Ex Parte Gilbert et al

Patent Trial and Appeal Board

Jun 28, 2013

10635586 (P.T.A.B. Jun. 28, 2013)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
10/635,586 08/06/2003 Allen M. Gilbert RSW920030087US1 (102) 1393
46320 7590 07/01/2013
CAREY, RODRIGUEZ, GREENBERG & O''''KEEFE, LLP
STEVEN M. GREENBERG
7900 Glades Road
SUITE 520
BOCA RATON, FL 33434
EXAMINER
BIAGINI, CHRISTOPHER D
ART UNIT PAPER NUMBER
2445
MAIL DATE DELIVERY MODE
07/01/2013 PAPER
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.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte ALLEN M. GILBERT, DAVID LOUIS KAMINSKY, and
BALACHANDAR RAJARAMAN
____________

Appeal 2013-001299
Application 10/635,586
Technology Center 2400
____________

Before JOHN A. JEFFERY, ANDREW J. DILLON, and JENNIFER L.
McKEOWN, Administrative Patent Judges.

JEFFERY, Administrative Patent Judge.

DECISION ON APPEAL
This application returns to us after another panel of this Board1
affirmed the Examiner’s rejection of then-pending claims 1-10. Ex parte
Gilbert, No. 2009-006032 (BPAI June 9, 2010), reh’g denied Dec. 8, 2010.
Prosecution was reopened after that decision, and Appellants now appeal
under 35 U.S.C. § 134(a) from the Examiner’s subsequent rejection of
claims 1, 2, 4-9, 11, 12, and 14-18. We have jurisdiction under 35 U.S.C.
§ 6(b). We affirm.

1 The panel for earlier appeal was Judge Dixon, then-Judge Lucas, and Judge
Jeffery.
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STATEMENT OF THE CASE
Appellants’ invention manages administration of components in a
computing network by permitting administrative tasks if retrieved state data
for related components satisfies certain policy-based rules. See generally
Spec. ¶¶ 0008-12. Claims 1 and 11 are illustrative:
1. A method for autonomically managing administration of
interdependent components in a computing network, the method comprising
the steps of:

receiving in memory of a computer a request to perform an
administrative task directed to a component within the computing network;

retrieving an administration policy comprising a set of rules defining
a requisite state of related interdependent components and environment
required to perform said administrative task;

further retrieving state data for the related interdependent components
and the environment;

applying said retrieved policy to said retrieved state data; and,

permitting said administrative task only if said retrieved state data
satisfies said set of rules in said retrieved policy.

11. A computer readable storage medium having stored thereon a
computer program for autonomically managing administration of
interdependent components in a computing network, said computer program
comprising a routine set of instructions for causing the machine to perform
the steps of:

receiving a request to perform an administrative task directed to a
component within the computing network;

retrieving an administration policy comprising a set of rules defining a
requisite state of related interdependent components and environment
required to perform said administrative task;
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further retrieving state data for the related interdependent components
and the environment;

applying said retrieved policy to said retrieved state data; and,

permitting said administrative task only if said retrieved state data
satisfies said set of rules in said retrieved policy.

THE REJECTIONS
1. The Examiner rejected claims 11, 12, and 14-18 under 35 U.S.C.
§ 101 as directed to non-statutory subject matter. Fin. Rej. 7-8.2
2. The Examiner rejected claims 1, 2, 4, 9, 11, 12, and 14 under
35 U.S.C. § 103(a) as unpatentable over Kahn (US 7,185,192 B1; issued
Feb. 27, 2007; filed July 7, 2000) and Tang (US 2003/0115344 A1;
published June 19, 2003). Fin. Rej. 8-16.
3. The Examiner rejected claims 5-7 and 15-17 under 35 U.S.C.
§ 103(a) as unpatentable over Kahn, Tang, and Burns (US 2003/0014644
A1; published Jan. 16, 2003). Fin. Rej. 16-19.
4. The Examiner rejected claims 8 and 18 under 35 U.S.C. § 103(a)
as unpatentable over Kahn, Tang, and Hall (US 5,930,479; issued July 27,
1999). Fin. Rej. 20-21.

THE § 101 REJECTION
The Examiner finds that the computer readable storage medium
recited in independent claim 11 encompasses transitory media such as

2 Throughout this opinion, we refer to (1) the Final Rejection mailed January
23, 2012 (“Fin. Rej.”); (2) the Appeal Brief filed June 25, 2012 (“App. Br.”);
(3) the Examiner’s Answer mailed August 30, 2012 (“Ans.”); and (4) the
Reply Brief filed October 28, 2012 (“Reply Br.”).
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electromagnetic carrier waves which “store” a program while the waves are
in transit. Fin. Rej. 7; Ans. 3-4.
Appellants contend that the recited storage medium excludes
transitory media under its plain meaning and in view of various Board
decisions which are said to be consistent with Appellants’ position. App. Br.
4-7; Reply Br. 2-4.

ISSUE
Has the Examiner erred in rejecting claim 11 by finding that the
recited computer readable storage medium encompasses transitory media
and therefore is ineligible under § 101?

PRINCIPLES OF LAW
Signals are patent-ineligible under § 101. In re Nuijten, 500 F.3d
1346, 1355 (Fed. Cir. 2007). According to U.S. Patent & Trademark Office
(USPTO) guidelines:
A claim that covers both statutory and non-statutory
embodiments . . . embraces subject matter that is not eligible for
patent protection and therefore is directed to non-statutory
subject matter. . . . For example, . . . a claim to a computer
readable medium that can be a compact disc or a carrier wave
covers a non-statutory embodiment and therefore should be
rejected under 35 U.S.C. § 101 as being directed to non-
statutory subject matter.

MPEP § 2106(I) (emphasis added).

The USPTO also provides the following guidance:
The broadest reasonable interpretation of a claim drawn to a
computer readable medium . . . typically covers forms of non-
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transitory tangible 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. . . .
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.

David J. Kappos, Subject Matter Eligibility of Computer Readable Media,
1351 Off. Gaz. Pat. & Trademark Office 212 (Feb. 23, 2010).

ANALYSIS
We sustain the Examiner’s rejection of representative claim 11 under
§ 101. We agree with the Examiner that the recited computer-readable
storage medium encompasses transitory media, such as signals or carrier
waves, where, as here, the Specification does not limit the storage medium
to non-transitory forms. Accord Ex parte Mewherter, No. 2012-007692
(PTAB May 8, 2013) (expanded panel) (holding recited machine-readable
storage medium ineligible under § 101 since it encompasses transitory
media).
Although Appellants refer to the second sentence Paragraph 0031 in
connection with the recited storage medium in their summary of the claimed
subject matter (App. Br. 3), this passage merely generally indicates that the
present invention can be embedded in a “computer program product,” but
provides no details regarding the nature of an associated storage medium, let
alone limiting definitions in this regard. See Spec. ¶ 0031. The absence of
the term “medium” in this passage—and the entire Specification for that
matter—is telling here, as it was in Mewherter. See Mewherter, at 6.
In any event, the plain meaning of the term “storage medium” does
not exclude transitory media contrary to Appellants’ assertion. See App. Br.
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5-6 (citing McGraw-Hill Dictionary of Scientific & Technical Terms). That
Appellants’ dictionary definition of “storage medium” is the same definition
that the expanded panel found to be unpersuasive in Mewherter only bolsters
this conclusion. Compare Mewherter, at 12. As the expanded panel
explained in Mewherter, “a signal with embedded data fully comports with
this definition, for data can be copied and held by a transitory recording
medium, albeit temporarily, for future recovery of the embedded data.” Id.
The Examiner’s point in this regard is therefore well taken. See Ans. 3-4
(“[A] signal containing data may be transmitted, and that data is ‘held’ in the
signal until such later time as that signal reaches, for example, an antenna.”).
Lastly, we find—as did the panel in Mewherter—Appellants’ reliance on the
cited non-precedential Board decisions (App. Br. 6) insufficient to
persuasively rebut the Examiner’s position. See Mewherter, at 13.
Since claim 11 encompasses both statutory and non-statutory
embodiments, it is ineligible under § 101. MPEP § 2106(I). We are
therefore not persuaded that the Examiner erred in rejecting representative
claim 11, and claims 12, and 14-18 not separately argued with particularity.

THE OBVIOUSNESS REJECTION OVER KAHN AND TANG
The Examiner finds that Kahn’s method of autonomically managing
interdependent components in a network has every recited element of claim
1 except for explicitly receiving a request to an administrative task directed
to component, but cites Tang as teaching this feature in concluding that the
claim would have been obvious. Fin. Rej. 8-10; Ans. 4-6.
Appellants argue that Kahn does not disclose any related
interdependent (i.e., mutually dependent) components, let alone retrieve an
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administrative policy comprising rules defining a requisite state of related
interdependent components required to perform an administrative task as
claimed. App. Br. 7-12; Reply Br. 4-8. According to Appellants, Kahn’s
rules address a single application component, not interdependent
components, nor are Kahn’s tasks dependent on states of interdependent
components as claimed. Id.

ISSUE
Under § 103, has the Examiner erred in rejecting claim 1 by finding
that Kahn and Tang collectively would have taught or suggested retrieving
an administration policy comprising a set of rules defining a requisite state
of related interdependent components and environment required to perform
an administrative task?

ANALYSIS
Since the Examiner’s findings regarding Tang are undisputed, we
confine our discussion to Kahn, which centers on whether the reference
teaches or suggests interdependent components. We agree with the
Examiner in this regard for the reasons indicated by the Examiner which we
adopt as our own. Fin. Rej. 8-10; Ans. 4-6.
The Examiner finds that Kahn’s payroll management application and
resource in Rule 1’s Filter 1.1 in Kahn’s Figure 5 are interdependent because
(1) that application uses the resource, and (2) access to the resource is
conditioned on whether it is used by the application. Ans. 5-6; Kahn, col.
22, ll. 41-51; col. 23, ll. 39-46; Fig. 5. The Examiner makes a similar
finding regarding Kahn’s (1) payroll data storage resource, and (2) backup
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server to which the resource is connected in Rule 4’s Filter 4.1 which is also
shown in Figure 5. Ans. 5-6; Kahn, col. 25, ll. 3-23; Fig. 5.
We see no reason why this relative application/resource dependence
does not at least suggest interdependent components, for they are mutually
dependent at least with respect to achieving the rule-based functionality as
the Examiner indicates. Ans. 5-6. Appellants’ contention that an
administrative task directed to Kahn’s payroll management application is not
dependent on the state of the resource and vice-versa (Reply Br. 7-8) is
unavailing, for nothing in the claim precludes Kahn’s controlling access to a
resources based on rules which are dependent on respective related
component states as the Examiner indicates. Ans. 5-6.
We are therefore not persuaded that the Examiner erred in rejecting
representative claim 1, and claims 2, 4, 9, 11, 12, and 14 not separately
argued with particularity.

THE OTHER OBVIOUSNESS REJECTIONS
Since the Examiner’s obviousness rejections of claims 5-8 and 15-18
(Fin. Rej. 16-21) were not separately argued (App. Br. 13), we sustain those
rejections for the reasons previously discussed.

CONCLUSION
The Examiner did not err in rejecting (1) claims 11, 12, and 14-18
under § 101, and (2) claims 1, 2, 4-9, 11, 12, and 14-18 under § 103.

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ORDER
The Examiner’s decision rejecting claims 1, 2, 4-9, 11, 12, and 14-18
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)(iv).

AFFIRMED

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