Ex Parte Gut et al

Board of Patent Appeals and Interferences

Jun 6, 2011

10793741 (B.P.A.I. Jun. 6, 2011)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte RON ABRAHAM GUT, ALEXIS PAUL TZANNES, and
EDMUND CAMPLON REITER
____________________

Appeal 2009-007574
Application 10/793,7411
Technology Center 2100
____________________

Before LANCE LEONARD BARRY, HOWARD B. BLANKENSHIP, and
JAMES R. HUGHES, Administrative Patent Judges.

HUGHES, Administrative Patent Judge.

DECISION ON APPEAL

1 Application filed March 8, 2004. This application is a Division of US
09/774,986 filed Jan. 31, 2001, now U.S. Patent No. US 7,006,099 B2,
which claims benefit of US 60/225,412 filed Aug. 15, 2000. The real party
in interest is Aware, Inc. (App. Br. 1.)
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STATEMENT OF THE CASE
Appellants appeal from the Examiner’s rejection of claims 21-39
under authority of 35 U.S.C. § 134(a). Claims 1-20 have been canceled
(App. Br. 1). The Board of Patent Appeals and Interferences (BPAI) has
jurisdiction under 35 U.S.C. § 6(b).
We affirm.
Appellants’ Invention
The invention at issue on appeal relates to a data processing system
utilizing a cache to construct (reconstruct) an uncached image from image
components. (Spec. 3:8-19; 8:5-18; 11:1-12:13.)2 Appellants explain:
The present invention relates to a cache system and
method for generating uncached objects from cached and stored
object components. One embodiment of the invention caches
image flies, where the images consist of components and are
stored in a format that allows identification and access to the
individual image components.
In one aspect, a regenerative cache system determines
that an object, such as an image file, is missing from the cache
memory. The regenerative cache system then locates sufficient
components to construct the object, where the components can
be located within the cache memory, or within an external
storage device. Once the components are located, the
regenerative cache system constructs the object.
(Spec. 3:8-16.)

2 We refer to Appellants’ Specification (“Spec.”); Appeal Brief (“App. Br.”)
filed Oct. 23, 2008; and Reply Brief (“Reply Br.”) filed Jan. 9, 2009. We
also refer to the Examiner’s Answer (“Ans.”) mailed Dec. 9, 2008.
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Representative Claim
Independent claim 21 further illustrates the invention, and is
reproduced below with the key disputed limitations emphasized:
21. A data processing system comprising:
logic adapted to:
locate a first component that is related to an
uncached image, the first component including a component tag
and a component payload, the component payload including
image information, and the first component being present in
either a cache or a storage system, and
locate a second component that is related to the
uncached image in one of the cache, the storage system, or
another storage system, the second component including a
second component tag and a second component payload, the
second component payload at least including additional image
information; and
a processor adapted to construct by the cache, the
uncached image at least from the located first and second
components.

References
The Examiner relies on the following reference as evidence in support
of the rejections:
Martin US 5,963,981 Oct. 5, 1999

Shaheen US 6,032,227 Feb 29, 2000

Hawkins US 6,389,421 B1 May 14, 2002
(filed Aug. 4, 1998)

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Rejections on Appeal
1. The Examiner rejects claim 39 under 35 U.S.C. § 101 as being
directed to non-statutory subject matter.
2. The Examiner rejects claims 21-39 on the ground of non-
statutory obviousness-type double patenting as being unpatentable over U.S.
Patent No. 7,006,099 B2.
3. The Examiner rejects claims 21-26, 28, 30-35, 37, and 39 under
35 U.S.C. § 103(a) as being unpatentable over the combination of Shaheen
and Martin.
4. The Examiner rejects claims 27, 29, 36, and 38 under 35 U.S.C.
§ 103(a) as being unpatentable over the combination of Shaheen, Martin,
and Hawkins.

ISSUES
Based on our review of the administrative record, Appellants’
contentions, and the Examiner’s findings and conclusions, the pivotal issues
before us are as follows:
1. Does the Examiner err in rejecting claim 39 under 35 U.S.C.
§ 101? The issue turns on whether the claimed subject matter is statutory
subject matter.
2. Does the Examiner err in rejecting the claims on the ground of
non-statutory obviousness-type double patenting as being unpatentable over
U.S. Patent No. 7,006,099 B2?
3. Does the Examiner err in finding the combination of Shaheen
and Martin would have taught or suggested “a processor adapted to construct
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by the cache, the uncached image at least from the located first and second
components” as recited in claim 21?

ANALYSIS
In rejecting claims under 35 U.S.C. § 103, it is incumbent upon the
Examiner to establish a factual basis to support the obviousness rejection –
the so-called “prima facie” case. See In re Piasecki, 745 F.2d 1468, 1472
(Fed. Cir. 1984) (the United States Patent and Trademark Office (USPTO)
has the initial burden of proof “to produce the factual basis for its rejection
of an application under sections 102 and 103.” (quoting In re Warner, 379
F.2d 1011, 1016 (CCPA 1967))). “[T]he Examiner bears the initial burden,
on review of the prior art or on any other ground, of presenting a prima facie
case of unpatentability.” In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir.
1992).
Appellants have the opportunity on appeal to the BPAI to demonstrate
error in the Examiner’s position. See In re Kahn, 441 F.3d 977, 985-86
(Fed. Cir. 2006) (citing In re Rouffet, 149 F.3d 1350, 1355 (Fed. Cir. 1998)).
The Examiner provides an explanation of the § 101 (Ans. 3-4) and
obviousness-type double patenting (Ans. 4-5) rejections. The Examiner also
sets forth a detailed explanation of a reasoned conclusion of obviousness in
the Examiner’s Answer with respect to each of Appellants’ claims (Ans. 5-
23), and in particular claim 21 (Ans. 6-9, 19-21). Therefore, we look to the
Appellants’ Briefs to show error in the proffered reasoned conclusions. See
Kahn, 441 F.3d at 985-86.

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Arguments Concerning the Examiner’s Rejection
of Claim 39 Under § 101
The Examiner rejects Appellants’ dependent claim 39 as being
directed to non-statutory subject matter. (Ans. 3-4.) The Examiner finds
that “claim, 39 . . . recites[ ] ‘information storage media’. In the absence of
any modifying disclosure of this limitation in the specification, the examiner
interprets the term ‘information storage media’ as [not] excluding
transmission media, signals, or any form of energy, such that the claim
clearly falls within a statutory class of invention as required under the terms
of 35 U.S.C. 101.” (Ans. 4; see App. Br. 21, claim 39.)
Appellants contend that “there is abundant antecedent basis provided
in the specification for the claimed information storage media” (App. Br. 6)
and “one of ordinary skill in the art would clearly draw a correlation
between the claimed information storage media and, for example, the
numerous storage devices discussed in the specification and illustrated in the
figures” (App. Br. 5). In summary, we understand Appellants to argue that
the recited “information storage media” would be interpreted to comprise
only statutory subject matter.
Based on the record before us, we do not find error in the Examiner’s
§101 rejection of claim 39. We agree with the Examiner that “information
storage media” may include non-statutory subject matter such as signals.
Signals are unpatentable under § 101. In re Nuijten, 500 F.3d 1346,
1355 (Fed. Cir. 2007). According to 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
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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 (“Interim Instructions”).
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-
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. Office 212 (Feb. 23, 2010) (“OG Notice”).
Therefore, we sustain the Examiner’s § 101 rejection of claim 39
because the broadest reasonable interpretation of the claimed “information
storage media” covers transitory propagating signals per se. Although non-
transitory signal-bearing media are manufactures under § 101, where, as
here, a claim that may encompass both transitory and non-transitory signal-
bearing media is non-statutory because it embraces non-statutory signals.
See Nuijten, 500 F.3d at 1355; Interim Instructions; OG Notice. Although
Appellants cite numerous examples of physical (non-transitory) storage
media in their Specification (App. Br. 5-6), the Specification does not
describe the storage media as comprising “information” (i.e., computer
instructions or “means”) for performing the recited functionality. Even if we
were to construe the referenced storage media as comprising the recited
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“information,” the referenced storage media are merely non-limiting
examples which could also include transitory recordable media, such as
signals with embedded data “recorded” on the signal itself (e.g.,
watermarks).3 Appellants’ narrow interpretation conflicts with the USPTO’s
broader interpretation of information storage (computer-readable) media
which includes signals. See Interim Instructions; OG Notice.
We are therefore not persuaded that the Examiner erred in rejecting
claim 39 under § 101.
Arguments Concerning the Examiner’s Obviousness-
Type Double Patenting Rejection
The Examiner rejects Appellants’ claims 21-39 on the ground of non-
statutory obviousness-type double patenting as being unpatentable over U.S.
Patent No. 7,006,099 B2. (Ans. 4-5.) In response, Appellants state “[t]his
rejection is respectfully requested to be held in abeyance until the indication
of allowable subject matter.” (App. Br. 6.) Appellants do not address the
substance of the Examiner’s rejection. Therefore, we summarily affirm the
Examiner’s rejection of claims 21-39 on the ground of non-statutory
obviousness-type double patenting.
Arguments Concerning the Examiner’s Rejection of
Claims 21-26, 28, 30-35, 37, and 39 Under § 103
The Examiner rejects Appellants’ claims 21-26, 28, 30-35, 37, and 39
as obvious over the combination of Shaheen and Martin. (Ans. 6-9.) The
Examiner finds that Shaheen discloses the disputed features of “a processor

3 Accord Ex parte Lake, No. 2009-007077, 2011 WL 1345317 (BPAI 2011)
(non-precedential), at *12 (finding that claimed computer program product
stored on a recordable medium encompassed transitory signals).
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adapted to construct by the cache, the image at least from the located
first and second components” (Ans. 7); i.e., “a processor which allow[s]
the selected file from first file system be stored into second file system in
case of disconnection of computer system from first file system storage” (id.
(citing Shaheen – col. 3, ll. 21-28)). The Examiner also finds Martin teaches
the remaining feature of the disputed limitation, an “uncached image.”
(Ans. 7-8.)
Appellants, on the other hand, contend that Shaheen does not disclose,
teach, or suggest images, image information, or a cache constructing images
from component information. (App. Br. 9-10; see id. at 7-8.) Instead,
according to Appellants, Shaheen describes a mobile file cache management
system that “automatically determines” space availability in the cache,
deletes files to produce free space “for caching the next object,” and expands
the cache “to logical or physical storage devices different than those on
which the original cache is stored.” (Ans. 7-8.)
Based on the record before us, we find error in the Examiner’s
obviousness rejection of the claims. We agree with Appellants that Shaheen
does not describe image files, and does not construct data, much less image
data, form components. (App. Br. 9-10.)
In reviewing Shaheen, we find no mention of image information and
no description of constructing information (data) from component portions
thereof utilizing a cache. Moreover, according to the Examiner, Shaheen
describes that “[a] computer system for managing the file system cache has a
processor which allow the selected file from first file system be stored into
second file system in case of disconnection of computer system from first
file system storage.” (Ans. 7 (emphasis omitted).) This reasoning is
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problematic. We do not understand how storing a copy of a file in a second
system would teach or suggest constructing an image from components
using a cache. Thus, we disagree with the Examiner that Shaheen would
have taught or suggested the disputed feature of “a processor adapted to
construct by the cache, the uncached image at least from the located first and
second components” (claim 21).
Absent a convincing explanation from the Examiner in support of why
the cited portions of Shaheen are deemed to teach the disputed features, we
are left to speculate how and why the reference is being applied. We decline
to engage in speculation. Consequently, we are constrained by the record
before us to find that Shaheen in combination with Martin would not have
taught or suggested each recited feature of Appellants’ independent claim 21
to one of ordinary skill in the art. Accordingly, the rejection of claim 21
fails to establish prima facie case of obviousness.
Independent claim 30 includes limitations similar in scope to the
disputed limitations of claim 21. Dependent claims 22-26 and 28
(dependent on claim 21), and 31-35, 37, and 39 (dependent on claim 30) fall
with claims 21 and 30, respectively. Thus, we reverse the Examiner’s
obviousness rejection of claims 21-26, 28, 30-35, 37, and 39.
Arguments Concerning the Examiner’s Rejection of
Claims 27, 29, 36, and 38 Under § 103
The Examiner rejects Appellants’ dependent claims 27, 29, 36, and 38
as being obvious over Shaheen, Martin, and Hawkins. (Ans. 15-18.) For the
reasons explained with respect to claim 21 and claim 30 (supra), we find
Shaheen does not disclose, teach, or suggest each feature of these claims.
Hawkins does not cure the deficiencies of the Shaheen-Martin combination
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(supra). Therefore, based on the record before us, we find that the Examiner
erred in finding Shaheen, Martin, and Hawkins would have collectively
taught or suggested each limitation recited in Appellant’s claims 27, 29, 36,
and 38. Accordingly, we reverse the Examiner’s obviousness rejection of
these claims.

CONCLUSIONS OF LAW
Appellants have not shown that the Examiner erred in rejecting claim
39 under 35 U.S.C. § 101.
Appellants have not shown that the Examiner erred in rejecting claims
21-39 on the ground of non-statutory obviousness-type double patenting.
Appellants have shown that the Examiner erred in rejecting claims 21-
39 under 35 U.S.C. § 103(a).

DECISION
We affirm the Examiner’s rejection of claim 39 under 35 U.S.C.
§ 101.
We affirm the Examiner’s rejection of claims 21-39 on the ground of
non-statutory obviousness-type double patenting.
We reverse the Examiner’s rejection of claims 21-39 under 35 U.S.C.
§ 103(a).
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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