Ex Parte Klemba et alDownload PDFPatent Trial and Appeal BoardDec 27, 201311788406 (P.T.A.B. Dec. 27, 2013) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte KEITH S. KLEMBA, MATTHIAS U. KAISER, SHUYAN CHEN and FRANCES H. JAMES ____________ Appeal 2011-003509 Application 11/788,406 Technology Center 2100 ____________ Before BRUCE R. WINSOR, JOHNNY A. KUMAR, and PETER P. CHEN, Administrative Patent Judges. WINSOR, Administrative Patent Judge. DECISION ON APPEAL Appellants1 appeal under 35 U.S.C. § 134(a) from a Final Rejection of claims 1-36, which constitute all the claims pending in this application. We have jurisdiction under 35 U.S.C. § 6(b). 1 The real party in interest is SAP AG. App. Br. 2. Appeal 2011-003509 Application 11/788,706 2 We affirm-in-part and institute a new ground of rejection within the provisions of 37 C.F.R. § 41.50(b) (2011). STATEMENT OF THE CASE Appellants’ disclosure relates to “information exchange using object warehousing.” Spec. ¶ [0001]. Claim 1, which is illustrative, reads as follows (disputed limitations italicized): 1. A method of exchanging information comprising: receiving a first transport request comprising a data object and first attribute information describing a recipient of the data object; storing the data object; generating a first tag comprising the first attribute information; associating the first tag with the data object; storing the first tag; receiving a second transport request comprising second attribute information describing a sender of the second transport request; generating a second tag comprising the second attribute information; comparing at least a portion of the second attribute information to the first attribute information; and sending the data object to the sender of the second transport request if at least a portion of the second attribute information matches at least a portion of the first attribute information. Claims 1-10, 13-22, and 25-34 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Ebert (US 2003/0227392 A1; Dec. 10, 2003) and Teague (US 7,231,428 B2; June 12, 2007). Ans. 3-10. Appeal 2011-003509 Application 11/788,706 3 Claims 11, 12, 23, 24, 35, and 36 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Ebert, Teague, and Dittmar (US 5,802,263; Sept. 1, 1998). Ans. 10-12. Claims 25-36 stand rejected under 35 U.S.C. § 101 as directed to non- statutory subject matter. Final Rej. 2-3.2 Rather than repeat the arguments here, we refer to the Briefs (“App. Br.” filed July 12, 2010; “Reply Br.” filed November 29, 2010) and the Answer (“Ans.” mailed September 29, 2010) for the respective positions of Appellants and the Examiner. Only those arguments actually made by Appellants have been considered in this decision. Arguments that Appellants 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). 2 The Answer does not identify this ground of rejection (see generally Ans. 3-12), nor does it identify the ground of rejection as having been withdrawn (see Ans. 2). The Answer states: “Every ground of rejection set forth in the Office action from which the appeal is taken (as modified by any advisory actions) is being maintained by the examiner except for the grounds of rejection (if any) listed under the subheading ‘WITHDRAWN REJECTIONS.’” The ground of rejection was set forth in the Final Rejection (Final Rej. 2-3); an Advisory Action mailed April 6, 2010 states that Appellants’ amendment to the Specification (see Response to Office Action filed March 22, 2010 at 2, 6, 9) “does not overcome the 101 . . . rejection” (Adv. Act. 2). Appellants comment that the statement in the Advisory Action relates to claims 13-24, which were not rejected under § 101. See App. Br. 14 n 1. We find no mention in the record of a rejection of claims 13-24 under § 101. Therefore, we find that the Advisory Action statement applies to the rejection of claims 25-36 under § 101 that was standing in the present application at the time of the Advisory Action. We find the record, considered as a whole, demonstrates that the rejection of claims 25-36 under § 101 remains standing in the present application. Appeal 2011-003509 Application 11/788,706 4 REJECTION UNDER 35 U.S.C. § 101 Appellants do not address the rejection of claims 25-36 under 35 U.S.C. § 101. See generally App. Br. 8-26; Reply Br. 3-6. Accordingly, we summarily sustain the rejection of claims 25-36 under 35 U.S.C. § 101 as directed to non-statutory subject matter. REJECTIONS UNDER 35 U.S.C. § 103(a) ISSUE Appellants state that claims 1-36 stand or fall together. App. Br. 9. Therefore, we discuss the appeal of the rejections under 35 U.S.C. § 103(a) by reference to claim 1. See 37 C.F.R. § 41.37(c)(1)(vii). The dispositive issue raised by Appellants’ contentions regarding the rejections under § 1033 is as follows: Did the Examiner err in finding that it would have been obvious to one of ordinary skill in the art to combine Teague with Ebert to teach or suggest the disputed limitations of claim 1, in order “to provide a consistent way of identifying the specific sender and recipient for the message” (Ans. 6)? ANALYSIS The Examiner finds “[t]he modification [combining Ebert and Teague] would be obvious because one having ordinary skill in the art would be motivated to provide a consistent way of identifying the specific sender and recipient for the message.” Ans. 6. Appellants contend the Examiner has failed to establish that one of ordinary skill in the art would 3 Appellants’ contentions raise additional issues. However, as the identified issue is dispositive of the rejections under § 103(a), we do not reach the additional issues. Appeal 2011-003509 Application 11/788,706 5 look to Teague when seeking to modify Ebert. See generally App. Br. 23- 25. We agree with Appellants. Appellant contends that Teague’s “automated management and control of contact aliases” (Teague, Abstract) is completely different from Ebert’s “real-time and context-aware tracking of items” (Ebert, Abstract), and Appellants’ “information exchange using object warehousing” (Spec. ¶ [0001]). See App. Br. 23. Ebert is in the field of tracking and monitoring physical items or objects (Ebert, ¶ [0111]), having attached identification tags (Ebert, ¶ [0112]), such as radio frequency identification (RFID) tags (Ebert, ¶ [0114]). Teague, on the other hand, is directed to message processing (Teague, col. 2, ll. 15-24) in which a rule changes the presented address information of the message sender to an alias of the sender depending on the addresses of an intended recipient group (see id.; see also Teague, col. 6, ll. 5-20, Table 1). Appellants argue, and we agree, there is no indication of where [the articulated] . . . motivation came from and it appears to be impermissibly taken from the claim itself rather than the prior art references. . . . The Examiner has provided no information regarding why one skilled in the art would want to modify any of the information exchanged in Ebert . . . so that a sender can hide their address from a recipient. App. Br. 24. We find that one of ordinary skill in the art, motivated to provide a consistent way for identifying the specific senders and recipients of messages in Ebert’s RFID system, would not look to Teague. Teague is directed to substituting an alias for the address presented in the message, Appeal 2011-003509 Application 11/788,706 6 which is antithetical to “identifying the specific sender . . . for the message” (Ans. 6). Appellants have persuaded us of error in the rejection of claim 1, accordingly, we will not sustain the rejection under 35 U.S.C. § 103(a) of (1) claim 1 over Ebert and Teague; (2) independent claims 13 and 25, which substantially parallel claim 1 and were rejected on substantially the same bases (Ans. 9, 10), over Ebert and Teague; (3) claims 2-10, 14-22, and 26- 34, which depend, directly or indirectly, from claim 1, 13, or 25, over Ebert and Teague; and (4) claims 11, 12, 23, 24, 35, and 36, which depend, directly or indirectly, from claim 1, 13, or 25, over Ebert, Teague, and Dittmar. NEW GROUND OF REJECTION WITHIN 37 C.F.R. § 41.50(b) Claims 13-24 are rejected on a new ground of rejection under 35 U.S.C. § 101 as directed to non-statutory subject matter. Our reviewing court has found that transitory, propagating signals are not within any of the four statutory categories. Therefore, a claim directed to a computer readable medium embodied in a signal is not statutory under 35 U.S.C. § 101. In re Nuijten, 500 F.3d 1346, 1357 (Fed. Cir. 2007); see also Ex parte Mewherter, 107 USPQ2d 1857 (PTAB 2013) (precedential). “A transitory propagating signal . . . is not a ‘process, machine, manufacture, or composition of matter.’ [These] four categories define the explicit scope and reach of subject matter patentable under 35 U.S.C § 101; thus, such a signal cannot be patentable subject matter.” Nuijten, 500 F.3d at 1357. According to U.S. Patent & Trademark Office (USPTO) guidelines: Appeal 2011-003509 Application 11/788,706 7 The broadest reasonable interpretation of a claim drawn to a computer readablle [sic] 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 . . . . 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”) (citation omitted); see also Mewherter, 107 USPQ2d at 1862 (“those of ordinary skill in the art would understand the claim term ‘machine-readable[4] storage medium’ would include signals per se.”). Moreover, “[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,” MPEP § 2106(I) (8th ed. 2001, rev. 2012) (citation omitted) (emphasis added). Cf. In re Lintner, 458 F.2d 1013, 1015 (CCPA 1972). Claim 13 recites “[a] computer-readable medium containing instructions for controlling a computer system to perform a method, the method comprising: . . . . ” Claims 14-24 depend, directly or indirectly, from claim 13 and, therefore, incorporate the recited language of claim 13. Appellants’ Specification states the following: “In one embodiment, the present invention includes a computer-readable medium containing instructions for controlling a computer system to perform the methods described herein.” Spec. (as amended Mar. 22, 2010) ¶ [0007.1]. We conclude that nothing in the Specification or the claims precludes the 4 We note that “machine-readable” and “computer-readable” are equivalent terms. See Mewherter, 107 USPQ2d at 1859 n.2. Appeal 2011-003509 Application 11/788,706 8 “computer-readable medium” from encompassing a transitory signal. Accordingly, giving the phrase its broadest reasonable interpretation in light of the Specification, see In re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997), we construe the recited “computer-readable medium” to encompass a transitory signal and, therefore, to be directed to non-statutory subject matter.5 We note that Appellants are not precluded from amending claims 13- 24 to overcome this rejection. Guidance is provided in the OG Notice (“A claim drawn to such a computer readable medium that covers both transitory and non-transitory embodiments may be amended to narrow the claim to cover only statutory embodiments to avoid a rejection under 35 U.S.C. § 101 by adding the limitation ‘non-transitory’ to the claim.”). ORDER The decision of the Examiner to reject claims 25-36 is summarily affirmed. The decision of the Examiner to reject claims 1-24 is reversed. We enter a new ground of rejection for claims 13-24 under 35 U.S.C. § 101. 5 We note that in a Non-Final Office Action, mailed June 25, 2009, at pp. 2- 3, the Examiner articulated a different claim construction. However, claim construction is an issue of law that we review de novo. Cordis Corp. v. Boston Scientific Corp., 561 F.3d 1319, 1331 (Fed. Cir. 2009). Appeal 2011-003509 Application 11/788,706 9 This decision contains new grounds of rejection pursuant to 37 C.F.R. § 41.50(b). Section 41.50(b) provides that “[a] new ground of rejection . . . shall not be considered final for judicial review.” Section 41.50(b) also provides that Appellants, WITHIN TWO MONTHS FROM THE DATE OF THE DECISION, must exercise one of 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. 37 C.F.R. § 41.50(b). 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). See 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED-IN-PART 37 C.F.R. § 41.50(b) ELD Copy with citationCopy as parenthetical citation