Ex Parte Hughes et alDownload PDFPatent Trial and Appeal BoardApr 9, 201412259091 (P.T.A.B. Apr. 9, 2014) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte JEREMY P.J. HUGHES and RICHARD P. TATE ____________ Appeal 2011-007351 Application 12/259,091 Technology Center 2400 ____________ Before CAROLYN D. THOMAS, JOHNNY A. KUMAR, and DANIEL N. FISHMAN, Administrative Patent Judges. KUMAR, Administrative Patent Judge. DECISION ON APPEAL Appeal 2011-007351 Application 12/259,091 2 STATEMENT OF THE CASE Appellants seek our review under 35 U.S.C. § 134(a) of the Examiner’s final decision rejecting claims 35-64, which are all the claims pending in the application. Claims 1-34 have been cancelled. We have jurisdiction over the appeal under 35 U.S.C. § 6(b). We AFFIRM. The present invention relates generally to access control in a distributed data processing system. See Spec., ¶ [0002]. Claim 35 is illustrative: 35. A computer hardware system for controlling access to information used in a distributed data processing system, the distributed data processing system including an application server, a server for storing the information and including a logging tool for creating a log file, and a client computer including an application program to control a software agent that requests the information from the server, the computer hardware system comprising: a memory, at least one processor connected to the memory, the at least one processor configured to perform: identifying the software agent; storing all requests from the identified software agent in the log file; analyzing the log file; monitoring behavior of the identified software agent; and invoking at least one of a plurality of pre-defined rules to control the behavior of the identified software agent. Appeal 2011-007351 Application 12/259,091 3 Appellants appeal the following rejections: R1. Claims 50-64 are rejected under 35 U.S.C. § 101 because the claimed invention is directed to non-statutory subject matter (Ans. 3-4); R2. Claims 35, 42-50, and 57-64 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Freeman (US 6,330,588 B1, Dec. 11, 2001) and Najork (US 6,263,364 B1, Jul. 17, 2001) (Ans. 5-15); and R3. Claims 36-41 and 51-56 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Freeman, Najork, and Pettersen (US 6,826,594 B1, Nov. 30, 2004) (Ans. 15-21). Claim Groupings Based on Appellants’ arguments in the Appeal Brief, we will decide the appeal on the basis of claims 35 and 50 as set forth below. See 37 C.F.R. § 41.37(c)(1)(vii). ANALYSIS Arguments in the Reply Brief that could have been presented in the Appeal Brief to rebut rejections made in the Final Office Action are waived and not considered. Ex parte Borden, 93 USPQ2d 1473, 1474 (BPAI 2010) (informative decision) (“[T]he reply brief [is not] an opportunity to make arguments that could have been made in the principal brief on appeal to rebut the Examiner’s rejections, but were not.”). Rejection under 35 U.S.C. §101 Claims 50-64 Issue 1: Did the Examiner err in finding that the claims are directed to non-statutory subject matter? Appeal 2011-007351 Application 12/259,091 4 Appellants contend that “the term ‘computer-readable storage medium’ does not encompass a transitory, propagating signal.” Reply Br. 17. Appellants further contend that “the broadest reasonable claim construction of ‘computer-readable medium’ does not apply to a computer- readable storage medium” (App. Br. 11). The Examiner found that Appellants have “not limited the claimed computer-readable storage medium to be only examples of statutory types of computer readable medium” which “includes subject matter that is nonstatutory” and “data/signal conveyed with information encoded/embodied in the medium and in a manner that is transitory.” Ans. 22. We agree with the Examiner. We sustain the Examiner’s § 101 rejection of independent claim 50 reciting, in pertinent part, computer-readable storage medium having stored thereon computer-readable instructions. This storage, however, is insufficient to limit the claim to non-transitory forms. See Ex parte Mewherter, 107 USPQ2d 1857 (PTAB 2013) (expanded panel) (precedential) (holding recited machine-readable storage medium ineligible under § 101 since it encompasses transitory media). The Examiner refers to paragraph [0129] of the Specification in connection with the computer-readable storage medium of claim 50 (see Ans. 22). Notably, this paragraph is replete with open-ended and permissive language in connection with the disclosed implementations which hardly limits the claimed invention to these implementations, let alone non- transitory computer-readable storage medium. Appellants’ specification explains that: The present invention is preferably embodied as a computer program product for use with a computer system. Appeal 2011-007351 Application 12/259,091 5 Such an implementation may comprise a series of computer readable instructions either fixed on a tangible medium, such as a computer readable media, e.g., diskette, CD-ROM, ROM, or hard disk, or transmittable to a computer system, via a modem or other interface device, over either a tangible medium, including but not limited to optical or analog communications lines, or intangibly using wireless techniques, including but not limited to microwave, infrared or other transmission techniques. Spec., ¶ [0129]. We note the open-ended and permissive language used in this paragraph hardly limits the claimed invention to these examples - while certainly non-transitory - are merely non-limiting examples of readable medium. Nor does the claim limit the computer-readable storage medium to non-transitory forms. Also, while we interpret claims broadly but reasonably in light of the Specification, we nonetheless must not import limitations from the Specification into the claims. See Phillips v. AWH Corp., 415 F.3d 1303, 1316, 1323 (Fed. Cir. 2005) (en banc). Where, as here, a recited computer- readable storage medium is not claimed as non-transitory, and the disclosure does not expressly and unambiguously limit that medium to solely non- transitory forms via a definition or similar limiting language, the medium encompasses transitory forms and is therefore ineligible under § 101. We are therefore not persuaded that the Examiner erred in rejecting representative claim 50, and claims 51-64 for similar reasons. Rejections under 35 U.S.C. §103 We have reviewed the Examiner’s rejections in light of Appellants’ contentions that the Examiner has erred. Further, we have reviewed the Examiner’s response to claim 35-64 that has been argued by the Appellants. App. Br. 13-23; Reply Br. 18-25. Appeal 2011-007351 Application 12/259,091 6 We disagree with Appellants’ conclusions. We adopt as our own (1) the findings and reasons set forth by the Examiner in the action from which this appeal is taken and (2) the reasons set forth by the Examiner in the Examiner’s Answer in response to Appellants’ Appeal Brief. Ans. 4-21, 23-30. We concur with the conclusions reached by the Examiner. We highlight and address specific findings and arguments for emphasis as follows. Issue 2: Did the Examiner err in finding that the combined teachings of Freeman and Najork teach and/or suggest “invoking at least one of a plurality of pre-defined rules to control the behavior of the identified software agent” (hereinafter “pre-defined rules to control software agent”), as set forth in claim 35? The Examiner found that: Freeman specifically discloses the “trust resources (TR) rules” (e.g., the recited pre-defined rules) in association with the software agent’s first interaction (i.e., the recited behavior) with the trusted resources and upon return of the agent from the destination resource. Freeman further discloses that the TR rules operations to check the software agent for corruption (see Col. 11, lines 58-61 from Freeman). That is, the TR rules (e.g., the recited pre-defined rules) is to check whether the software agent is corrupted (i.e., behaving abnormally) and then control it accordingly. Ans. 25 (emphasis ours). Appellants contend that “absent from these teachings is any mention that the TR rules control the software agent. Instead, the TR rules merely ‘check the software agent for corruption.’ The Examiner’s assertion that Freeman teaches that the TR rules control the software agent is inaccurate.” Reply Br. 19. Appeal 2011-007351 Application 12/259,091 7 While Appellants contend that the claimed feature in claim 35 is patentably distinct from TR rules to control the software agent, as disclosed by Freeman, Appellants have failed to provide any meaningful analysis on why the claimed “pre-defined rules to control software agent” is distinguishable from the cited portions of Freeman. Instead, a mere conclusory statement is offered that it is patentably distinct. However, mere attorney arguments and conclusory statements that are unsupported by factual evidence are entitled to little probative value. In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997); see also In re De Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984); 37 C.F.R. § 1.111(b); and Ex parte Belinne, No. 2009- 004693, 2009 WL 2477843, slip op. at 7-8 (BPAI Aug. 10, 2009) (informative). Nevertheless, we see no error in the Examiner’s finding that the combination of Freeman and Najork has every recited element of representative claim 35. Ans. 5-6. With regard to the “pre-defined rules to control software agent” feature, Appellants have not given any special meaning to the term “control,” and thus we give this term its usual and customary meaning which simply entails to check, test, or verify. Merriam- Webster’s Tenth Collegiate Dictionary, 10th ed., 252 (1995). Here, the Examiner has shown that Freeman teaches TR rules enable operations to check the software agent for corruption (see Freeman, col. 11, ll. 58-61). In other words, the Examiner has found the term “to control” to encompass “to check.” Ans. 25. Consistent with the Examiner’s stated position (Ans. 25- 26) and based on the broadest reasonable interpretation consistent with the usual and customary meaning, Freeman’s operations to check the software agent meet the claim language. Appellants have not presented any Appeal 2011-007351 Application 12/259,091 8 persuasive evidence to convince us that the Examiner’s interpretation of “pre-defined rules to control software agent” is in error. Based on the record before us, we find no error in the Examiner’s rejection of representative claim 35 essentially for the reasons indicated by the Examiner, as our interpretation of the disclosure of Freeman coincides with that of the Examiner.1 Appellants present several arguments that Freeman/Najork/Pettersen fail to teach or suggest the limitations of dependent claims 36, 42, and 49. App. Br. 20-23; Reply Br. 21-25. The Examiner responds that Freeman/Najork/Pettersen are not deficient and points out where Freeman/Najork/Pettersen teach or suggest the limitations of claims 36, 42, and 49. Ans. 26-30. We specifically find the Examiner has articulated (id.) how the claimed features are met by the reference teachings. We agree with and accordingly adopt the Examiner’s findings of fact and analysis, and reach the same legal conclusions as in the Examiner’s Answer. Id. 1 In the event of further prosecution, we leave it to the Examiner to consider that claim 35 recites, inter alia, “at least one processor configured to perform . . . .” It has been held that the mere recitation of “configured to” is directed to functional claim language, which is not entitled to any patentable weight. At best, such recitation is a statement of intended use, which merely indicates the capability of or intent to perform the recited functions, as opposed to actually performing them, e.g., identify, store, analyze, monitor, and invoke, etc. Therefore, any arguments from Appellants that might suggest that these functions are not being performed, would not be commensurate with the scope of claim 35, as claim 35 does not require that such functions actually be performed. Thus, the Examiner need not give any patentable weight to the limitations following the configured to language. Appeal 2011-007351 Application 12/259,091 9 DECISION The rejection of claims 50-64 under 35 U.S.C. § 101 as being directed to non-statutory subject matter is affirmed. The rejection of claims 35, 42-50, and 57-64 under 35 U.S.C. § 103(a) as being unpatentable over Freeman and Najork is affirmed. The rejection of claims 36-41 and 51-56 under 35 U.S.C. § 103(a) as being unpatentable over Freeman, Najork, and Pettersen is affirmed. No time period for taking any subsequent action in connection with this appeal may be extended. See 37 C.F.R. § 1.136(a)(1)(iv) . AFFIRMED msc Copy with citationCopy as parenthetical citation