Ex Parte Gragg

Board of Patent Appeals and Interferences

Oct 5, 2009

10628918 (B.P.A.I. Oct. 5, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte BRIAN D. GRAGG
____________

Appeal 2009-001469
Application 10/628,918
Technology Center 2100
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Decided: October 5, 2009
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Before LANCE LEONARD BARRY, JOHN A. JEFFERY, and
CAROLYN D. THOMAS, Administrative Patent Judges.

JEFFERY, Administrative Patent Judge.

DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 1-27. We have jurisdiction under 35 U.S.C. § 6(b). We
affirm-in-part.

STATEMENT OF THE CASE
Appellant invented an image forming device (e.g., printer, copier,
etc.) that includes a storage device for storing data. A storage access
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manager coordinates access to the storage device from multiple client
devices that communicate with the storage device using at least one
uncoordinating communication protocol (i.e., a protocol that enables one
client to access the storage device without other clients being aware of such
access).1 Claim 1 is illustrative with the key disputed limitation emphasized:
1. An image forming device comprising:

a storage device for storing data; and

a storage access manager configured to coordinate access to the
storage device from a plurality of client devices that communicate
with the storage device using at least one uncoordinating
communication protocol.

The Examiner relies on the following as evidence of unpatentability:
McIntyre US 2003/0063305A1 Apr. 3, 2003
Erlingsson US 2003/0233544 A1 Dec. 18, 2003
(filed June 14, 2002)
Quinn US 2004/0006616 A1 Jan. 8, 2004
(filed Feb. 25, 2003)

1. The Examiner rejected claims 11-19 under 35 U.S.C. § 101 as being
directed to non-statutory subject matter. Ans. 3-7.
2. The Examiner rejected claims 1-27 under 35 U.S.C. § 103(a) as
unpatentable over McIntyre and Quinn. Ans. 7-15.
3. The Examiner rejected claims 4, 13, and 21 under 35 U.S.C. § 103(a)
as unpatentable over McIntyre, Quinn, and Erlingsson. Ans. 15-16.

1 See generally Abstract; Spec. ¶¶ 0016, 0024-26.
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Rather than repeat the arguments of Appellant or the Examiner, we
refer to the Briefs and the Answer2 for their respective details. In this
decision, we have considered only those arguments actually made by
Appellant. Arguments which Appellant 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).

THE § 101 REJECTION
Regarding representative claim 11,3 the Examiner finds that the
recited computer-readable medium encompasses non-statutory transmission
media or signals when interpreted in light of the Specification, and therefore
is not limited to statutory subject matter under § 101. Ans. 3-7 and 16-20.
Appellant argues that claim 11 expressly recites “[a]n article of
manufacture”—one of the categories of statutory subject matter under § 101.
Appellant adds that the Examiner not only improperly dissected the claimed
invention and evaluated certain elements in isolation, but also improperly
imported limitations from the Specification into the claims. App. Br. 10-12;
Reply Br. 2-3.

2 Throughout this opinion, we refer to (1) the Appeal Brief filed August 7,
2007; (2) the Examiner’s Answer mailed October 9, 2007; and (3) the Reply
Brief filed December 4, 2007.

3 Appellant argues claims 11-19 together as a group. See App. Br. 10-12.
Accordingly, we select claim 11 as representative. See 37 C.F.R.
§ 41.37(c)(1)(vii).
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The issue before us, then, is as follows:

ISSUE
Has Appellant shown that the Examiner erred in rejecting claim 11
under § 101 by finding that the recited computer-readable medium
encompasses non-statutory transmission media or signals?

FINDINGS OF FACT
The record supports the following findings of fact (FF) by a
preponderance of the evidence:
Appellant’s Disclosure
1. According to Appellant’s Specification, “‘[c]omputer-readable
medium’ . . . refers to any medium that participates in directly or indirectly
providing signals, instructions and/or data to one or more processors for
execution. Such a medium may take many forms, including but not limited
to, non-volatile media, volatile media, and transmission media.” Spec. ¶
0009 (emphasis added).
2. “Transmission media can . . . take the form of electromagnetic
radiation, such as those generated during radio-wave and infra-red data
communications, or take the form of one or more groups of signals.” Id.
3. A common form of computer-readable media includes, among
other things, “a carrier wave/pulse.” Id.
4. “Signals used to propagate instructions or other software over a
network . . . are also considered a ‘computer-readable medium.’” Id.

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PRINCIPLES OF LAW
Signals are not patentable subject matter under § 101. In re Nuijten,
500 F.3d 1346, 1355 (Fed. Cir. 2007), reh’g denied en banc, 515 F.3d 1361
(Fed. Cir. 2008), and cert. denied, 129 S. Ct. 70 (2008)).
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 § 101 as being directed to non-statutory subject matter.

U.S. Patent & Trademark Office, Interim Examination Instructions for
Evaluating Subject Matter Eligibility Under 35 U.S.C. § 101, Aug. 2009, at
2, available at http://www.uspto.gov/web/offices/pac/dapp/opla/2009-08-
25_interim_101_instructions.pdf (emphasis in original) (“Interim
Instructions”).

ANALYSIS
Independent claim 11 calls for, in pertinent part, “an article of
manufacture embodied in a computer-readable medium.” Although the
preamble nominally characterizes the claimed invention as an “article of
manufacture”—one of the categories of statutory subject matter under
§ 101—that characterization is hardly dispositive, for we must assess the
claim as a whole to determine whether it recites statutory subject matter.
See Diamond v. Diehr, 450 U.S. 175, 188 (1981).
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In this case, the Specification unambiguously indicates that a
computer-readable medium includes “transmission media” that can be in the
form of electromagnetic radiation or signals. FF 1, 2, and 4. The
Specification further notes that computer readable media can include a
carrier wave or pulse. FF 3.
But signals are not patentable subject matter under § 101. Nuijten,
500 F.3d at 1355. Thus, when interpreted in light of the Specification,
independent claim 11 encompasses both statutory subject matter (tangible
storage media) and non-statutory subject matter (signals and carrier waves).
Such claims, however, are directed to non-statutory subject matter under
§ 101. Interim Instructions, at 2.
For the foregoing reasons, Appellant has not persuaded us of error in
the Examiner’s rejection of representative claim 11. Therefore, we will
sustain the Examiner’s rejection of that claim, and claims 12-19 which fall
with claim 11.

THE OBVIOUSNESS REJECTION OVER MCINTYRE AND QUINN
Regarding independent claim 1, the Examiner finds that McIntyre
discloses an image forming device with all the claimed subject matter except
for the client devices communicating with the storage device using at least
one uncoordinating communication protocol. The Examiner, however, cites
Quinn for this feature in concluding that the claim would have been obvious.
Ans. 7-8.

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In reaching this conclusion, the Examiner reasons that since McIntyre
teaches that (1) clients can use different message types, formats, and
communication protocols to communicate requests to the command server,
and (2) these clients could compete for access to the data storage device
without notifying other clients of such access, then McIntyre teaches
coordinating access using an uncoordinating communication protocol as
claimed. Ans. 8 and 20-22.
Appellant argues that Quinn’s use of “different” protocols does not
mean that uncoordinating communication protocols are used (i.e., protocols
that do not provide notice of access to other protocols or devices). App. Br.
12-15 (emphasis added). According to Appellant, “different” protocols
could be different coordinating protocols that provide notice of access to
each other. Reply Br. 4.
The issue before us, then, is as follows:

ISSUE
Under § 103, has Appellant shown that the Examiner erred in
rejecting claim 1 by finding that McIntyre and Quinn collectively teach or
suggest a storage access manager configured to coordinate access to a
storage device from multiple client devices using at least one uncoordinating
communication protocol as claimed?

FINDINGS OF FACT
The record supports the following additional findings of fact (FF) by a
preponderance of the evidence:

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McIntyre
5. McIntyre discloses a document production system for setting,
controlling, querying, and saving printer control settings. McIntyre,
Abstract.
6. McIntyre’s system includes multiple printers 120 that
communicate with a computer 110 via serial cables, parallel cables, SCSI
ports, USB ports, IR ports, or other suitable wired or wireless
communication technologies. McIntyre, ¶ 0023; Fig. 1.
7. Computer 110 includes a printer control program 150 that
facilitates the creation, storage, and preservation of printer control settings.
McIntyre, ¶ 0024; Fig. 1.
8. In another embodiment, the printer control program 250 resides
within each printer 220, and the user can save the printer control settings to
storage media 240 in printer-readable formats. McIntyre, ¶ 0032-33; Fig. 2.

Quinn
9. Quinn discloses storage environment management techniques. In
one implementation, a computer system 202 with a command server
application program 208 (“command server”) provides high-level
application programming interfaces (APIs) for use by storage management
applications (i.e., client applications 212). Using these APIs, a storage
environment management application can issue simple high-level commands
to perform storage management operations without having to worry about
the low-level array-specific commands. Quinn, Abstract; ¶¶ 0019-20; Figs.
2 and 5.

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10. Client applications 212 communicate with computer system 202
via communication links 206. Various communication protocols can be
used including TCP/IP, HTTP, XML, wireless application protocol, etc.
Quinn, ¶¶ 0022, 0025, 0032; Figs. 2 and 5.
11. Exemplary client applications 212 include storage management
applications, third party applications, etc. Client applications may use
different message types/formats and communication protocols to
communicate command requests to command server 208 (e.g., formats
including XML, HTTP, command line interface, etc.). Quinn, ¶ 0047.
12. After receiving a command request responsive to an API invoked
by a client application, command server 208 determines (1) a particular
storage array to which the request is directed, and (2) a communication
protocol for communicating with the particular storage array (e.g., Simple
Network Management Protocol (SNMP), TCP/IP, proprietary protocols,
etc.). The command server then determines a low-level command in the
protocol used by the storage array to perform the requested command.
Quinn, ¶ 0028, 0033; Fig. 3 (steps 302-308).
13. Figure 5 details the command server 208 which includes (1)
security layer 502; (2) translation layer 504; (3) agent layer 506; and (4)
transport layer 508. Quinn, ¶ 0046; Fig. 5.
14. The translation layer comprises communication modules 510 that
can use various protocols and formats to interface with client applications
212. Quinn, ¶ 0048; Fig. 5.
15. The agent layer selects and invokes an agent 518 for processing
the command request. For example, an “AddVolume” agent is selected to
process an “AddVolume” command request. To this end, the “AddVolume”
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agent performs various operations including (1) gaining exclusive access to
(or locking) the storage array; (2) obtaining the storage array’s latest data
configuration; (3) adding a volume to the storage array; (4) verifying that the
volume was properly added; and (5) releasing the lock on the storage array.
Quinn ¶¶ 0051-52, 0063; Figs. 5 and 6.

Appellant’s Disclosure
16. According to Appellant’s Specification, “uncoordinating
communication protocols include protocols from different devices that may
compete for access to the storage device 105 where at least one protocol
does not provide notice of the access to the other protocol or device.” Spec.
¶ 0016. Accord Spec. ¶ 0024.
17. “In general, uncoordinating communication protocols may
include protocols where one client can potentially access the storage device
without other clients being aware of such access.” Spec. ¶ 0024.

PRINCIPLES OF LAW
In rejecting claims under 35 U.S.C. § 103, it is incumbent upon the
Examiner to establish a factual basis to support the legal conclusion of
obviousness. See In re Fine, 837 F.2d 1071, 1073 (Fed. Cir. 1988). If the
Examiner’s burden is met, the burden then shifts to the Appellant to
overcome the prima facie case with argument and/or evidence. Obviousness
is then determined on the basis of the evidence as a whole and the relative
persuasiveness of the arguments. See In re Oetiker, 977 F.2d 1443, 1445
(Fed. Cir. 1992).
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“[T]he specification is the single best guide to the meaning of a
disputed term, and . . . acts as a dictionary when it expressly defines terms in
the claims or when it defines terms by implication.” Phillips v. AWH Corp.,
415 F.3d 1303, 1321 (Fed. Cir. 2005) (en banc) (internal quotation marks
and citations omitted).

According to the U.S. Supreme Court:
When there is a design need or market pressure to solve a
problem and there are a finite number of identified, predictable
solutions, a person of ordinary skill has good reason to pursue
the known options within his or her technical grasp. If this
leads to the anticipated success, it is likely the product not of
innovation but of ordinary skill and common sense. In that
instance the fact that a combination was obvious to try might
show that it was obvious under § 103.

KSR Int’l v. Teleflex, Inc., 550 U.S. 398, 421 (2007).

ANALYSIS
Claims 1-10
We begin by construing the term “uncoordinating communication
protocol,” for it is a key term in the dispute before us. To this end, we turn
to Appellant’s Specification since it is the single best guide to ascertain the
meaning of a disputed term. Phillips, 415 F.3d at 1321.
Appellant’s specification defines “uncoordinating communication
protocols” as protocols in which one client can potentially access a storage
device without other clients being aware of such access. FF 16-17. That is,
uncoordinating communication protocols do not notify other protocols or
devices regarding this access. FF 16.
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With this construction, we turn to the cited prior art. In the rejection,
the Examiner acknowledges that McIntyre does not disclose using
uncoordinating communication protocols, and relies on Quinn for this
feature. Ans. 8. But in the Response to Arguments section, the Examiner
nonetheless asserts that McIntyre’s client devices “may compete for access
to the data storage device, and at least one protocol or device does not
provide notice of the access to the other protocol or device . . . .” Ans. 21.
Although Appellant acknowledges that McIntyre’s devices may
compete for access (Reply Br. 4), we agree with Appellant that McIntyre
fails to disclose ways to deal with such situations, let alone teach or suggest
coordinating access using an uncoordinating protocol as claimed. McIntyre
does indicate that the printers communicate with the computer 110 via a
variety of ways, including using serial cables, parallel cables, SCSI ports,
USB ports, IR ports, or other suitable wired or wireless communication
technologies. FF 6. But even assuming that the protocols associated with
these diverse communication technologies are different, we cannot say that
they constitute “uncoordinating communication protocols” as the Examiner
asserts, let alone that McIntyre’s system coordinates access based on such
protocols. To do otherwise would require us to resort to speculation.
We reach a similar conclusion regarding Quinn. To be sure, Quinn
uses a variety of different communication protocols to interface with the
client applications to, among other things, communicate command requests
to the command server. FF 10, 11, and 14. And Quinn’s command server
selects a protocol from a variety of different protocols to communicate with

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a particular storage array. FF 12. But nothing in Quinn indicates that these
protocols are uncoordinating communication protocols as claimed. As
Appellant indicates (Reply Br. 4), these protocols could very well be
coordinating and therefore notify each other regarding access.
Although Appellant’s assertion is just as speculative as the
Examiner’s regarding uncoordinated protocols in Quinn (Ans. 21-22), we
nonetheless find that Quinn is silent in this regard. Consequently, any
assertions about the nature of these protocols as “uncoordinated” or
otherwise without corroborating evidence amounts to pure speculation.
That said, however, we recognize that this case presents us with a
close question. On the one hand, the cited references’ silence about the
nature of the protocols being “coordinating” could arguably mean that they
are “uncoordinating” by negative implication.4 That is, can we reasonably
assume that McIntyre’s and Quinn’s protocols are “uncoordinating” absent
evidence to the contrary?
Although this is a difficult question, we nonetheless answer this
question “no” based on the record before us. As we indicated previously,
Appellant has defined the term “uncoordinating communication protocol”
specifically in the Specification (FF 16-17), and to find that the unspecified
protocols in Quinn meet this criteria would require us to resort to
speculation. That we will not do.

4 In that sense, the term “uncoordinating” would be akin to a negative
limitation. See generally Animal Legal Defense Fund v. Quigg, 932 F.2d
920, 923 (Fed. Cir. 1991) (“The use of a negative limitation to define the
metes and bounds of the claimed subject matter is a permissible form of
expression.”).
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On the other hand, any given communications protocol is arguably
either coordinating or it is not. As such, there would be only two
possibilities for any such protocol: coordinating and uncoordinating. In that
sense, these two possibilities would therefore constitute a finite number of
identified, predictable solutions that could raise a legitimate question as
whether it would have been obvious to try these two different protocols,
assuming that there is a design need or market pressure to solve such a
problem. See KSR, 550 U.S. at 421 (“When there is a design need or market
pressure to solve a problem and there are a finite number of identified,
predictable solutions, a person of ordinary skill has good reason to pursue
the known options within his or her technical grasp.”).
But whether this is actually the case is a question we cannot answer
on the record before us, for there may be other types of protocols that could
include attributes of both coordinating and uncoordinating protocols. As
such, we cannot say that there would be a finite number of identified,
predictable solutions, let alone that it would have been obvious to try them
to arrive at the claimed invention.
In any event, there is insufficient evidence on the record before us to
establish that the protocols in Quinn (or McIntyre for that matter) are
uncoordinating or otherwise. We are therefore constrained by the record
before us to reverse the Examiner’s obviousness rejection of independent
claim 1, and dependent claims 2-10 for similar reasons.

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Claims 11-27
We reach a similar conclusion regarding independent claim 11 which
calls for, in pertinent part, that the first communication protocol does not
provide notice of an access to the second communication protocol. This
limitation essentially restates the function of an “uncoordinating
communication protocol” in accordance with the term’s definition. See FF
16-17. Since we find insufficient evidence on this record of such a protocol,
we cannot sustain the Examiner’s rejection of independent claim 11 for the
reasons indicated with respect to claim 1.
We also find the Examiner’s reliance (Ans. 23) on Quinn’s
“AddVolume” agent (FF 15) as purportedly teaching the recited contention
logic problematic at best. First, the Examiner’s assertion that gaining
exclusive access or locking the storage array allegedly “intrinsically results
from a simultaneous access conflict between a requesting (or pending) agent
and the agent currently accessing the storage array” (Ans. 23) is unfounded
and unpersuasive.
To be sure, Quinn’s “AddVolume” agent performs various operations
including gaining exclusive access to (or locking) the storage array. FF 15.
But there is nothing to suggest that there is any “access conflict” resulting in
this operation as the Examiner seems to suggest, let alone a simultaneous
access conflict.
Nevertheless, claim 11 calls for “contention logic” that defines “rights
for simultaneous access to the storage device” from the two recited
protocols. In this sense, we can see how Quinn’s locking the storage array
for exclusive access (FF 15) would, in effect, define “rights for simultaneous
access” to the storage device—namely, no right to simultaneous access.
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But this interpretation, at best, requires an inference that there would
be a received access request following this locking procedure (a
circumstance that is not disclosed in Quinn in any event), and that Quinn’s
system would somehow determine whether access is permissible based on
the “contention status” between the locked state and the subsequent access
request. We find that such an interpretation of this functionality strained at
best, and, as such, merely speculative. We are therefore persuaded that the
Examiner erred in rejecting claim 11 for this additional reason.
For the foregoing reasons, Appellant has persuaded us of error in the
Examiner’s rejection of independent claim 11, and dependent claims 12-19
for similar reasons. Since independent claim 20 recites limitations
commensurate to those in claim 11, we will also not sustain the Examiner’s
rejection of claims 20-27 for similar reasons.

THE OBVIOUSNESS REJECTION OVER MCINTYRE, QUINN, AND ERLINGSSON
Regarding the obviousness rejection of dependent claims 4, 13, and 21
(Ans. 15-16), since we find that Erlingsson does not cure the deficiencies
noted above with respect to the independent claims, we will not sustain the
obviousness rejection of claims 4, 13, and 21 for similar reasons.

CONCLUSIONS
Appellant has not shown that the Examiner erred in rejecting claims
11-19 under § 101. Appellant, however, has shown that the Examiner erred
in rejecting claims 1-27 under § 103.

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ORDER
The Examiner’s decision rejecting claims 1-27 is affirmed-in-part.
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-IN-PART

pgc

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