Ex Parte Kumar et al

Board of Patent Appeals and Interferences

Jun 27, 2008

10194626 (B.P.A.I. Jun. 27, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE

__________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte ARVIND KUMAR, MURALI SUNDAR,
and ALOK PRAKASH
__________

Appeal 2008-0620
Application 10/194,626
Technology Center 2100
__________

Decided: June 27, 2008
__________

Before HOWARD B. BLANKENSHIP, JAY P. LUCAS, and
ST. JOHN COURTENAY III, Administrative Patent Judges.

COURTENAY, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a) from the
Examiner’s rejection of claims 1-24. We have jurisdiction under 35 U.S.C.
§ 6(b).
We AFFIRM.

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THE INVENTION
The disclosed invention relates generally to apparatus, systems,
and methods used for data processing and computer user interface
management. More particularly, Appellants’ invention is directed to
providing multiple users of a service with individual, customized access to
the service, as well as presenting the appearance of a managed single-user
interface to each user (Spec. 1).
Independent claim 1 is illustrative:
1. An apparatus, comprising:

a services object manager (SOM);

a portal server to communicatively couple to the
SOM and to receive access to service objects comprising
instantiated schema constructs exposed by the SOM; and

a domain information provider to communicatively
couple to the SOM and to instantiate the service objects
upon activation of at least one service associated with the
service objects.

THE REFERENCE
The Examiner relies upon the following reference as evidence in
support of the rejections under sections 102 and 103:
Nielsen US 6,055,570 Apr. 25, 2000

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THE REJECTIONS
1. Claims 19-24 stand rejected under 35 U.S.C. § 101 as being directed
to non statutory subject matter (i.e., a signal).
2. Claims 1-24 stand rejected under 35 U.S.C. § 101 as being directed to
non statutory subject matter (i.e., a computer program per se).
3. Claims 1-22 and 24 stand rejected under 35 U.S.C. § 102(b) as being
anticipated by Nielsen.
4. Claim 23 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Nielsen.

ANALYSIS
Claims 19-24 (first-stated rejection under § 101)
Regarding independent claim 19, we note that a computer-readable
medium (or media) having computer-executable instructions is directed to
statutory subject matter so long as the language of a claim is not supported
in the Specification with nonstatutory embodiments (i.e., signals,
transmission mediums and the like). See In re Nuijten, 500 F.3d 1346, 1357
(Fed. Cir. 2007) (A claim directed to computer instructions embodied in a
signal is not statutory under 35 U.S.C. § 101).
Here, Appellants’ Specification discloses that computer readable
media (that includes computer storage media and communications media) is
intended to broadly encompass modulated data signals including carrier
waves (Spec. 13). Appellants contend that an article of manufacture is a
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statutory product under § 101 (App. Br. 9). However, Appellants’ argument
ignores the use of the word “including” in the claim: i.e., “[a]n article
comprising a machine-accessible medium including a computer storage
medium . . . .” (claim 19, emphasis added). Because the scope of the
claimed “computer storage medium” encompasses carrier waves, it is our
view that Appellants’ claims broadly read on signals and other nontangible
transmission mediums. Therefore, we conclude that independent claim 19
and associated dependent claims 20-24 are directed to nonstatutory subject
matter.

Claims 1-24 (second-stated rejection under § 101)
The Examiner also rejects claims 1-24 as being directed to non
statutory subject matter under 35 U.S.C. § 101 on the basis that these claims
are directed to a computer program per se (Ans. 3-6).
The Examiner notes that Appellants’ Specification discloses that
article 254 is described as comprising a “machine-accessible medium having
associated data . . . .” (Ans. 15; see also Spec. 13, ll. 26-27). Thus, the
Examiner reasons that the “portal server” recited in each of Appellants’
independent claims is a software server, because portal server 226 is clearly
shown in Appellants’ Figure 2 as being included in article 254 (Ans. 15).
In response, Appellants aver that the claimed “portal server”
constitutes a machine and a product having a physical structure (App. Br. 9,
¶2). Regarding claims 13-18, Appellants contend that the claimed subject
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matter, as a series of activities, comprises a process that is statutory under
35 U.S.C. § 101 (App. Br. 9-10).
We broadly but reasonably construe a “server” as a provider of
services. Under this construction, a server that provides services is not
limited solely to hardware embodiments. As pointed out by the Examiner,
portal server 226 is clearly shown in Appellants’ Figure 2 as part of article
254 that is described in Appellants’ Specification as “an article 254
comprising a machine-accessible medium having associated data . . . .”
(Ans. 15; see also Spec. 13, ll. 26-27). Therefore, we find the evidence of
record supports the Examiner’s position that the claimed portal server shown
in Appellants’ Figure 2 is not limited to hardware embodiments, but also
broadly encompasses software embodiments. On this record, we conclude
that Appellants have not met the burden of showing that the Examiner erred
regarding claims 1 and 3-6. Because Appellants have not presented
arguments specifically addressing the limitations of associated dependent
claims 2 and 7, we conclude that Appellants have not met the burden of
showing that the Examiner erred regarding these claims. Regarding claims 2
and 7, arguments that Appellants could have made but chose not to make in
the Briefs are deemed to have been waived. See 37 C.F.R.
§ 41.37(c)(1)(vii). See also In re Watts, 354 F.3d 1362, 1368 (Fed. Cir.
2004).
Regarding independent claim 8, we decline to construe the “service
management apparatus” as being limited to hardware because it appears to
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include only software components, as claimed. See our discussion of claim
1 supra. On this record, we conclude that Appellants have not met the
burden of showing that the Examiner erred regarding independent claim 8
and associated dependent claims 9-12.
Regarding claims 13-18, these claims recite a method for performing
tasks or activities without integrating a machine (e.g., a computer), or
constituting a process of manufacture, or an alteration or transformation of
physical subject matter. Therefore, the nature of the subject matter claimed
may be broadly but reasonably considered to be a mental process since the
claims do not recite a tangible embodiment. Because these claims on appeal
are not tied to a machine or other statutory subject class, we conclude that
Appellants have not shown error in the Examiner’s rejection under
35 U.S.C. § 101. See In re Comiskey, 499 F.3d 1365, 1376 (Fed. Cir. 2007).
Regarding claims 19-24, see our discussion above.
For at least the aforementioned reasons, we sustain the Examiner’s
rejection of claims 1-24 under 35 U.S.C. § 101.

PRINCIPLES OF LAW - Anticipation
In rejecting claims under 35 U.S.C. § 102, “[a] single prior art
reference that discloses, either expressly or inherently, each limitation of a
claim invalidates that claim by anticipation.” Perricone v. Medicis Pharm.
Corp., 432 F.3d 1368, 1375-76 (Fed. Cir. 2005) (citation omitted).

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Independent claims 1, 8, 13, and 19
Regarding the anticipation rejection of independent claims 1, 8, 13,
and 19, Appellants contend that three limitations (L1-L3) are not disclosed
by Nielsen, as follows:
Nielsen describes a system for monitoring changes to web site
content, not, for example, [L1] "a portal server to . . . receive
access to service objects comprising instantiated schema
constructs exposed by the SOM" and a [L2] "domain
information provider to . . . instantiate the service objects upon
activation of at least one service associated with the service
objects" as claimed by the Appellant. Similarly, Nielsen does
not describe [L3] "exposing at least one subscribed service
object comprising an instantiated schema construct and
associated with the subscribed service to a portal server" as
claimed by the Appellant.
(App. Br. 11). (Emphasis added).

We note that limitations L1 and L2 are recited in independent claims 1
and 8 and limitation L3 is recited in independent claims 13 and 19.
However, when we look to Appellants’ supporting argument that follows,
Appellants merely cite to portions of the Specification that are shown as
indented paragraphs on page 11 of the principal Brief. In the Reply Brief,
Appellants restate the same portions of the Specification (Reply Br. 3). We
decline to read these limitations from the Specification into the claims. See
E-Pass Techs., Inc. v. 3Com Corp., 343 F.3d 1364, 1369 (Fed. Cir. 2003).
(Limitations appearing in the Specification but not recited in the claim are
not read into the claim.).
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Claim Construction
During prosecution, “the PTO gives claims their ‘broadest reasonable
interpretation.’” In re Bigio, 381 F.3d 1320, 1324 (Fed. Cir. 2004) (quoting
In re Hyatt, 211 F.3d 1367, 1372 (Fed. Cir. 2000)).
Regarding Appellants’ contention that Nielsen’s tables (Figs. 10A-
10C) fail to describe objects or instantiation of objects, we broadly but
reasonably construe “objects” as comprising data and associated operations
where instantiation occurs at the moment when memory space is allocated
(see App. Br. 12, ¶2). After considering the record before us, we conclude
that Appellants’ objects that are described in the Specification as “modules
constituting a service to a customer” are not limited to “objects” as that term
is used in object-oriented programming environments (see Spec. 5, l.14).
Our broad but reasonable construction is clearly supported by the
portion of Appellants’ Specification that expressly states that programs can
be alternatively structured in a procedure-orientated format using a
procedural (i.e., non object-oriented) language, as follows:
One of ordinary skill in the art will further understand the
various programming languages which may be employed to
create one or more software programs designed to implement
and perform the methods disclosed herein. The programs can be
structured in an object-orientated format using an object-
oriented language such as Java, Smalltalk, or C++.
Alternatively, the programs can be structured in a procedure-
orientated format using a procedural language, such as
COBOL or C . . . However, as will be appreciated by one of
ordinary skill in the art upon reading this disclosure, the
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teachings of various embodiments of the present invention are
not limited to any particular programming language or
environment . . . .
(Spec. 12, l. 22 through 13, l. 3, emphasis added).

Because the scope of Appellants’ claims is clearly not limited to
object-oriented environments, we find Appellants’ argument unpersuasive
that Nielsen’s tables (Figs. 10A-10C) do not teach objects or instantiation of
objects (see App. Br. 12, ¶2). To the contrary, we find Nielsen’s tables are
modules constituting a service to the customer (i.e., user) comprising data
and associated operations where instantiation occurs at the moment when
memory space for each table is allocated. See also TiVo, Inc. v. EchoStar
Communications Corp., 516 F.3d 1290, 1307 (Fed. Cir. 2008) (Software
claims in patent on technology that enabled television users to “time-shift”
television signals were not limited to embodiments employing object-
oriented programming on the basis that “neither the written description nor
the claims anywhere state or imply that the invention must use object-
oriented programming . . . .”).
On this record, we conclude that Appellants have not sustained the
requisite burden on appeal in providing arguments or evidence persuasive of
error in the Examiner’s rejection of independent claims 1, 8, 13, and 19 as
being anticipated by Nielsen. Therefore, we sustain the Examiner’s
rejection of these claims as being anticipated by Nielsen.

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Dependent claims 2-7, 9-12, 14-18, 20-22, and 24.
Appellants have not presented any substantive arguments directed
separately to the patentability of dependent claims 2-7, 9-12, 14-18, 20-22,
and 24. Therefore, we sustain the Examiner’s rejection of these claims as
being anticipated by Nielsen for the same reasons discussed supra regarding
independent claims 1, 8, 13, and 19, respectively. See In re Young, 927 F.2d
588, 590 (Fed. Cir. 1991). See also 37 C.F.R. § 41.37(c)(1)(vii).

Dependent claim 23
Regarding the Examiner’s rejection of dependent claim 23 under
35 U.S.C. § 103(a), Appellants contend that limitation L3 (i.e., “exposing at
least one subscribed service object comprising an instantiated schema
construct and associated with the subscribed service to a portal server”) as
claimed by independent claim 19 (from which claim 23 depends) is not
taught or suggested by Nielsen (App. Br. 13; see also claim 23).
In response, we have fully addressed limitation L3 regarding
independent claim 19 above. Because we conclude that Appellants have not
shown the Examiner erred, we sustain the Examiner’s rejection of dependent
claim 23 as being unpatentable over Nielsen for the same reasons discussed
supra regarding independent claim 19.

CONCLUSION OF LAW
Based on the findings of facts and analysis above, we conclude that
Appellants have not met their burden of showing that the Examiner erred in
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rejecting claims 1-24 under 35 U.S.C. § 101 as being directed to non
statutory subject matter.
Likewise, we conclude that Appellants have not met their burden of
showing that the Examiner erred in rejecting claims 1-22 and 24 under
35 U.S.C. § 102(b) for anticipation.
We also conclude that Appellants have not met their burden of
showing that the Examiner erred in rejecting claim 23 under 35 U.S.C.
§ 103(a) for obviousness.

DECISION
We affirm the Examiner’s decision rejecting claims 1-24 under
35 U.S.C. § 101 as being directed to non statutory subject matter.
We affirm the Examiner’s decision rejecting claims 1-22 and 24 under
35 U.S.C. § 102(b) for anticipation.
We affirm the Examiner’s decision rejecting claim 23 under 35 U.S.C.
§ 103(a) for obviousness.
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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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