Ex Parte Hunt et al

Patent Trials and Appeals Board

Sep 9, 2013

12259217 - (D) (P.T.A.B. Sep. 9, 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.
12/259,217 10/27/2008 Christian Lee Hunt RSW920050178US2
(378DIV)
1567
46320 7590 09/09/2013
CAREY, RODRIGUEZ, GREENBERG & O''''KEEFE, LLP
STEVEN M. GREENBERG
7900 Glades Road
SUITE 520
BOCA RATON, FL 33434
EXAMINER
MULLEN, THOMAS J
ART UNIT PAPER NUMBER
2685
MAIL DATE DELIVERY MODE
09/09/2013 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 CHRISTIAN LEE HUNT, VINCENT MITCHEL PADUA,
ROBIN RADEZ, WILLIAM ALEXANDER REICHERT III, GREGORY
COVERT SMITH, and ORIANA JEANNETTE WILLIAMS
____________

Appeal 2011-003413
Application 12/259,2171
Technology Center 2600
____________

Before CAROLYN D. THOMAS, ELENI MANTIS MERCADER, and
LARRY J. HUME, Administrative Patent Judges.

THOMAS, Administrative Patent Judge.

DECISION ON APPEAL

1 The real party in interest is IBM Corporation.
Appeal 2011-003413
Application 12/259,217

2
STATEMENT OF THE CASE
Appellants seek our review under 35 U.S.C. § 134(a) of the
Examiner’s final decision rejecting claims 10-27, which are all the claims
remaining in the application. Claims 1-9 are cancelled. We have
jurisdiction over the appeal under 35 U.S.C. § 6(b).
We AFFIRM.
The present invention relates generally to inventory management.
See Spec., ¶ [0002].
Claim 19 is illustrative:

19. A computer program product for locating a device in a
given state, said computer program product comprising a computer
readable storage medium having computer readable program code
tangibly embodied therein, said computer readable program code
comprising:
computer readable program code configured to locate a
device using an RFID tag reader and a first RFID tag associated with
the device that responds to queries from an RFID tag reader
independently of the state of the device; and
computer readable program code configured to determine
the state of the device using an RFID tag reader and a second RFID
tag associated with the device that responds to queries from an RFID
tag reader selectively in dependence upon the state of the device.

Appellants appeal the following rejections:

R1. Claims 10-27 are rejected on the ground of nonstatutory
obviousness-type double patenting as being unpatentable over claims 1-9 of
U.S. Patent No. 7,463,153; and
R2. Claims 19-27 are rejected under 35 U.S.C. § 101 because the
Appeal 2011-003413
Application 12/259,217

3
specification at paragraph 0018 defines “computer readable medium” as
encompassing “transmission media.”

ANALYSIS
Obviousness-Type Double Patenting Rejection
Appellants do not contest the rejection and merely state that they
intend to file a Terminal Disclaimer to overcome this rejection (see App. Br.
3). We note that arguments not made are considered waived.2 See 37 C.F.R.
§ 41.37(c)(1)(iv). Therefore, we pro forma sustain the Examiner’s
obviousness-type double patenting rejection of claims 10-27.

Rejection under 35 U.S.C. § 101
Issue: Did the Examiner err in rejecting the claims for encompassing
a non-statutory “signal”?

Appellants contend that “[c]laim 19 recites a computer readable
storage medium, which is not identical to a computer readable medium”
(App. Br. 4).
The Examiner found that “[w]hen claim 19 is read in light of the
specification, it is considered that ‘computer readable storage medium’ of
claim 19 is equivalent . . . [to] the ‘computer-readable medium’ discussed in
para. 0018 of the specification” (Ans. 4).

2 See Hyatt v. Dudas, 551 F.3d 1307, 1314 (Fed. Cir 2008) (“When the
appellant fails to contest a ground of rejection to the Board, section
1.192(c)(7) [(now section 41.37(c)(1)(vii))] imposes no burden on the Board
to consider the merits of that ground of rejection. . . . [T]he Board may treat
any argument with respect to that ground of rejection as waived.”).
Appeal 2011-003413
Application 12/259,217

4
We agree with the Examiner that the scope of the recited “computer
readable storage medium” encompasses transitory media (Ans. 4-6; claim
19), such as signals or carrier waves, where, as here, the Specification does
not limit the computer readable storage 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). Here, the 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.
Therefore, the medium encompasses transitory forms and is therefore
ineligible under § 101.
Therefore, we sustain the Examiner’s rejection of representative claim
19, and associated dependent claims 20-27 under § 101. (Ans. 4-6).

DECISION
We affirm the Examiner’s § 101 and obviousness-type double
patenting rejections.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).

AFFIRMED

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