Ex Parte Giannetti

Board of Patent Appeals and Interferences

Nov 29, 2010

10668207 (B.P.A.I. Nov. 29, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte FABIO GIANNETTI
____________

Appeal 2009-007347
Application 10/668,207
Technology Center 2400
____________

Before JAMES D. THOMAS, HOWARD B. BLANKENSHIP, and
CAROLYN D. THOMAS, Administrative Patent Judges.

BLANKENSHIP, Administrative Patent Judge.

DECISION ON APPEAL1

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.
Appeal 2009-007347
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STATEMENT OF THE CASE
This is an appeal under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 1-21, which are all the claims pending in the application.
We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.

Invention
Appellant’s invention relates to a method of delivering data to one or
more data-handling devices. Data intended for transmission to the data-
handling device is stored according to a predetermined template which
provides a plurality of fields, each of the fields being capable of containing a
portion of the data. Mappings that map the data within the fields of the
predetermined template to fields within alternative templates are provided,
should it be determined that the data-handling device is not capable of
handling data held in the predetermined template. The data is transmitted to
the data-handling device. Abstract.

Representative Claim
16. A method of delivering data to at least one data-
handling device, the method comprising the steps of:

i. storing data that is intended for transmission to the
data-handling device in one of a plurality of predetermined
templates each of which provides a plurality of fields and each
of the fields being capable of containing a portion of the data;

ii. storing a plurality of mappings that map data held
within a field of one of the predetermined templates to fields
within an alternative template should it be determined that the
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data-handling device to which the data is to be sent is not
capable of handling data held in the predetermined template;

iii. altering the data according to one of the mappings
should it be determined that the data-handling device cannot
handle the data; and

iv. transmitting the data to the data-handling device.

Examiner’s Rejections
Claims 12-15 stand rejected under 35 U.S.C. § 101 as being directed
to non-statutory subject matter.
Claims 1-5, 7, 9-16, and 19-21 stand rejected under 35 U.S.C.
§ 102(e) as being anticipated by Slaughter (US 6,898,618 B1).
Claims 6, 8, 17, and 18 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Slaughter and Horvitz (US 6,980,993 B2).

Claim Groupings
In view of Appellant’s arguments in the Appeal Brief, we will decide
the appeal on the basis of claim 12 for the non-statutory subject matter
rejection, and claim 16 for the prior art rejections. See 37 C.F.R.
§ 41.37(c)(1)(vii).

ISSUES
(1) Has Appellant shown that a “computer-readable medium” as
recited in claim 12 does not encompass non-statutory subject matter?
(2) Has Appellant shown that Slaughter does not describe “storing
a plurality of mappings” and “altering the data” as recited in claim 16?

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FINDINGS OF FACT
1. Slaughter describes a mechanism for a client to specify a
display service for displaying results data. Title; Abstract.
2. The results data can be stored as XML objects in a space. Col.
96, l. 66 to col. 97, l. 15.
3. Each space has an XML schema that is capable of being used
by most clients, including devices such as PDAs. Col. 43, ll. 39-58.
4. Two or more presentation schemas may be provided for
formatting and displaying the same results data on different displays. For
example, one presentation schema can be provided for displaying the results
data on a display screen, and another for printing the results data. Col. 86, ll.
18-21 and 47-62.
5. The results data includes a plurality of data elements, and the
presentation schema includes a plurality of presentation elements. The
display service maps the data elements to the presentation elements. Col.
87, ll. 47-62.

PRINCIPLES OF LAW
Statutory Subject Matter for Computer Readable Media
The USPTO is obliged to give claims their broadest reasonable
interpretation consistent with the specification during proceedings before the
USPTO. See In re Zletz, 893 F.2d 319 (Fed. Cir. 1989) (during patent
examination the pending claims must be interpreted as broadly as their terms
reasonably allow). The broadest reasonable interpretation of a claim drawn
to a computer readable medium (also called machine readable medium and
other such variations) typically covers forms of non-transitory tangible
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media and transitory propagating signals per se in view of the ordinary and
customary meaning of computer readable media, particularly when the
specification is silent. See MPEP § 2111.01. When the broadest reasonable
interpretation of a claim covers a signal per se, the claim 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).

Anticipation
“Anticipation requires the presence in a single prior art reference
disclosure of each and every element of the claimed invention, arranged as
in the claim.” Lindemann Maschinenfabrik GmbH v. American Hoist &
Derrick Co., 730 F.2d 1452, 1458 (Fed. Cir. 1984).

ANALYSIS
Section 101 rejection of claims 12-15
Claim 12 recites a computer readable medium. Although Appellant
contends that he disclaims any interpretation of “computer readable
medium” that covers a transmitted signal (Br. 9), claim 12 does not limit the
computer readable medium to non-transitory tangible media. In addition,
Appellant’s Specification states that the computer readable medium may be
“a transmitted signal (which may be an Internet download, a ftp transfer, or
any other transmitted signal)” (Spec. 8:24-28). The computer readable
medium therefore encompasses a transitory, propagating signal, which is not
a process, machine, manufacture, or composition of matter. Nuijten, 500
F.3d at 1357.
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Claim 12 “covers material not found in any of the four statutory
categories [and thus] falls outside the plainly expressed scope of § 101.” Id.
at 1354. Appellant has not presented arguments for separate patentability of
dependent claims 13-15. Claims 13-15 thus fall with claim 12.

Prior Art Rejections of claims 1-21
Appellant contends that Slaughter does not disclose “storing a
plurality of mappings that map data held within a field of one of the
predetermined templates to fields within an alternative template should it be
determined that the data-handling device to which the data is to be sent is
not capable of handling data held in the predetermined template” as recited
in claim 16. Br. 10. The Examiner finds that Slaughter describes storing
data in an XML template, then re-mapping the stored data to a different
XML template as dictated by the capabilities of the data handling device.
Ans. 15.
We agree with the Examiner. Slaughter describes storing results data
in a space. FF 2. Each space has an XML schema, or “template,” that can
be used by most clients. FF 3. The results data can also be mapped to
alternative XML templates to display the same results data on different
display devices. FF 4-5.
The space with an XML template that stores the results data is “one of
a plurality of predetermined templates” within the meaning of claim 16. The
different presentation templates for formatting data to different display
devices are “a plurality of mappings that map data held within a field of one
of the predetermined templates to fields within an alternative template
should it be determined that the data-handling device to which the data is to
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be sent is not capable of handling data held in the predetermined template”
within the meaning of claim 16.
Appellant further contends that Slaughter does not disclose “altering
the data according to one of the mappings should it be determined that the
data-handling device cannot handle the data” as recited in claim 16. Br. 10.
In the Summary of Claimed Subject Matter section of the Brief, Appellant
points to support for the “altering the data” limitation on page 15, lines 23-
26 of the Specification, which states that if the device cannot handle the
data, the data is mapped to the appropriate alternative template.
Slaughter describes mapping data stored in an XML template to an
alternative template so that a display device can display the results. FF 1-5.
Therefore, Slaughter describes “altering the data according to one of the
mappings should it be determined that the data-handling device cannot
handle the data” within the meaning of claim 16.
Appellant has not presented arguments for separate patentability for
the remaining claims, but instead relies on the arguments presented for claim
16. Therefore, claims 2-15 and 17-21 fall with claim 16.

CONCLUSIONS OF LAW
(1) Appellant has not shown that a “computer-readable medium” as
recited in claim 12 does not encompass non-statutory subject matter.
(2) Appellant has not shown that Slaughter does not describe
“storing a plurality of mappings” and “altering the data” as recited in claim
16.

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Application 10/668,207

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DECISION
The rejection of claims 12-15 under 35 U.S.C. § 101 as being directed
to non-statutory subject matter is affirmed.
The rejection of claims 1-5, 7, 9-16, and 19-21 under 35 U.S.C.
§ 102(e) as being anticipated by Slaughter is affirmed.
The rejection of claims 6, 8, 17, and 18 under 35 U.S.C. § 103(a) as
being unpatentable over Slaughter and Horvitz 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

msc

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