U.S.C. § 101 and
entered a new rejection of claims 1-17 under 35 U.S.C. § I03(a). Appellant
appeals from these rejections.
Claims 1, 9, and 10 are independent. Claim 1 illustrates the claimed
invention:
1. A method for message queue retrieval by selection criteria
compnsmg:
receiving from a requesting application a message
retrieval request for a message in a message queue storing a
plurality of messages;
determining from the message retrieval request both a
template defining fields in the messages, and also selection
criteria operable upon content stored in at least one of the fields
in the messages;
applying the selection criteria to the messages in the
message queue to select a message subset of the messages in the
message queue; and
transmitting the message subset to the requesting
application.
Appeal Brief ("App. Br.") 20, filed January 17, 2017.
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1-17
REJECTIONS
§ 101
1, 4--10, and 13-17 1 § 103 Buxton2 Lambert3
2, 3, 11, and 12 § 103
DISCUSSION
Buxton, Lambert,
Brown4
For both the§ 101 and the§ 103 grounds of rejection, Appellant
argues claims 1-17 together. See App. Br. 4--18. As permitted by 37 C.F.R.
§ 41.37, we select claim 1 as representative of the rejected claims for both
grounds and decide the appeal on these grounds with respect to claim 1.
Appellant has waived arguments Appellant failed to timely raise or
adequately present. See 37 C.F.R. §§ 4I.37(c)(l)(iv), 41.4I(b)(2).
We have considered the Examiner's rejections in light of Appellant's
arguments, and we disagree with Appellant that the Examiner erred. To the
extent consistent with the analysis below, we adopt the Examiner's findings,
reasoning, and conclusions in the Final Office Action mailed August 3, 2016
(pages 2-27) and the Answer mailed May 3, 2017 (pages 3-10).
1 The header of this rejection indicates claims 1-17 stand rejected over
Buxton and Lambert; however, this rejection does not address claims 2, 3,
11, and 12. Claims 2, 3, 11, and 12 stand rejected over Buxton, Lambert,
and Brown. See Final Act. 11-23. We treat this as a harmless typographical
error.
2 Buxton et al. (US 2004/0215998 Al; Oct. 28, 2004).
3 Lambert et al. (US 2003/0033349 Al; Feb. 13, 2003).
4 Brown et al. (US 2006/0122882 Al; June 8, 2006).
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Application 12/474,497
§ 101 Rejection
Under § 101 of the Patent Act, "[ w ]hoever invents or discovers any
new and useful process, machine, manufacture, or composition of matter, or
any new and useful improvement thereof, may obtain a patent therefor,
subject to the conditions and requirements of this title." 35 U.S.C. § 101.
"[T]his provision contains an important implicit exception: Laws of nature,
natural phenomena, and abstract ideas are not patentable." Alice Corp. Pty.
Ltd. v. CLS Bank Int'!, 134 S. Ct. 2347, 2354 (2014). The Supreme Court
has set forth the following two-step framework for determining whether a
patent claim falls within one of these exceptions:
First, we determine whether the claims at issue are directed to
one of those patent-ineligible concepts. If so, we then ask,
"[ w ]hat else is there in the claims before us?" To answer that
question, we consider the elements of each claim both
individually and "as an ordered combination" to determine
whether the additional elements "transform the nature of the
claim" into a patent-eligible application. We have described step
two of this analysis as a search for an "'inventive concept"'-
i.e., an element or combination of elements that is "sufficient to
ensure that the patent in practice amounts to significantly more
than a patent upon the [ineligible concept] itself."
Alice, 134 S. Ct. at 2355 (citations omitted) (quoting Mayo Collaborative
Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 73, 77-79 (2012)). "In the
context of claims that are challenged as containing only abstract ideas, those
two stages are typically referred to as the 'abstract idea' step and the
'inventive concept' step." Affinity Labs of Tex., LLC v. DIRECTV, LLC, 838
F.3d 1253, 1257 (Fed. Cir. 2016).
Applying this framework, the Examiner concluded claim 1 is directed
to a patent-ineligible abstract idea. See Final Act. 2--4, 6-8. The Examiner
found the limitations recited in claim 1 fell within recognized abstract idea
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categories such as "organiz[ing], stor[ing], and transmit[ting] information"
and "comparing new and stored information [ and] using rules to identify
options." Final Act. 2--4. The Examiner concluded claim 1 is "directed to
the abstract idea of organizing information through mathematical correlation
... or such as using categories to organize, store[,] and transmit information
in Cyberfone or comparing new and stored information and using rules to
identify options in SmartGene." Final Act. 7-8. The Examiner also
determined that claim 1 does not recite an inventive concept because the
claim elements "do not provide meaningful limitations to transform the
abstract idea into a patent eligible application of the abstract idea." Final
Act. 8.
With respect to the "abstract idea" step, Appellant asserts the
Examiner described claim 1 "at a high level of abstraction untethered from
the language of the claim when determining the focus of the claimed
invention" and "doom[ed]" the claim because a general-purpose computer
can run the recited method. App. Br. 7. Appellant argues that doing so
conflicts with Patent Office practice and Federal Circuit precedent. App. Br.
5-7. Appellant argues the Examiner also violated Patent Office practice by
relying on the non-precedential Cyberfone and SmartGene Federal Circuit
decisions. App. Br. 8. Finally, Appellant contends that, when considered in
light of paragraphs 17-19 of the written description, claim 1 is directed to an
improvement in computer functionality, not an abstract idea. App. Br. 9-11.
Appellant's arguments have not persuaded us the Examiner erred. As
determined by the Examiner, see Final Act. 2--4, 7-8, claim 1 recites a
collection of recognized abstract processes. Claim 1 recites "[a] method for
message queue retrieval by selection criteria" that includes four steps: (1)
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receiving a message retrieval request from an application, (2) determining a
template and selection criteria from the request, (3) applying the selection
criteria to select a subset of messages in a message queue, and ( 4)
transmitting the message subset to the application. See App. Br. 20. Claim
1 recites little about how the method accomplishes each recited step; the
claim instead essentially recites results specified at a high level of detail.
For example, claim 1 recites what is determined (a template and selection
criteria) and from what ( the request) but does not recite how the method
determines these elements. Similarly, claim 1 requires applying selection
criteria to select a message subset but fails to recite how this is done. As
written, the claim is so broad as to encompass nearly any mechanism or
procedure that accomplishes these results, including people performing these
steps in their heads or using pen and paper.
The Federal Circuit has determined that similar steps are directed to
abstract processes. For example, the Federal Circuit has concluded that
collecting data (receiving a message retrieval request) and recognizing data
within the collected data set ( determining a template and selection criteria
from the request) are abstract processes. 5 Similarly, the Federal Circuit has
5 See, e.g., SmartGene, Inc. v. Advanced Biological Labs., SA, 555 F. App'x
950, 954--56 (Fed. Cir. 2014) (concluding claims that called for a computing
device to perform steps doctors can perform in their heads are directed to an
abstract idea); Content Extraction & Transmission LLC v. Wells Fargo
Bank, Nat. Ass 'n, 776 F.3d 1343, 1347 (Fed. Cir. 2014) (concluding claims
focused on collecting data, recognizing data within the collected data set,
and storing the recognized data are directed to an abstract idea); Elec. Power
Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1353 (Fed. Cir. 2016) (concluding
claims that recited collecting information, analyzing it, and displaying
certain results of the collection and analysis are directed to an abstract idea);
Smart Sys. Innovations, LLC v. Chicago Transit Auth., 873 F.3d 1364, 1372
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concluded that searching and retrieving information ( applying the selection
criteria to select a subset of messages) and transmitting information
( transmitting the message subset) are also abstract processes. 6 Where, as
here, a claim recites a combination of abstract processes, the claim is
directed to an abstract idea. See, e.g., Elec. Power Grp., LLC v. Alstom S.A.,
830 F.3d 1350, 1354 (Fed. Cir. 2016) ("Here, the claims are clearly focused
on the combination of those abstract-idea processes .... They are therefore
directed to an abstract idea."); FairWarning IP, LLC v. Iatric Sys., Inc., 839
F.3d 1089, 1092-95 (Fed. Cir. 2016) (concluding claims directed to a
combination of recognized abstract-idea categories are directed to an
abstract idea). And where, as here, a claim recites a series of results without
sufficiently reciting how to achieve the results, the claim is directed to an
abstract idea. See, e.g., Two-Way Media Ltd. v. Comcast Cable Commc 'ns,
LLC, 874 F.3d 1329, 1337-38 (Fed. Cir. 2017) (concluding a claim is
directed to an abstract idea when the claim requires functional results
without adequately describing how to achieve the results).
(Fed. Cir. 2017) ("[T]he claims are directed to the collection, storage, and
recognition of data. We have determined that claims directed to the
collection, storage, and recognition of data are directed to an abstract idea.").
6 See, e.g., Cyberfone Sys., LLC v. CNN Interactive Grp., Inc., 558 F. App'x
988, 991 (Fed. Cir. 2014) (concluding claims drawn to using categories to
collect, organize, and transmit data are directed to an abstract idea);
Intellectual Ventures I LLC v. Symantec Corp., 838 F.3d 1307, 1313-14
(Fed. Cir. 2016) (concluding claims concerning "filtering files/e-mail" are
directed to an abstract idea); Intellectual Ventures I LLC v. Erie Indem. Co.,
850 F.3d 1315, 1327-28 (Fed. Cir. 2017) (concluding claims involving
creating an index used to search and retrieve information are directed to an
abstract idea).
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In particular, claim 1 is directed to the abstract idea of using selection
criteria for message queue retrieval. On its face, claim 1 is drawn to "[a]
method for message queue retrieval by selection criteria." App. Br. 20. The
associated written description also describes embodiments of the "present
invention" in a similar manner. See, e.g., Specification ("Spec."), Abstract,
filed May 29, 2009 ("Embodiments of the present invention ... provide a
method ... for message queue retrieval by selection criteria."); see also id.
,r,r 7 ("Embodiments of the present invention ... provide a novel and non-
obvious method ... for message queue retrieval by selection criteria."), 14
("Embodiments of the present invention provide a method ... for message
queue retrieval by selection criteria."). In light of the language of claim 1
and its accompanying written description, claim 1 is drawn to the abstract
idea of using selection criteria for message queue retrieval.
Appellant's arguments do not lead to a different conclusion. First,
although we describe the abstract idea differently than the Examiner, we see
no error in the Examiner's characterization of the idea. "An abstract idea
can generally be described at different levels of abstraction." Apple, Inc. v.
Ameranth, Inc., 842 F.3d 1229, 1240 (Fed. Cir. 2016); see also id. at 1240-
41 ("As the Board has done, the claimed abstract idea could be described as
generating menus on a computer, or generating a second menu from a first
menu and sending the second menu to another location. It could be
described in other ways, including, as indicated in the specification, taking
orders from restaurant customers on a computer."). The level of abstraction
an examiner uses to describe an abstract idea need not-and in this case,
does not-"impact the patentability analysis." Apple, 842 F.3d at 1241.
Regardless of the level of generality one uses to describe the abstract idea,
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the result is the same----claim 1 is directed to an abstract idea. Cf Accenture
Glob. Servs., GmbH v. Guidewire Software, Inc., 728 F.3d 1336, 1344--45
(Fed. Cir. 2013) ("Although not as broad as the district court's abstract idea
of organizing data, it is nonetheless an abstract concept.").
Second, the Examiner did not improperly "doom" claim 1 because a
general-purpose computer can execute the claimed method. Rather, the
Examiner compared the claimed method with concepts the Federal Circuit
has determined are abstract ideas. See Final Act. 2--4, 7-8. This approach is
consistent with Patent Office practice and Federal Circuit precedent. See,
e.g., Manual of Patent Examining Procedure§ 2106.04(a) (explaining that
an abstract idea analysis involves "comparing the claimed concept to the
concepts previously identified as abstract ideas by the courts to determine if
it is similar"); Enfzsh, LLC v. Microsoft Corp., 822 F.3d 1327, 1334 (Fed.
Cir. 2016) ("[B]oth this court and the Supreme Court have found it sufficient
to compare claims at issue to those claims already found to be directed to an
abstract idea in previous cases."). Although the Examiner responded to
Appellant's arguments by pointing out that a general-purpose computer can
perform the limitations recited in claim 1, see Final Act. 2- 4, this does not
mean the Examiner inappropriately "doomed" the claim for that reason.
Third, the Examiner's reliance on non-precedential decisions does not
conflict with Patent Office practice. As asserted by Appellant, the Deputy
Commissioner for Patent Examination Policy stated in a November 2016
memorandum that "given the large and ever-increasing number of
precedential decisions, examiners should avoid relying upon or citing non-
precedential decisions." Memorandum from Robert W. Bahr, Deputy
Commissioner for Patent Policy ("November 2016 Memo") 4 (Nov. 2,
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2016), https ://www. uspto. gov/ sites/ default/files/ docmnents/McRo-Bascom-
Memo. pdf. But this memorandum does not prohibit examiners from relying
on these decisions. In fact, the memorandum explicitly contemplates that
examiners can rely on non-precedential decisions. The memorandum states
that examiner may rely on non-precedential decisions when "the facts of the
application under examination uniquely match the facts at issue in the non-
precedential decision." November 2016 Memo 4.
Fourth, both claim 1 and the written description indicate that claim 1
is not directed to an improvement in computer functionality as argued by
Appellant. As discussed above, claim 1 recites "[a] method for message
queue retrieval by selection criteria" that includes a series of steps described
in terms of results. Although a computer may be able to achieve the recited
results, the claim does not purport to change (much less improve) how a
computer functions.
The written description also does not indicate the claimed invention
improves how a computer functions. The written description explains that
the claimed invention "can be implemented within a message queuing data
processing system" but makes clear that this system encompasses generic
computing devices. Spec. ,r 17. For example, the written description
discloses that system includes "client computing devices 21 O" that runs
applications, "computer communications network 220," and "host
computing system 230" that includes "one or more computing servers."
Spec. ,r 17. Each server in tum can include "memory" and "one or more
processors" and can support "the operation of a message queue 250." Spec.
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There is no indication in the written description that these elements
are anything other than generic hardware or software components. In fact,
the written description acknowledges that some of these elements were
typical and known to those of ordinary skill in the art. For example, in the
"Background of the Invention" section, the written description describes
"[ e ]xisting queuing technologies," which includes client applications
retrieving messages from "the typical message queue." Spec. ,r,r 3---6. The
written description also discloses that a suitable data processing system
includes generic components such as "processor[ s ]," "memory elements,"
"[i]nput/output or I/0 devices," and "[n]etwork adapters." Spec. ,r 25. The
written description further discloses that the message queue data processing
system includes a "[ m ]essage retrieval module 300" that can perform the
steps recited in claim 1. See Spec. ,r,r 17-19. The written description
discloses that the module "can execute as program code in memory by a
processor in the host computing system 230." Spec. ,r 18. The written
description provides almost no technical details about the module or the
program code, other than noting that "[i]n a preferred embodiment, the
invention is implemented in software, which includes but is not limited to
firmware, resident software, microcode, and the like." Spec. ,r 23. These
disclosures indicate claim 1 is directed to an abstract idea, not an
improvement in computer functionality. Cf BSG Tech LLC v. Buyseasons,
Inc., No. 2017-1980, 2018 WL 3862646, at *3 (Fed. Cir. Aug. 15, 2018) ("If
a claimed invention only performs an abstract idea on a generic computer,
the invention is directed to an abstract idea at step one.").
Because we agree with the Examiner that claim 1 is directed to an
abstract idea, we next consider whether claim 1 has an "inventive concept"
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sufficient to transform the abstract idea into patent-eligible subject matter.
With respect to the "inventive concept" step, Appellant argues claim
specifies "with particularity exactly how the abstract concept of message
queue retrieval by selection criteria is achieved without foreclosing all
possible methodologies for achieving the abstract concept of message queue
retrieval by selection criteria." App. Br. 13-14 (emphases altered).
According to Appellant, this distinguishes claim 1 from the patent-ineligible
claims discussed in Internet Patents Corp. v. Active Network, Inc. App. Br.
14--15. Appellant contends claim 1 recites an inventive concept under the
analyses in Intellectual Ventures I LLC v. Capital One Bank (USA),
BASCOM Glob. Internet Services, Inc. v. AT&T Mobility LLC, and Ex parte
Ismail. App. Br. 14--15.
We disagree. Whether we consider the recited steps and elements
individually or in an ordered combination, they do not recite an inventive
concept. For reasons already discussed, Appellant's written description
makes clear that the method recited in claim 1 requires only generic
hardware and software. Such claims generally do not recite an inventive
concept. See, e.g., Two-Way Media Ltd., 874 F.3d at 1339 ("[M]erely
reciting an abstract idea performed on a set of generic computer
components, as claim 1 does here, would 'not contain an inventive
concept."' ( citation omitted)). Moreover, even if the generic hardware and
software described in the written description could provide an inventive
concept, claim 1 does not explicitly recite either. Although we view claims
in the light of their associated written description, it is the claims that must
provide the necessary inventive concept. See, e.g., Two-Way Media Ltd.,
874 F.3d at 1338-39 ("The main problem that Two-Way Media cannot
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overcome is that the claim-as opposed to something purportedly described
in the specification-is missing an inventive concept. While the
specification may describe a purported innovative 'scalable architecture,'
claim 1 of the '187 patent does not." (citation omitted)). And we see nothing
in the ordered combination of the recited steps that suggests claim 1 contains
an inventive concept.
Appellant's arguments do not persuade us otherwise. Although claim
1 recites a series of steps, as discussed above, claim 1 does not specify how
the recited method achieves the results recited in each step. That is, instead
of reciting how the claimed method receives a message retrieval request,
determines a template and selection criteria from the request, applies the
selection criteria to select a subset of messages, and transmits the message,
claim 1 simply recites that the method achieves these results. See App. Br.
20. In this sense, contrary to Appellant's arguments, the recited limitations
are similar to the claim limitations at issue in Internet Patents Corp. See,
e.g., 790 F.3d 1343, 1348 (Fed. Cir. 2015) ("As the district court observed,
claim 1 contains no restriction on how the result is accomplished. The
mechanism for maintaining the state is not described .... The court
concluded that the claim is directed to the idea itself-the abstract idea of
avoiding loss of data."). Moreover, even if claim 1 does not preempt every
way of using selection criteria to retrieve messages from a message queue,
this fact does not make claim 1 patent eligible. See Ariosa Diagnostics, Inc.
v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015) ("While preemption
may signal patent ineligible subject matter, the absence of complete
preemption does not demonstrate patent eligibility.").
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The part of Intellectual Ventures I LLC discussed by Appellant is not
to the contrary. This part of Intellectual Ventures I LLC noted that the
claims in a different case, DDR Holdings, LLC v. Hotels.com, L.P.,
"provided an Internet-based solution to solve a problem unique to the
Internet that (1) did not foreclose other ways of solving the problem, and (2)
recited a specific series of steps that resulted in a departure from the routine
and conventional sequence of events after the click of a hyperlink
advertisement." Intellectual Ventures I LLC v. Capital One Bank (USA),
792 F.3d 1363, 1371 (Fed. Cir. 2015). But the next sentence in Intellectual
Ventures I LLC states that "[t]he patent claims here do not address problems
unique to the Internet, so DDR has no applicability." Id. The same is true
here. And although Appellant asserts that claim 1 recites "a specific series
of steps that result in a departure from the routine and conventional sequence
of events" as in DDR, App. Br. 15, Appellant has not adequately explained
why that is the case. Merely asserting that the recited steps depart from the
routine and conventional sequence of events does not make it so.
Appellant's arguments about BASCOM and Ismail fare no better. In
BASCOM, the Federal Circuit found an inventive concept "in the non-
conventional and non-generic arrangement of known, conventional pieces,"
specifically "the installation of a filtering tool at a specific location, remote
from the end-users, with customizable filtering features specific to each end
user." 827 F.3d 1341, 1350 (Fed. Cir. 2016). Appellant has not identified
any non-conventional, non-generic arrangement here, and we see nothing in
the written description that indicates that claimed invention includes such an
arrangement. As for Ismail, to the extent the Board "confirmed" the
Intellectual Ventures I LLC analysis in Ismail as asserted by Appellant, App.
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Br. 15, that confirmation does not change the result here. But we note that
Ismail makes no mention of Intellectual Ventures I LLC or DDR. Ex parte
Ismail, No. 2014-005477, 2016 WL 3569659, at *1-5 (PTAB June 29,
2016). In any event, Ismail is not precedential and therefore does not bind
us.
For these reasons, we agree with the Examiner that claim 1 does not
recite an inventive concept. Because we agree with the Examiner that claim
1 is directed to an abstract idea and does include an inventive concept, we
sustain the Examiner's rejection of claim 1 under 35 U.S.C. § 101.
§ 103 Rejections
Appellant argues the Examiner's combination of Buxton and Lambert
fails to teach or suggest "determining from the message retrieval request
both a template defining fields in the messages, and also selection criteria
operable upon content stored in at least one of the fields in the messages" as
recited in claim 1. App. Br. 16-18. According to Appellant, the Examiner
relies on Lambert's "GetMessage request" to teach or suggest this limitation
but "never attempts to map the determination from the 'GetMessage
Request' [to] both a template and also selection criteria." App. Br. 18
(emphasis altered). Moreover, Appellant contends that paragraphs 36 and
38 of Lambert do not teach or suggest identifying a template. App. Br. 18.
With respect to Buxton, Appellant asserts the Examiner found Buxton
inherently discloses the recited "selection criteria" and argues "the inherency
... is not so specific as to provide for" the recited "determining" step. App.
Br. 18. Finally, Appellant contends Buxton does not teach or suggest claim
1 's "applying" step. Reply Br. 8-9.
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We disagree. The cited portions of Lambert teach that as part of
transmitting a GetMessage request to a vendor, the disclosed invention can
call a "DumpToString() method" that requires a template. See Lambert
,r,r 45--48, 70; see also Final Act. 5---6 ( citing Lambert ,r,r 46--48, 70). As
noted by the Examiner, Lambert explains that "[t]he template is a pattern
string showing how the fields item data should be interpreted." Lambert
,r 46; Final Act. 12. The Examiner mapped this disclosure to the recited
"determining ... a template." See, e.g., Final Act. 12. The cited portions of
Lambert also disclose that after the vendor receives the GetMessage request,
an MQeFilter object within the request "appl[ies] its test condition to its
target object (typically a queue) to identify any items within the queue or
referenced in the queue which match the test condition." Lambert ,r 70. The
Examiner mapped this disclosure to the recited "determining ... selection
criteria." See, e.g., Final Act. 5. Thus, contrary to Appellant's argument,
the Examiner mapped Lambert's method of processing a GetMessage
request to claim 1 's "determining" limitation. And although Appellant
contends paragraphs 3 6 and 3 8 of Lambert do not teach identifying a
template, as noted earlier, the Examiner relied on paragraphs 45--48 of
Lambert for this element. See, e.g., Final Act. 5---6, 12. Appellant has not
persuasively addressed these paragraphs. For at least these reasons,
Appellant has not persuasively explained why this mapping fails to teach or
suggest this step.
As for Buxton, the Examiner noted Buxton discloses "using distinct
keys that allows a queue manager to selectively access messages in
particular." Answer 8. This finding establishes that Buxton teaches or
suggests the recited "selection criteria." The Examiner did not, as argued by
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Appellant, find Buxton alone teaches claim 1 's "determining" step. See,
e.g., Final Act. 11-13. Rather, the Examiner concluded this limitation
would have been obvious over the combined teachings of Buxton and
Lambert. See, e.g., Final Act. 11-13. Appellant's arguments against Buxton
alone have not established the Examiner erred in this regard. "[O]ne cannot
show non-obviousness by attacking references individually where, as here,
the rejections are based on combinations of references." In re Keller, 642
F.2d4I3, 426 (CCPA 1981).
Finally, Appellant argues for the first time in the Reply Brief that
Buxton does not teach claim 1 's "applying" step. Reply Br. 8-9. Appellant
has waived this argument by failing to raise it in the Appeal Brief. See See
37 C.F.R. §§ 4I.37(c)(l)(iv), 41.4I(b)(2). In any event, we have reviewed
the Examiner's rejection, and we see no error with respect to this limitation.
See Final Act. 11-12. For the above reasons, we sustain the Examiner's
rejection of claim 1.
CONCLUSION
1-17 § 101 NIA 1-17
1, 4--10, and
§ 103
Buxton and 1, 4--10, and
13-17 Lambert 13-17
2, 3, 11, and
Buxton,
2, 3, 11, and
§ 103 Lambert, and
12 12
Brown
Summar 1-17
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No 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).
AFFIRMED
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