Ex Parte Goud et al

Board of Patent Appeals and Interferences

Jul 20, 2009

10306065 (B.P.A.I. Jul. 20, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte GUNDRALA D. GOUD and VINCENT J. ZIMMER
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Appeal 2008-003121
Application 10/306,065
Technology Center 2100
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Decided:1 July 20, 2009
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Before ALLEN R. MACDONALD, Vice Chief Administrative Patent Judge,
JOHN A. JEFFERY, and STEPHEN C. SIU, Administrative Patent Judges.

JEFFERY, Administrative Patent Judge.

DECISION ON APPEAL

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, begins to run from the decided date
shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Date (electronic delivery).
Appeal 2008-003121
Application 10/306,065

Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 1-10. Claims 11-29 have been indicated as containing
allowable subject matter. Ans. 2. We have jurisdiction under 35 U.S.C.
§ 6(b). We affirm and enter a new ground of rejection for claims 11-20
under 37 C.F.R. § 41.50(b).

STATEMENT OF THE CASE
Appellants invented a system abstraction layer for a basic input/output
system (BIOS) program that enables selection from among at least two
different processor abstraction layer (PAL) components. As such, it is
unnecessary to update the entire BIOS system each time a PAL component
needs to be updated.2 Claims 1 and 11 are illustrative:
1. A method comprising:

providing at least two selectable processor abstraction layer B
components within one basic input/output system program.

10. The method of claim 1 including providing a catalog of selectable
processor abstraction layer B components.

11. An article comprising a medium storing instructions that, if
executed, enable a processor-based system to:

provide at least two selectable processor abstraction layer B
components within one basic input/output system program.

2 See generally Abstract; Spec. 7:10-25.

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The Examiner rejected claims 1-10 under 35 U.S.C. § 101 as being
directed to non-statutory subject matter. Ans. 3 and 4.
Rather than repeat the arguments of Appellants or the Examiner, we
refer to the Briefs and the Answer3 for their respective details. In this
decision, we have considered only those arguments actually made by
Appellants. Arguments which Appellants could have made but did not make
in the Briefs have not been considered and are deemed to be waived. See 37
C.F.R. § 41.37(c)(1)(vii).
Regarding representative claim 1,4 the Examiner finds that the claim
is directed to an abstract idea that is not tied to a machine that would result
in a practical application. Ans. 3-4. According to the Examiner, the recited
selectable processor abstraction layer B components are nothing more than
selectable subroutines/software/code/firmware components within a program
that effectively pre-empts an abstract idea. Ans. 4-5.
Appellants argue that claim 1 “is rife with physical materials” since it
calls for processor abstraction layer B components and a basic input/output
system (BIOS) program. App. Br. 11. According to Appellants, the claim is
statutory because it recites (1) a program, and (2) a concrete and tangible
result, namely a BIOS program “with certain characteristics never before
seen in the prior art.” Reply Br. 1-2.

3 Throughout this opinion, we refer to (1) the Appeal Brief filed September
6, 2006; (2) the Examiner’s Answer mailed September 14, 2007; and (3) the
Reply Brief filed December 8, 2006.
4 Appellants argue claims 1-9 together as a group and separately argue claim
10. See App. Br. 11; see also Reply Br. 1-3. Accordingly, we select claim 1
as representative of the group comprising claims 1-9 and treat claim 10
separately. See 37 C.F.R. § 41.37(c)(1)(vii).

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Regarding claim 10, the Examiner finds that providing a catalog of
selectable processor abstraction layer B components is likewise non-
statutory since this limitation also pre-empts an abstract idea. Ans. 5.
Appellants contend that claim 10 provides a concrete result, namely a
program, and that providing a catalog involves providing something in
tangible form (e.g., a memory or storage medium). App. Br. 11;
Reply Br. 2.
The issues before us, then, are as follows:

ISSUES
A. Issues on Appeal
(1) Have Appellants shown that the Examiner erred in finding that
providing at least two selectable processor abstraction layer B components
within one BIOS program as recited in claim 1 does not constitute a
statutory process under § 101?
(2) Have Appellants shown that the Examiner erred in finding that
providing a catalog of plural selectable processor abstraction layer B
components as recited in claim 10 does not constitute a statutory process
under § 101?
B. Additional Issues Raised by the Pending Claims
and Addressed in a New Ground of Rejection
(3) Whether method claims 11-17 are unpatentable under 35 U.S.C.
§ 112, first paragraph, as not being enabled for the scope of the claims
because they are single means claims?

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FINDINGS OF FACT
The record supports the following findings of fact (FF) by a
preponderance of the evidence:
1. “Before the operating system is called, the basic input/output
system (BIOS) is responsible for initializing and booting the processor-based
system.” Spec. 1:4-6.
2. The lowest level of the BIOS may be the processor abstraction
layer (PAL) that communicates with the hardware, particularly the
processor. Spec. 1:9-12.
3. In one implementation, two processor-specific PAL components
can be provided: (1) PAL_A_SPECIFIC, and (2) PAL-B. “These two
processor-specific components may typically be stored in system flash and
may have functionality akin to that normally handled by microcode.” Spec.
1:19−2:3.
4. “Various PAL-B components may be compressed, stored and
accessed as appropriate given the applicable processor type. The selection
of the appropriate component may be done without user interaction in some
embodiments.” Spec. 7:12-16.
5. “A catalog 24 of compressed PAL-B images may be stored in a file
partition 12 in one embodiment. . . . In another embodiment the catalog 24
may be stored in a flash-based directory. Other storage access arrangements
may also be used including network or other extensible storage channels.”
Spec. 3:22−4:4.
6. In one embodiment, the BIOS storage 10 may be a flash memory.
Spec. 4:14-17.

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PRINCIPLES OF LAW
Under § 101, there are four categories of subject matter that are
eligible for patent protection: (1) processes; (2) machines; (3) manufactures;
and (4) compositions of matter. 35 U.S.C. § 101. While the scope of
patentable subject matter encompassed by § 101 is “extremely broad” and
intended to “‘include anything under the sun that is made by man,’” it is by
no means unlimited. In re Comiskey, 554 F.3d 967, 977 (Fed. Cir. 2009)
(quoting Diamond v. Chakrabarty, 447 U.S. 303, 309 (1980)). For example,
laws of nature, abstract ideas, and natural phenomena are excluded from
patent protection. Diamond v. Diehr, 450 U.S. 175, 185 (1981).
It is the second exclusion noted above—abstract ideas—that is
relevant to the appeal before us. Thus, even if the claimed invention
nominally recites subject matter that falls within the enumerated categories
under § 101, the claimed invention would still not recite patentable subject
matter if the claim as a whole is nonetheless directed to an abstract idea.
As the U.S. Supreme Court has noted, “‘[a]n idea of itself is not
patentable[]’….‘A principle, in the abstract, is a fundamental truth; an
original cause; a motive; these cannot be patented, as no one can claim in
either of them an exclusive right.’” Id. at 185 (citations omitted).
In determining whether a claim as a whole is directed to an abstract
idea, the Court has drawn a key distinction between (1) claims that seek to
wholly pre-empt the use of a fundamental principle, and (2) claims that are
merely limited to foreclosing others from using a particular application of
that fundamental principle. See In re Bilski, 545 F.3d 943, 957 (Fed. Cir.
2008) (en banc), cert. granted, 77 U.S.L.W. 3442, 3653, 3656 (U.S. June 1,
2009) (No. 08-964).
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Based on U.S. Supreme Court precedents, Bilski restated the U.S.
Supreme Court’s “definitive test to determine whether a process claim is
tailored narrowly enough to encompass only a particular application of a
fundamental principle rather than to pre-empt the principle itself.” Bilski,
545 F.3d at 954. This restatement, embodied as the “machine-or-
transformation test,” requires that a claimed process either (1) be tied to a
particular machine or apparatus, or (2) transform a particular article into a
different state or thing. Id. This test ensures that the claimed process does
not pre-empt uses of the principle that do not use the specified machine or
apparatus. The test further precludes a claimed process from pre-empting
“the use of the principle to transform any other article, to transform the same
article but in a manner not covered by the claim, or to do anything other than
transform the specified article.” Id.

ANALYSIS
Interpreting claim 1 as a whole, we find the recited step is not tied to a
particular machine or apparatus, nor does it transform a particular article into
a different state or thing. We address each prong of the machine-or-
transformation test in turn.

Claim 1 Is Not Tied To a Particular Machine or Apparatus
Claim 1 calls for providing at least two selectable processor
abstraction layer B components within one BIOS program. In effect, the
claim provides selectable components that are contained within a program.
The claim, however, is silent regarding any machine that executes this
program, let alone a particular machine.
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Although the BIOS is responsible for initializing processor-based
systems (FF 1), and that the PAL is intended to communicate with hardware
(e.g., the processor) (FF 2), the claim is silent regarding these hardware
elements. And while the PAL-B components are processor-specific and
typically stored in system flash memory (FF 3), the components themselves
are akin to software (see FF 3) and are not tied to a particular machine. That
these components can be compressed, stored, and accessed given a particular
processor type (FF 4) does not provide the requisite tie to a particular
machine or apparatus in claim 1.
Nevertheless, even assuming, without deciding, that a machine were
required to implement the recited method, such a machine would not be a
particular machine as Bilski requires. See Bilski, 545 F.3d at 961-62. At
best, such a nominal structural recitation would be a tantamount to a general
purpose computer and would not tie the process to a particular machine or
apparatus.5 Indeed, such a nominal recitation of physical structure
tantamount to a general purpose computer is analogous to the recitation of
storing binary coded decimal signals in a shift register that the U.S. Supreme
Court found to be unpatentable in Benson. See Benson, 409 U.S. at 73
(listing claim 8 which calls for, in pertinent part, “storing the binary coded
decimal signals in a reentrant shift register”) (emphasis added). In any
event, “[n]ominal recitations of structure in an otherwise ineligible method
fail to make the method a statutory process.” Ex parte Langemyr, App. No.
2008-1495, slip op., at 20 (BPAI May 28, 2008) (Informative) (citing

5 In Gottschalk v. Benson, 409 U.S. 63 (1972), the Court held that claims
directed to a method for converting binary-coded-decimal (BCD) numerals
into pure binary numerals for use with a general-purpose digital computer
were nonstatutory under § 101.
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Benson, 409 U.S. at 71-72), available at
http://www.uspto.gov/web/offices/dcom/bpai/informative_opinions.html
(last visited Mar. 15, 2009).
For the foregoing reasons, we find that claim 1 is not tied to a specific
machine or apparatus.

Claim 1 Does Not Transform a Particular Article Into a Different State or
Thing

We also find that claim 1 does not transform a particular article into a
different state or thing. Merely providing selectable components within a
program, in effect, provides a particular program with those components.
Merely providing a program with particular components, however, falls well
short of transforming a particular article into a different state or thing as
Bilski requires.
Bilski does, however, recognize that certain types of data can be
transformed to meet the transformation test. For example, the court cites the
X-ray attenuation data in In re Abele, 684 F.2d 902 (CCPA 1982) which not
only represented physical and tangible objects, but was also transformed into
a particular visual depiction of a physical object on a display. Bilski, 545
F.3d at 962-63. But the method of claim 1 falls well short of such a
transformation.
Lastly, Appellants’ arguments (Reply Br. 1-3) regarding the claimed
process being statutory in that it produces a concrete and tangible result are
unavailing. The “useful, concrete, and tangible result” test pronounced in
State Street Bank & Trust Co. v. Signature Financial Group, 149 F.3d 1368,
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1373 (Fed. Cir. 1998) is no longer adequate. In re Ferguson, 558 F.3d 1359,
1364 n.3 (Fed. Cir. 2009) (“[T]he ‘useful, concrete and tangible result test’
is insufficient to determine whether a claim is patent-eligible under § 101 . . .
and is inadequate.” (quoting Bilski, 545 F.3d at 959-60 (internal quotation
marks omitted)). See also id. at 960 n.19 (“[T]hose portions of our opinions
in State Street and AT&T [Corp. v. Excel Communications Inc., 172 F.3d
1352 (Fed. Cir. 1999)] relying solely on a ‘useful, concrete and tangible
result’ analysis should no longer be relied on.”). Appellants’ arguments
based on this test are therefore not persuasive.
For the foregoing reasons, claim 1 fails to recite statutory subject
matter under § 101. We will therefore sustain the Examiner’s rejection of
claim 1 and claims 2-9 not separately argued.

Claim 10
We reach a similar conclusion regarding claim 10 which calls for
providing a catalog of plural selectable processor abstraction layer B
components. Merely providing a catalog of selectable components does not
tie the process to a particular machine or apparatus, nor does it transform a
particular article into a different state or thing.
The Examiner equates the recited catalog with a list (Ans. 5), and we
see no error in that interpretation. Even assuming, without deciding, that
providing such a catalog (or list) required some sort of memory to store the
catalog (see FF 4), such a nominal recitation would be tantamount to a

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general purpose computer and would not be tied to a particular machine.
And as we noted above, providing a catalog of selectable PAL-B
components hardly transforms a particular article into a different state or
thing.

New Grounds of Rejection Under 37 C.F.R. § 41.50(b)
Claims 11-20 are rejected under 35 U.S.C. § 112, first paragraph as an
improper single means claim.
Claim 11 merely recites an “an article comprising a medium storing
instructions” without further structure and fails to recite specific structure to
perform the recited functions.
The Specification provides several examples of storage media that
apparently correspond to the recited article. However, it is by no means
limited to those examples. For example, the Specification indicates that the
BIOS storage 10 may be a flash memory. FF 6 (emphasis added). The
Specification also notes that the catalog of compressed PAL-B images may
be stored in a file partition 12 in one embodiment, but can be stored in a
flash-based directory in another embodiment. FF 5. But the Specification
also indicates that other storage access arrangements can be used including
network or other extensible storage channels. Id.
Since there is only one recited “means” (i.e., the “article comprising a
medium storing instructions”) in claim 11, this claim is a single means claim
which is improper under § 112, first paragraph. Based on the sheer scope
and breadth of the types of devices envisioned to correspond to this article in
the Specification, claim 11 covers every conceivable medium accessible by a
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machine that can contain instructions for achieving the stated result. The
Specification, however, discloses at most only those examples known to the
inventor.
Accordingly, claim 11 is unpatentable under 35 U.S.C. § 112, first
paragraph for lacking an enabling disclosure commensurate with the scope
of the claim. See In re Hyatt, 708 F.2d 712, 714 (Fed. Cir. 1983).
For the foregoing reasons, claims 11-20 are unpatentable under
35 U.S.C. § 112, first paragraph as an improper single means claim.

CONCLUSIONS
Appellants have not shown that the Examiner erred in rejecting claims
1-10 under § 101. We have also entered a new ground of rejection for
claims 11-20 under § 112, first paragraph.

ORDER
The Examiner’s decision rejecting claims 1-10 is affirmed. We have
also entered a new ground of rejection for claims 11-20 under § 112, first
paragraph.
This decision contains a new ground of rejection pursuant to 37
C.F.R. § 41.50(b) that provides that “[a] new ground of rejection . . . shall
not be considered final for judicial review.”
Section 41.50(b) also provides that the Appellants, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new ground of rejection to
avoid termination of the appeal as to the rejected claims:
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(1) Submit an appropriate amendment of the claims so rejected
or new evidence relating to the claims so rejected, or both, and
have the matter reconsidered by the examiner, in which event
the proceeding will be remanded to the examiner. . . .

(2) Request that the proceeding be reheard under § 41.52 by the
Board upon the same record. . . .

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
37 C.F.R. § 41.50(b)

pgc

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