Ex Parte Hyvonen

Patent Trials and Appeals Board

Feb 11, 2013

10520171 - (D) (P.T.A.B. Feb. 11, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte JORKKI HYVONEN
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Appeal 2010-007862
Application 10/520,171
Technology Center 2600
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Before: DAVID M. KOHUT, BRYAN F. MOORE, and
MICHAEL J. STRAUSS, Administrative Patent Judges.

STRAUSS, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2010-007862
Application 10/520,171
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STATEMENT OF CASE
Appellant appeals under 35 U.S.C. § 134 from a rejection of claims 8-
11 and 14-16. Claims 1-7, 12 and 13 are canceled. We have jurisdiction
under 35 U.S.C. § 6(b).
We REVERSE and ENTER A NEW GROUND OF REJECTION
PURSUANT TO 37 C.F.R §41.50(b).

The claims are directed to searching for symbol string. Claim 8,
reproduced below, is illustrative of the claimed subject matter:
8. A computer readable medium encoded with a computer
program for executing a method for searching for an input
symbol string among a set of symbol strings, comprising:
creating a trie data structure of symbol strings, wherein
the symbol strings are grouped into branches in such a manner
that the symbol strings beginning with the same symbols belong
to the same branch, and the symbol strings in the same branch
divide into new branches at the symbols, from which onwards
the symbols strings differ from each other,
receiving an input formed of an input symbol string,
proceeding from the starting point of the trie data
structure along a branch to a calculation point indicated by the
next symbol,
calculating distances at the calculation point between a
sample symbol string formed by the symbols of the calculation
point of the branch in question and the calculation points
preceding it and the input symbol string by comparing these in
alternative ways,
calculating at the calculation point also the smallest
possible length difference corresponding to each distance that
indicates how much the length of the remaining part of the
input symbol string not examined in the distance calculation
differs from the lengths remaining in the symbols strings
passing through the calculation point, and calculating on the
basis of each distance and corresponding length difference a
reference value,
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selecting repeatedly the next branch to follow to the
calculation point indicated by the next symbol, at which said
calculation is repeated for the new calculation point, said
selection of the next branch being performed in such a manner
that next the routine proceeds from the calculation point, from
which the lowest reference value has been obtained as result,
after the calculation has terminated, selecting one or
more symbol strings having the shortest distance to the input
symbol string on the basis of the performed calculations, and
using the selected symbol string(s) to produce a response.

REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Ballard US 5,377,281 Dec. 27, 1994
Kwok US 2002/0165873 A1 Nov. 7, 2002

REJECTIONS
The Examiner made the following rejections:
Claim 15 stands rejected under 35 U.S.C. § 101 because the invention
is directed to non-statutory subject matter. Ans. 4.
Claims 8-11, 14, and 15 stand rejected under 35 U.S.C. § 112 first
paragraph as failing to comply with the written description requirement.
Ans. 6.
Claim 15 stands rejected under 35 U.S.C. § 112 second paragraph as
being indefinite. Ans. 6.
Claims 8-11 and 14-16 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Ballard and Kwok. Ans. 7.

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Application 10/520,171
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APPELLANT’S CONTENTIONS
1. Claim 15 is directed to an apparatus and therefore to statutory
subject matter. App. Br. 6-7, Reply Br. 1-2.
2. Claims 8-11, 14 and 15 comply with 35 USC 112, first paragraph
written description requirement, original claim 6 reciting “[a] data medium
readable by computer, characterized in that a computer program is readable
from the data medium for performing the method according to any one of
claims 1 to 4.” App. Br. 7, Reply Br. 2.
3. Claim 15 complies with 35 USC 112, second paragraph, since “one
of ordinary skill in the art would understand that the apparatus need not be
pre-loaded with the program and only need be capable of being loaded with
a program and that the apparatus can be operated based on a computer
program, circuits or a combination of the two.” App. Br. 8, Reply Br. 2-3.
4. Claims 8-11 and 14-16 would not have been obvious since “the edit
distance calculation disclosed by Kwok appears to be closer to the claimed
distance calculation, and not the claimed length difference calculation.”
App. Br. 9-13, Reply Br. 3-6.1

ISSUES ON APPEAL
Based on Appellant’s arguments in the Appeal Brief (App. Br. 6-13)
and Reply Brief (Reply Br. 2-6) the issues presented on appeal are whether
(i) claim 15 recites statutory subject matter; (ii) the disputed computer
readable medium of claims 8-11, 14 and 15 find support in the application as
filed, (iii) whether the term “loadable” renders claim 15 indefinite, and (iv)

1 As our resolution of this contention 4 is dispositive of the outcome of the
appeal of the rejection of claims 8-11 and 14-16 under 35 U.S.C. § 103(a),
we do not address Appellant’s other contentions of error with regard to those
claims.
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claims 8-11 and 14-16 are rendered obvious by the combination of Ballard
and Kwok.

ANALYSIS
We have reviewed the Examiner’s rejections in light of Appellant’s
arguments that the Examiner has erred.
We agree with Appellant’s conclusions as to all rejections of the
claims.
In connection with contention 1, Appellant argues that claim 15 is
directed to an apparatus and therefore to statutory subject matter. App. Br.
6-7; Reply Br. 1-2. The Examiner responds “that the phrase ‘[a]n apparatus
loadable with a computer readable medium encoded with a computer
program’ implies that the limitations recited in the claims are in fact
mathematical algorithm limitations ‘loadable’ onto a computer, . . .,” Ans.
12. We disagree. Claim 15 recites an “apparatus” including an input and an
output and structure recited in terms of means for performing specified
functions as depicted in the block diagram of Fig. 3. The recited means are
disclosed as circuits and/or programs (Spec. [0042]). The required program
is shown as a flow chart in Fig. 1 with the functioning of an example given
in the Specification at paragraphs [0016] – [0041]. Based on these
limitations we find that the claim is directed to an apparatus and therefore to
statutory subject matter. Accordingly we will not sustain the rejection of
claim 15 under 35 U.S.C. § 101.
In connection with contention 2, Appellant argues that claims 8-11, 14
and 15 comply with the written description requirement of 35 USC 112, first
paragraph, based on the language of original claim 6 reciting “[a] data
medium readable by computer, characterized in that a computer program is
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readable from the data medium for performing the method according to any
one of claims 1 to 4.” App. Br. 7, Reply Br. 2. The Examiner responds that
“since a ‘data medium’ is no longer recited in the claim language, support
for a ‘computer readable medium’ is not present.” Ans. 13. We disagree
with the Examiner. The claims are part of the Specification. See the Manual
of Patent Examining Procedure (MPEP) § 2163(I) (B) Rev. 6, Sept. 2007,
citing to In re Benno, 768 F.2d 1340 (Fed. Cir. 1985). Original claim 6’s
recitation of “[a] data medium readable by computer” would have conveyed
to one skilled in the art that Appellant, at the time the application was filed,
had possession of the invention so claimed. “[M]any original claims will
satisfy the written description requirement . . . .” Ariad Pharm., Inc. v. Eli
Lilly & Co., 598 F.3d 1336, 1349 (Fed. Cir. 2010) (en banc). See also
MPEP § 2163(I)(A), citing to Wertheim, 541 F.2d 257, 263 (CCPA 1976),
states written description may be satisfied by the original claims, and that
there is a strong presumption that an adequate written description of the
claimed invention is present when filed. The slight rewording of “data
medium readable by computer” to the present “computer readable medium”
language is a change of form only. Therefore, the disputed claim language
complies with the written description requirement and we will not sustain
the rejection of claims 8-11, 14, and 15 under 35 U.S.C. § 112 first
paragraph.
In connection with contention 3, Appellant argues that claim 15
complies with 35 USC 112, second paragraph, since “one of ordinary skill in
the art would understand that the apparatus need not be pre-loaded with the
program and only need be capable of being loaded with a program and that
the apparatus can be operated based on a computer program, circuits or a
combination of the two.” App. Br. 8, Reply Br. 2-3. The Examiner
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responds that “the term ‘loadable’ is equivalent to ‘capable’ and therefore
not effective to ‘loaded’ [sic], wherein Examiner understands an apparatus to
be ‘capable’ of having a ‘computer readable medium encoded with a
computer program’ to be non statutory.” Ans. 14. While the Examiner
again questions whether claim 15 is directed to statutory subject matter (id),
there is no explanation why the claim is indefinite. We therefore do not
sustain the rejection of claim 15 under 35 U.S.C. § 112 second paragraph.
In connection with contention 4, Appellant argues that claims 8-11
and 14-16 would not have been obvious since “the edit distance calculation
disclosed by Kwok appears to be closer to the claimed distance calculation,
and not the claimed length difference calculation.” App. Br. 9-13, Reply Br.
3-6. Therefore “KWOK does not meet the recited length difference
calculation.” App. Br. 12. The Examiner responds that “by using the
[equations] described by Kwok (i.e. [worst case edit distance - edit distance]
/ worst case edit distance), one skilled in the art can find the difference in
edit distances until the length difference (or ‘measure edit distance’).” Ans.
17-18. We disagree that the example provided by the Examiner is the
equivalent in all cases of the disputed length parameter. Even if the
Examiner’s example produces a mathematical result equal to the length of a
remaining part of the symbol string, it does not show that Kwok teaches or
suggests to one of ordinary skill in the art to use the length difference
calculation as recited in claims 8-11 and 14-16. Instead paragraph [0062] of
Kwok uses example of strings of the same length, i.e., “cat” and “cot”
having an edit distance of 1 (i.e., one letter difference.) The worst case edit
distance would appear to be the length of the longest string (in this case 3),
although Kwok does not disclose as much. Thus Kwok’s edit distance
measure is the fraction of worst case edit distance minus the actual edit
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distance divided by the worst case edit distance. However, there is no
disclosure of calculating the length of a remaining part of the input symbol
string not examined. See App. Br. 10. Therefore, we will not sustain the
rejection of claims 8-11 and 14-16 under 35 U.S.C. § 103(a).
NEW GROUND OF REJECTION
The following new grounds of rejection are entered pursuant to
37 C.F.R. § 41.50(b). Claims 8-11, and 14 are rejected under 35 U.S.C. §
101 as being directed towards non-statutory subject matter.
Claims 8-11, and 14,2 recite a computer readable medium. However,
Appellant’s Specification provides no definition of what is meant by
computer readable medium. Absent any such definition we find Appellant’s
invention encompasses transitory propagating signals which are
unpatentable under 35 U.S.C.§ 101. See In re Nuijten, 500 F.3d 1346, 1355
(Fed. Cir. 2007) (transitory embodiments are not directed to statutory subject
matter) and Interim Examination Instructions for Evaluating Subject Matter
Eligibility Under 35 U.S.C. § 101, p. 2 (Aug. 24, 2009), available at
http://www.uspto.gov/web/offices/pac/dapp/opla/2009-08-25_interim_101_
instractions.pdf (emphasis in original) (“Interim Instructions”). Also see
David J. Kappos, Subject Matter Eligibility of Computer Readable Media,
1351 Off. Gaz. Pat. Office 212 (Feb. 23, 2010).3

2 Claim 14 recites “A method as claimed in claim 9” whereas claim 9 claims
a “computer readable medium.” Should the change in wording of the
preamble of claim 14 not be a clerical error then, should prosecution of
claim 14 continue, the Examiner should consider whether it is an improper
dependent claim warranting rejection under 35 U.S.C. § 112 fourth
paragraph.
3 While we reject claims 8-11, and 14 under 35 U.S.C. § 101 based on
inclusion of transitory propagating signals which are non-statutory subject
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CONCLUSION
The Examiner erred in rejecting claim 15 under 35 U.S.C. § 101 as
directed to non-statutory subject matter and under 35 U.S.C. § 112 second
paragraph as being indefinite.
The Examiner erred in rejecting 8-11, 14, and 15 under 35 U.S.C.
§ 112 first paragraph as failing to comply with the written description
requirement.
The Examiner erred in rejecting 8-11, 14-16 under 35 U.S.C. § 103(a)
as being unpatentable over Ballard and Kwok.
A new ground of rejection is entered pursuant to 37 C.F.R. § 41.50(b)
and claims 8-11, and 14 are rejected under 35 U.S.C. § 101 as being directed
towards non-statutory subject matter.

DECISION
The decision of the Examiner to reject claims 8-11, and 14-16 is
reversed. We enter a new ground of rejection of claims 8-11 and 14.

This decision contains new grounds of rejection pursuant to 37 C.F.R.
§ 41.50(b). 37 C.F.R. § 41.50(b) provides “[a] new ground of rejection
pursuant to this paragraph shall not be considered final for judicial review.”

37 C.F.R. § 41.50 (b) also provides that the appellant, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of

matter, we do not decide whether the claims are otherwise directed to
statutory subject matter.
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the following two options with respect to the new ground of rejection to
avoid termination of the appeal as to the rejected claims:
(1) Reopen prosecution. 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 rehearing. 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).

REVERSED
37 CFR § 41.50(b)

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