Ex Parte Lake

Board of Patent Appeals and Interferences

Apr 6, 2011

10960184 (B.P.A.I. Apr. 6, 2011)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte JOHN M. LAKE
____________________

Appeal 2009-007077
Application 10/960,1841
Technology Center 2100
____________________

Before JOHN A. JEFFERY, DEBRA K. STEPHENS, and JAMES R.
HUGHES, Administrative Patent Judges.

HUGHES, Administrative Patent Judge.

Opinion Concurring filed by JEFFERY, Administrative Patent Judge.

DECISION ON APPEAL

1 Application filed October 7, 2004. The real party in interest is
International Business Machines Corp. (Br. 1.)
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STATEMENT OF THE CASE
Appellant appeals from the Examiner’s rejection of claims 1-6, 9-14,
17-22, and 25. Claims 7, 8, 15, 16, 23, 24, and 26 have been canceled. (Br.
2.) The Board of Patent Appeals and Interferences (BPAI) has jurisdiction
under 35 U.S.C. § 6(b). We affirm the rejection of claims 9-14 under 35
U.S.C. § 101, but do not reach the issues whether the Examiner’s rejection
of claims 1, 2, 6, 9, 10, 14, 17, 18, 22, and 25 under § 102; and the
Examiner’s rejection of claims 3-5, 11-13, and 19-21 under § 103 are
erroneous. We enter a new ground of rejection under 35 U.S.C. § 101 for
claims 1-6, 17-22, and 25.
Appellant’s Invention
The invention at issue on appeal relates to a method, computer
system, and program product stored on a recordable medium for detecting
performance-degrading memory management anti-patterns. The system and
method periodically generate and collect census data for object types in a
heap to obtain the distribution of live object types (time series). The system
and method then perform time-series analysis on the collected census data,
and each time series is classified into one of a plurality of different
categories that reflect different kinds of memory management issues over a
variety of temporal scales. These classifications are used to drive the
collection of additional information to pinpoint the contributors to the
memory management issue. (Spec. ¶¶ [0001], [0007]; Abstract.)2

2 We refer to Appellant’s Specification (“Spec.”) and Appeal Brief (“Br.”)
filed July 30, 2008. We also refer to the Examiner’s Answer (“Ans.”)
mailed September 19, 2008.
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Representative Claims
Independent claims 1 and 9 further illustrate the invention, and are
reproduced below:
1. A method for detecting memory management anti-
patterns, comprising:
periodically generating census data for at least one object
type in a heap;
collecting the periodically generated census data for each
object type into a time series;
analyzing each time series;
classifying each time series into one of a plurality of
different categories based on the analysis;
determining a memory-related metric, wherein the
memory-related metric comprises the size of the heap;
comparing the memory-related metric to a threshold
value; and
performing the generating, collecting, analyzing, and
classifying steps only if the memory-related metric is above the
threshold value.

9. A computer implemented system for detecting
memory management antipatterns, comprising:
a system for periodically generating census data for at
least one object type in a heap;
a system for collecting the periodically generated census
data for each object type into a time series;
a system for analyzing each time series;
a system for classifying each time series into one of a
plurality of different categories based on the analysis;
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a system for determining a memory-related metric,
wherein the memory-related metric comprises a size of the
heap; and
a system for comparing the memory-related metric to a
threshold value;
wherein the system for periodically generating census
data generates the census data only if the memory metric is
above the threshold value.

Reference
The Examiner relies on the following reference as evidence of
unpatentability:
Goodnow US 5,590,329 Dec. 31, 1996

Findeisen US 2004/0181562 A1 Sep. 16, 2004

Rejections on Appeal
1. The Examiner rejects claims 9-14 under 35 U.S.C. § 101 as
being directed to non-statutory subject matter.
2. The Examiner rejects claims 1, 2, 6, 9, 10, 14, 17, 18, 22, and
25 under 35 U.S.C. § 102(e) as being anticipated by Findeisen.
3. The Examiner rejects claims 3-5, 11-13, and 19-21 under 35
U.S.C. § 103(a) as being unpatentable over the combination of Findeisen
and Goodnow.

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ISSUE
Based on our review of the administrative record, Appellant’s
contentions, and the Examiner’s findings and conclusions, the pivotal issue
before us is as follows:
Does the Examiner err in rejecting the computer implemented system
for detecting memory management antipatterns under 35 U.S.C. § 101 as
being directed to non-statutory subject matter?

FINDINGS OF FACT (FF)
Appellant’s Specification
1. Appellant’s Specification, in relevant part, describes the
invention as being realized in software or being embedded in a computer
signal:
It should also be understood that the present invention
can be realized in hardware, software, a propagated signal, or
any combination thereof. . . . A typical combination of
hardware and software could be a general purpose computer
system with a computer program that, when loaded and
executed, carries out the respective methods described
herein. . . . The present invention can also be embedded in a
computer program product or a propagated signal, which
comprises all the respective features enabling the
implementation of the methods described herein, and which -
when loaded in a computer system - is able to carry out these
methods. Computer program, propagated signal, software
program, program, or software, in the present context mean any
expression, in any language, code or notation, of a set of
instructions intended to cause a system having an information
processing capability to perform a particular function either
directly or after either or both of the following: (a) conversion
to another language, code or notation; and/or (b) reproduction
in a different material form.
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(Spec. ¶ [0046] (emphasis added).) Appellant amended the Specification to
read “the present invention can be realized in hardware, software, a
propagated signal, etc.” (After-Final Amendment dated September 17, 2007
– Spec. ¶ [0046]; see Br. 5.)
2. Appellant’s Specification further describes the method, with
respect to Figure 2, which is simply a flow diagram consisting of “black
box” method steps. Appellant explains that:
Given a workload comprising a series of periodic task
executions (iterations), the following steps are performed: (step
S1) periodically generate census data for at least one object type
in a heap; (step S2) collect the periodically generated census
data for each object type into a time series; (step S3) analyze
each time series; and (step S4) classify each time series into one
of a plurality of different categories that reflect different kinds
of memory management issues, based on the analysis.
(Spec. ¶ [0024].) Appellant further describes the method steps as computer
code or programs to perform the recited functions – generating and
collecting census data, analyzing time series, classifying/categorizing time
series, etc. (¶¶ [0025]-[0028], [0034].) In particular, Appellant explains that
“[i]n order to obtain the census data, the invention generates a series of
heapdumps, each preceded by a garbage collection.” (¶ [0025].) The
method uses computer programs and manipulates variables used by the
programs to generate the heapdumps. (Id.) Once the method collects the
series (time series) of heapdumps, it generates a census of the object types in
the heap – a time series of object-type census data – utilizing another
program (¶¶ [0026]-[0028]): “For each heapdump in the series, a census of
the object types in the generated heap is obtained. For example, a census of
object types in each generated heap can be provided using runtime probes or
a debugging tool such as HeapRoots” (¶ [0026]). The method then analyzes
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the characteristics of the time series and classifies the series into one of
several categories “that reflect different kinds of memory management
issues” (¶ [0028]) using an undisclosed process. (See ¶¶ [0028]-[0030].)
Appellant explains that “[t]he present invention provides a comprehensive
algorithm for memory-related problem debugging” (¶ [0034] (emphasis
added)), and the analysis process is included in the algorithm. (¶¶ [0034]-
[0038]). Appellant also explains that all of the resulting information –
census data, time series, and the like – are simply data (digital data) that may
be stored in memory. (¶ [0040].)
3. Appellant’s Specification further describes the system, with
respect to Figure 8:
Shown in memory 808 is an anti-pattern detection system
818, which may be provided as a computer program product.
Detection system 818 includes a census data generation system
820 for periodically generating census data for at least one
object in a heap and a collection system 822 for collecting the
periodically generated census data for each object type into a
time series. Detection system 818 also includes an analyzing
system 824 for analyzing the time series provided by the
collection system 822, a classification system 826 for
classifying each time series into one of a plurality of categories
based on the analysis provided by analyzing system 824, and an
isolating system 828 for isolating the cause of detected anti-
patterns.
(¶ [0044].)

ANALYSIS
Appellant argues independent claim 9 and dependent claims 10-14
together as a group with respect to the Examiner’s § 101 rejection of claims
9-14 (Rejection 1). (Br. 5.) Therefore, we select independent claim 9 as
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representative of Appellant’s arguments and groupings with respect to the
Examiner’s § 101 rejection. 37 C.F.R. § 41.37(c)(1)(vii). See In re Nielson,
816 F.2d 1567, 1572 (Fed. Cir. 1987). We have considered only those
arguments that Appellant has actually raised in the Brief. Arguments that
Appellant could have made but chose not to make in the Brief have not been
considered and are deemed to be waived. See 37 C.F.R. § 41.37(c)(1)(vii).
Appellants have the opportunity on appeal to the Board of Patent
Appeals and Interferences (BPAI) to demonstrate error in the Examiner’s
position. See In re Kahn, 441 F.3d 977, 985-86 (Fed. Cir. 2006) (citing In re
Rouffet, 149 F.3d 1350, 1355 (Fed. Cir. 1998)). The Examiner sets forth in
the Examiner’s Answer a detailed explanation of a reasoned conclusion that
Appellant’s claims 9-14 fail to meet the requirements of § 101 for statutory
subject matter. (Ans. 3, 8.) Therefore, we look to the Appellant’s Brief to
show error in the proffered reasoned conclusion. See Kahn, 441 F.3d at 985-
86.
Arguments Concerning the Examiner’s Rejection of
Representative Claim 9 Under § 101
The Examiner rejects Appellant’s independent claim 9 as being
directed to non-statutory subject matter. (Ans. 3, 8.) Specifically, the
Examiner finds that claims 9-16 “are directed towards a computer
implemented system. The specification describes . . . ‘that the present
invention can be realized in hardware, software, a propagated signal, etc.’”
(Ans. 3.) The Examiner explains that “[s]oftware is non-statutory subject
matter and therefore Claims 9-16 are not patentable.” (Id.)
Appellant, on the other hand, simply contends “that a ‘computer
implemented system’ (i.e., a system implemented by a computer) is clearly
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directed towards statutory subject matter, since it necessarily includes a
computer.” (Br. 5.) Based on the record before us, we do not find error in
the Examiner’s § 101 rejection of Appellant’s claim 9. We also agree with
the Examiner that the computer-implemented system is software (a software
system), and is non-statutory subject matter.
The Examiner finds that Appellant’s claims recite only “software,”
that is to say “functional descriptive material,” i.e., merely “software per se”
or a “software” system. Accordingly, the Examiner finds the claims do not
recite any physical structure, and therefore constitute non-statutory subject
matter. (Ans. 3, 8.) We agree.
As detailed in the Findings of Fact section supra, Appellant’s
representative claim 9 (and dependent claims 10-14) recite a “computer
implemented system,” which “may be provided as a computer program
product” (FF 3), and merely recites systems performing purely functional
limitations (i.e., processes). (FF 1-3).
Under 35 U.S.C. § 101, four categories of subject matter are eligible
for patent protection: (1) processes; (2) machines; (3) manufactures; and (4)
compositions of matter. Patentable subject matter must fall within one of the
categories set out in 35 U.S.C. § 101 – “Those four categories define the
explicit scope and reach of subject matter patentable under 35 U.S.C. § 101
. . . .” In re Nuijten, 500 F.3d 1346, 1357 (Fed. Cir. 2007), reh’g denied en
banc, 515 F.3d 1361 (Fed. Cir. 2008), and cert. denied, 129 S. Ct. 70
(2008)). Software itself, with no structural tie to an article of manufacture,
machine, process or composition of matter, is not patentable subject matter.
See Nuijten, 500 F.3d at 1357.
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Patentable subject matter must fall within one of the categories set out
in 35 U.S.C. § 101. See In re Ferguson, 558 F.3d 1359, 1363 (Fed. Cir.
2009); Nuijten, 500 F.3d at 1359. As directed in Ferguson, we analyze
Appellants’ claims to determine if they fall within one of the statutory
categories. See Ferguson, 558 F.3d at 1363, 1365. Appellant’s system
claims are not directed to processes – no “act or series of acts” is recited.
See Nuijten, 500 F.3d at 1355. Appellant’s claims are also not directed to
compositions of matter – the claims do not recite a composition “of two or
more substances” or “composite articles” that are the result “of chemical
union, or of mechanical mixture . . . whether they be gases, fluids, powders
or solids.” See id. at 1357 (quoting Diamond v. Chakrabarty, 447 U.S. 303,
308 (1980)). Similarly, Appellant’s claims are not directed to manufactures
– i.e., “articles” of “manufacture” or “tangible articles or commodities”
“resulting from the process of manufacture.” See Nuijten, 500 F.3d at 1356
(citing Chakrabarty, 447 U.S. at 308); Bayer AG v. Housey Pharms., Inc.,
340 F.3d 1367, 1373 (Fed. Cir. 2003). We note that Appellant does not
assert that the claims fall within any of these categories. Appellant instead
appears to assert that the system claims are directed to a “machine” or
“apparatus” (as they recite a computer).
Appellant’s “system” claims appear, at first glance, to be machine
claims. A “machine is a ‘concrete thing, consisting of parts, or of certain
devices and combination of devices.’ This ‘includes every mechanical
device or combination of mechanical powers and devices to perform some
function and produce a certain effect or result.” Ferguson, 558 F.3d at 1364
(quoting Nuijten, 500 F.3d at 1355). However, a close review of Appellant’s
claims shows that they do not recite any physical structure. The term
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“system” does not actually require or imply the presence of any machine,
hardware, or other physical structure. Additionally, none of the “system”
limitations serve as a structural limitation because they would not have been
understood in the art as implying any particular structure.3
With respect to claim 9, the mere recitation of a computer (computer
implemented system) in the claim preamble does not further limit the scope
of the claim. As our reviewing court explained in their In re Bilski
decision4, the use of a specific machine must impose meaningful limits on
the claim’s scope to impart patent-eligibility. In re Bilski, 545 F.3d 961-62.
The recitation in the preamble of “[a] computer implemented system” adds
nothing more than a general purpose computer that is associated with the
system limitations that in turn merely recite functional language for
performing particular functions (i.e., processes) in an unspecified manner.
Such a field-of-use limitation is insufficient to render an otherwise ineligible
process claim patent eligible. In re Bilski, 545 F.3d at 957 (citing Diamond
v. Diehr, 450 U.S. 175, 191-92 (1981)) (noting that eligibility under § 101
“cannot be circumvented by attempting to limit the use of the formula to a
particular technological environment.”). This recitation, therefore, fails to
impose any meaningful limits on the claim’s scope.
The recited system’s limitations in effect encompass substantially all
possible ways of performing the recited system functionalities. See
Gottschalk v. Benson, 409 U.S. 63, 65 (1972); Ex parte Gutta, 93 USPQ2d

3 Appellants do not argue and we do not reach the question posited by the
concurrence that the “system for” limitations are “means” invoking 35
U.S.C. § 112, sixth paragraph.
4 In re Bilski, 545 F.3d 943 (Fed. Cir. 2008) (en banc), aff’d sub nom. Bilski
v. Kappos, --- U.S. ----, 130 S.Ct. 3218 (2010) (hereinafter In re Bilski).
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1025, 1033 (BPAI 2009) (precedential). The mere recitation of a general-
purpose computer, in conjunction with purely functional claiming, does not
limit the claim’s scope to any structure or machine. See Aristocrat Techs.
Austl. Pty Ltd. v. Int’l Game Tech., 521 F.3d 1328, 1333 (Fed. Cir. 2008)
(“Because general purpose computers can be programmed to perform very
different tasks in very different ways, simply disclosing a computer as the
structure designated to perform a particular function does not limit the scope
of the claim” to any structure.).
Independent claim 9 (and dependent claims 10-14) merely recites a
“system” without further structure and fails to recite specific tangible
structure to perform the recited functions. Accordingly, we find that
Appellant’s claims also do not fall within the “machine” category of
statutory subject matter. Thus, Appellant’s claims 9-14 do not recite
patentable subject matter as they do not fall within one of the categories set
out in 35 U.S.C. § 101.
Appellant’s claims also constitute non-statutory subject matter
because they consist of purely functional recitations that may be
implemented by software, and as such are merely a set of instructions
capable of being executed by a computer – i.e., “software per se” or “data
structures per se.” Appellant admits that the invention can be realized in
software. (FF 1-3.) Claims directed to data structures per se are non-
statutory subject matter. In re Warmerdam, 33 F.3d 1354, 1361 (Fed. Cir.
1994).
As USPTO guidelines5 explain:

5 U.S. Pat. & Trademark Off., Interim Examination Instructions for
Evaluating Subject Matter Eligibility Under 35 U.S.C. § 101,
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A claim that includes terms that imply the invention is directed
to a product . . . but fails to include tangible limitations in
accordance with its broadest reasonable interpretation is not
limited to a practical application, but rather wholly embraces or
encompasses the concept upon which the invention is based.
This is impermissible as such claim coverage would extend to
every way of applying the abstract idea, law of nature or natural
phenomenon.
Because claims 9-14 recite only a data structure, they fail to include
tangible limitations. Thus, the scope of these claims is not limited to any
particular practical application. Instead, the scope encompasses every way
of applying the abstract idea – here, classifying each object type census data
time series into a category based on some undisclosed analysis process. The
claims are therefore patent ineligible.
Moreover, without tying these functional limitations to any concrete
parts, devices, or combinations of devices, these functional limitations could
be performed solely within one’s mind, and are therefore unpatentable. See
Benson, 409 U.S. at 72; In re Comiskey, 554 F.3d 967, 979 (Fed. Cir. 2009)
(“[M]ental processes – or processes of human thinking – standing alone are
not patentable even if they have practical application.”).
Thus, we find Appellant’s mere statement that the system claims are
“clearly directed towards statutory subject matter, since [they] necessarily
include[] a computer” (Br. 5) wholly unpersuasive. Accordingly, we do not
find error in the Examiner’s § 101 rejection of Appellant’s representative
claim 9 and dependent claims 10-14.

http://www.uspto.gov/web/offices /pac/dapp/opla/2009-08-
25_interim_101_instructions.pdf, at 3 (Aug. 2009).
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NEW GROUND OF REJECTION UNDER
37 C.F.R. § 41.50(b)
Pursuant to our authority under 37 C.F.R. § 41.50(b) (2008), we are
entering the following new ground of rejection. We reject claims 1-6, 17-22,
and 25 under 35 U.S.C. § 101 as being directed to non-statutory subject
matter.
Rejection of claims 1-6 and 25 under 35 U.S.C. § 101
Appellant’s claims 1-6 each recite a “method for detecting memory
management anti-patterns,” and claim 25 recites a “method for deploying an
application for detecting memory management anti-patterns.” (Br. 9, 13
(claims 1 and 25).) Appellant’s Specification describes these methods as
being realized in software, and describes each of the method steps as
computer code, software instructions, or programs to perform the recited
functions. (FF 1-2.)
As we explain supra, patentable subject matter must fall within one of
the categories set out in 35 U.S.C. § 101. As the Supreme Court has
explained in a well-settled line of precedent addressing patentable subject
matter – laws of nature, abstract ideas, and natural phenomena are excluded
from patent protection. See Diehr, 450 U.S. at 185. Consistent with this
precedent, the Court has unswervingly held that software is not patentable.
See Diehr, 450 U.S. at 185-87, 191-92 (addressing the patentability of a
process (curing rubber) utilizing a known algorithm, and reiterated the
holding from previous precedent that algorithms and methods directed
essentially to algorithms are not patentable.); Parker v. Flook, 437 U.S. 584,
595 (1978) (stating that “‘if a claim is directed essentially to a method of
calculating, using mathematical formula, even if the solution is for a specific
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purpose, the claimed method is nonstatutory’” (quoting In re Richman, 563
F.2d 1026, 1030 (CCPA 1977))); Benson, 409 U.S. at 71-72 (holding that an
algorithm representing a concept or abstract idea is not patentable.). In
particular, the Court in Flook explained that to be eligible for patent
protection, “[a] process itself, not merely the mathematical algorithm, must
be new and useful” (Flook , 437 U.S. at 591); it is “incorrect[] [to] assume[]
that if a process application implements a principle in some specific fashion,
it automatically falls within the patentable subject matter of § 101” (id. at
593); and that such an assumption “would make the determination of
patentable subject matter depend simply on the draftsman’s art and would ill
serve the principles underlying the prohibition against patents for ‘ideas’ or
phenomena of nature” (id.).
Recently, in Bilski v. Kappos, the Court invoked Benson, Flook, and
Diehr, explaining that Bilski’s claims sought “to patent both the concept of
hedging risk and the application of that concept to energy markets,” and “are
not patentable processes because they are attempts to patent abstract ideas.”
Bilski, 130 S.Ct. at 3229-30. In particular, the Court explained “[t]he
concept of hedging, described in claim 1 and reduced to a mathematical
formula in claim 4, is an unpatentable abstract idea, just like the algorithms
at issue in Benson and Flook.” Bilski, 130 S.Ct. at 3231.
The Supreme Court has also explained that “[a]bstract software code
is an idea without physical embodiment,” i.e., an abstraction. Microsoft
Corp. v. AT&T Corp., 550 U.S. 437, 449 (2007). A claim that recites no
more than software, logic or a data structure (i.e., an abstract idea) – with no
structural tie or functional interrelationship to an article of manufacture,
machine, process or composition of matter does not fall within any statutory
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category and is not patentable subject matter. Warmerdam, 33 F.3d at 1361;
see Nuijten, 500 F.3d at 1357. The scope of such a claim is not limited to
any particular practical application. In particular, data structures in the
abstract, i.e., not claimed as embodied in a non-transitory tangible computer-
readable medium are descriptive material per se and are not statutory subject
matter because they are not capable of causing functional change in a
computer. Warmerdam, 33 F.3d at 1361; cf. In re Lowry, 32 F.3d 1579,
1583-84 (Fed. Cir. 1994); accord MPEP § 2106.01 (2007).
In contrast to Wamerdam, Lowry explains that
Lowry’s data structures impose a physical organization on the
data.
. . .
More than mere abstraction, the data structures are
specific electrical or magnetic structural elements in a memory.
According to Lowry, the data structures provide tangible
benefits: data stored in accordance with the claimed data
structures are more easily accessed, stored, and erased . . . .
[and] represent complex data accurately and enable powerful
nested operations. In short, Lowry’s data structures are
physical entities that provide increased efficiency in computer
operation.
Lowry, 32 F.3d at 1583-84.
In summary, as explained in Warmerdam, “the dispositive issue for
assessing compliance with § 101 . . . is whether the claim is for a process
that goes beyond simply manipulating ‘abstract ideas’ or ‘natural
phenomena.’” Warmerdam, 33 F.3d at 1360. Claims to data structures and
methods of manipulating data structures are not patentable subject matter
because they merely embody or manipulate “abstract ideas.” Id.
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A computer program (software), no matter its function, is nothing
more than the representation of an algorithm or group of algorithms,
conceptually no different from a list of steps written down with pencil and
paper for execution by a human being. See Benson, 409 U.S. at 72; In re
Comiskey, 554 F.3d at 979 (“[M]ental processes – or processes of human
thinking – standing alone are not patentable even if they have practical
application.”).
With this background in mind, we review Appellant’s claims for
compliance with § 101. Appellant’s claim 1 does not recite any physical
structure or machine, and is not tied to any particular machine. Appellant’s
claim 25 recites “providing a computer infrastructure being operable to”
perform the same method steps of claim 1. Although claim 25 recites
computer infrastructure (nominal structure), again it is not tied to any
particular machine. At most, the claim is tied to a general-purpose computer
that does not in any way limit the claim’s scope (see claim 1 analysis,
supra).
We give claim terminology the “broadest reasonable interpretation
consistent with the [S]pecification” in accordance with our mandate that
“claim language should be read in light of the [S]pecification as it would be
interpreted by one of ordinary skill in the art.” In re Am. Acad. of Sci. Tech
Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004) (citations omitted). Claim 1
merely recites data elements or data structures – census data, time series,
metrics, and threshold values (FF 2); and functional limitations (functions) –
generating and collecting census data, analyzing time series,
classifying/categorizing time series, and determining and comparing the
memory-related metric. (See Br. 9 (claim 1).) In view of Appellant’s
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recited claim language and Specification disclosures, we find that the claim
1 (and claim 25) does not implicate any physical structure. Appellant admits
that the claim elements may be entirely composed of software or a computer
program. (FF 1.) Accordingly, we find the claims recite only data elements
and abstract ideas.
Allowing Appellant to patent methods of classifying/categorizing time
series and determining and comparing the memory-related metric “would
effectively grant a monopoly over an abstract idea.” See Bilski, 130 S.Ct. at
3231.
We also note that the claims are “abstract” and are not statutory
processes when reviewed under Bilski’s “machine-or-transformation test.”
See In re Bilski, 545 F.3d at 961; see also Bilski, 130 S.Ct. at 3237 (“the
machine-or-transformation test is a useful and important clue . . . for
determining whether some claimed inventions are processes under § 101.”).
Although Appellant’s claims recite a method (are nominally directed to a
process), we note that regardless of form, the analysis of a “method,”
“machine,” and “manufacture” claim are the same under § 101. See AT&T
Corp. v. Excel Communications, Inc., 172 F.3d 1352, 1357 (Fed. Cir. 1999)
(abrogated by In re Bilski, 545 F.3d 943) (“Whether stated implicitly or
explicitly, we consider the scope of § 101 to be the same regardless of the
form--machine or process--in which a particular claim is drafted.”); State
Street Bank & Trust Co. v. Signature Financial Group, Inc., 149 F.3d 1368
(Fed. Cir. 1998) (abrogated by In re Bilski, 545 F.3d 943).
To the extent that Appellant’s claims may be interpreted as a process,
rather than software, we find that the claims are not tied to a particular
machine (supra), and do not transform the data acted upon (census data) into
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a different state or thing – the data is merely categorized utilizing an
undisclosed process/algorithm. See In re Bilski, 545 F.3d at 962-63. Here,
to the extent any transformation takes place, the transformation is of one
type of electronic data into another type of electronic data. This is not a
“transformation or reduction of an article into a different state or thing
constituting patent-eligible subject matter.” Id. at 962; see id. at 963-64
(discussing patent-eligible data transformations). The data represented and
transformed in Appellant’s claim is not data “represent[ing] physical and
tangible objects,” or “the electronic transformation of the data itself into a
visual depiction.” Id. at 963 (discussing In re Abele, 684 F.2d 902, 908-09
(CCPA 1982)). Further, the end product (categorized census data) is not
recited as being utilized for any particular purpose. Rather, the recited data
and processes (classifying/categorizing time series and determining and
comparing the memory-related metric) are similar to the data and processes
found not to be patent-eligible in the Federal Circuit’s Meyer and Grams
decisions. See In re Bilski, 545 F.3d at 965 (discussing In re Grams, 888
F.2d 835, 839-40 (Fed. Cir. 1989); In re Meyer, 688 F.2d 789, 796 (CCPA
1982) – e.g., “the only potential ‘transformation’ was of the disembodied
‘factors’ from one number to another;” and “process of diagnosing
‘abnormal condition’ in person by identifying and noticing discrepancies in
results of unspecified clinical tests;” id. at 965).
Moreover, without tying the claim’s functional limitations to any
concrete parts, devices, or combinations of devices, these functional
limitations could be performed solely within one’s mind, and are therefore
unpatentable. See Benson, 409 U.S. at 72; Comiskey, 554 F.3d at 979.
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Thus, we find that Appellant’s representative claim 1, independent
claim 25, and dependent claims 2-6 (dependent on claim 1) fail to meet the
requirements of 35 U.S.C. § 101. It follows that claims 1-6 and 25 are
directed to non-statutory subject matter. Accordingly, we reject these claims
under 35 U.S.C. § 101. We do not reach the prior art rejections of claims 1-
6 and 25 because these claims do not recite patent-eligible subject matter
under § 101, which is a threshold requirement for patentability. See
Comiskey, 554 F.3d at 973; In re Bilski, 545 F.3d at 951 n.1; Gutta, 93
USPQ2d at 1036 (citing Diehr, 450 U.S. at 188).

Rejection of claims 17-22 under 35 U.S.C. § 101
Appellant’s claims 17-22 each recite a computer “program product
stored on a recordable medium for detecting memory management anti-
patterns.” (Br. 12 (claim 17).) Appellant’s Specification describes these
computer program products as being realized in software, which may be
embedded in a transitory propagated signal – “[t]he present invention can
also be embedded in a computer program product or a propagated signal.”
(FF 1.)
We find Appellant’s claimed computer “program product stored on a
recordable medium” implicates a transitory signal. Specifically, in view of
Appellant’s Specification, we find that the transitory signals containing data
(e.g., watermarks, etc.) “store” that data on a “recordable” medium – the
transitory signal itself. (FF 1.) Accordingly, claims 17-22 encompass the
use of a computer data signal embodied in a carrier wave to store, transfer,
or manipulate information. A computer data signal embodied in a carrier
wave is a transitory, propagating signal not within any of the four statutory
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categories and, therefore, non-statutory. See Nuijten, 500 F.3d at 1357;
Subject Matter Eligibility of Computer Readable Media, 1351 Off. Gaz. Pat.
Office 212 (Feb. 23, 2010). It follows that claims 17-22 are directed to non-
statutory subject matter. Accordingly, we reject claims 17-22 under 35
U.S.C. § 101.
We do not reach the prior art rejections of claims 17-22 because these
claims do not recite patent-eligible subject matter under § 101, which is a
threshold requirement for patentability. See Comiskey, 554 F.3d at 973.

CONCLUSION OF LAW
Appellant has not shown that the Examiner erred in rejecting claims
9-14 under 35 U.S.C. § 101. We do not reach the questions whether the
Examiner’s rejection of claims 1, 2, 6, 9, 10, 14, 17, 18, 22, and 25 under
§ 102; and the Examiner’s rejection of claims 3-5, 11-13, and 19-21 under
§ 103 are erroneous; but instead enter a new ground of rejection under 35
U.S.C. § 101 for claims 1-6, 17-22, and 25.

DECISION
The Examiner’s decision rejecting claims 9-14 is affirmed. We enter
new grounds of rejection under 37 C.F.R. § 41.50(b) for claims 1-6, 17-22,
and 25.
This decision contains new grounds of rejection pursuant to 37 C.F.R.
§ 41.50(b). This section provides that “[a] new ground of rejection . . . shall
not be considered final for judicial review.”
Section 41.50(b) also provides that the Appellant, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
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the following two options with respect to the new grounds 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 37 C.F.R. § 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).

AFFIRMED
37 C.F.R. § 41.50(b)

msc
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23
JEFFERY, Administrative Patent Judge, CONCURRING:
I concur with the majority’s decision and new grounds of rejection,
but write separately to emphasize that, in my view, system claim 9 also
implicates 35 U.S.C. 112, sixth paragraph as purely functional. As the
majority indicates, “[t]he term ‘system’ does not actually require or imply
the presence of any machine, hardware, or other physical structure.” Maj.
Op. at 10-11.
Although claim 9 does not use the term “means,” the term “system
for” nonetheless connotes no structure whatsoever and, in effect, is a nonce
term that is tantamount to reciting “means for”—the essence of pure
functional claiming. Accord U.S. Pat. & Trademark Off., Supplementary
Examination Guidelines for Determining Compliance With 35 U.S.C. 112
and for Treatment of Related Issues in Patent Applications, 76 Fed. Reg.
7,162, 7,167 (Feb. 9, 2011) (listing “system for” as a non-structural term that
may invoke § 112, sixth paragraph). As nonce terms, the “system for”
limitations in claim 9 are tantamount to means-plus-function limitations that
implicate § 112, sixth paragraph.
That said, however, since the majority’s decision is dispositive
regarding the § 101 rejection of claims 9-14, it is unnecessary to engage in
an inquiry regarding whether there is sufficient structure disclosed in the
specification corresponding to the functional limitations of claim 9 to satisfy
§ 112, second paragraph here in the first instance on appeal.6 I simply raise

6 See Finisar Corp. v. DirectTV Group, Inc. 523 F.3d 1323, 1340 (Fed. Cir.
2008) (“For computer-implemented means-plus-function claims where the
disclosed structure is a computer programmed to implement an algorithm,
‘the disclosed structure is not the general purpose computer, but rather the
special purpose computer programmed to perform the disclosed algorithm.”)
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this issue here since, in my view, it is incumbent on the Examiner to engage
in this inquiry should further prosecution follow this opinion. In any event, I
join the majority’s affirming the Examiner’s § 101 rejection of claims 9-14
and the new grounds of rejection.

(citations and quotation marks omitted.). As such, the application must
disclose “enough of an algorithm to provide the necessary structure under
§ 112, ¶ 6” or a disclosure that can be expressed in any understandable terms
(e.g., a mathematical formula, in prose, or as a flowchart). Id. But “[s]imply
reciting ‘software’ without providing some detail about the means to
accomplish the function is not enough.” Id. at 1341-42 (citation omitted).