Ex Parte Lake

Board of Patent Appeals and Interferences

Jul 25, 2011

10960184 (B.P.A.I. Jul. 25, 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.

DECISION ON REQUEST FOR REHEARING

BACKGROUND
Appellant requests rehearing of the Decision mailed April 8, 2011, in
which the Board affirmed the Examiner’s rejection of claims 9-14 under 35
U.S.C. § 101, did not reach the prior art rejections of claims 1-6, 9-14, 17-
22, and 25, and entered a new ground of rejection under 35 U.S.C. § 101 for
claims 1-6, 17-22, and 25.

1 Application filed October 7, 2004. The real party in interest is
International Business Machines Corp. (Br. 1.)
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The invention at issue on rehearing relates to a method, computer
system, and program product stored on a recordable medium for detecting
performance-degrading memory management anti-patterns. (Spec. ¶¶
[0001], [0007]; Abstract.)2
Independent claims 1 and 9 further illustrate the invention on
rehearing 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;

2 We refer to Appellant’s Specification (“Spec.”); Appeal Brief (“Br.”) filed
July 30, 2008; and Request for Rehearing (“Req. Reh’g.”) filed June 6,
2011. We also refer to our Decision on Appeal (“Dec.”) mailed April 8,
2011.
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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;
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.

SUMMARY OF REQUEST
Appellant, in the Request for Rehearing, makes two broad
contentions. Firstly, Appellant contends that the Board of Patent Appeals
and Interferences (the “Board”) does not have the authority to “not reach”
the Examiner’s prior art rejections on appeal and that not reaching the
rejections violates 37 C.F.R. § 41.1 and 5 U.S.C. §§ 555(b) and (e). (Req.
Reh’g. 2-4.) Secondly, Appellant contends that the Board has failed to
properly analyze the Examiner’s rejection under 35 U.S.C. § 101 with
respect to claims 9-14 (Req. Reh’g. 5-10) and also failed to present a prima
facie case of unpatentability under 35 U.S.C. § 101 with respect to claims 1-
6, 17-22, and 25 (Req. Reh’g. 5-20).
Turning to the § 101 rejections, Appellant contends that: (1)
“Software is statutory subject matter under 35 U.S.C. § 101” (Req. Reh’g. 6;
see Req. Reh’g. 7-9); (2) with respect to claim 9, “[a] ‘system’ is normally
considered to be apparatus[,] . . . . Appellants’ [sic] disclosure . . . describes
the claimed systems to be ‘in memory 808[,]’ . . . . [and] that the system
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‘may be provided as a computer program product,’” (Req. Reh’g. 9); (3)
with respect to claim 1, “claim 1 clearly implicates physical structure. . . . [in
that] claim 1 recites ‘periodically generating census data for at least one
object type in a heap’” (Req. Reh’g. 10); (4) with respect to claims 2-6, “the
Board concluded, without analysis, the dependent claims 2-6 did not meet
the requirements of 35 U.S.C. § 101. . . . [and] the Board cannot summarily
dispose of claims 2-6 without analysis” (Req. Reh’g. 12); (5) with respect to
claim 2, “garbage collection involves memory, which is a device or . . . a
‘machine[,]’ . . . . necessarily requires the use of a particular machine, e.g., a
computer processor, in order to perform[,] . . . . [and] transforms this
machine in that the characteristics of the memory is changed” (Req. Reh’g.
13); and (6) “claim 17 recites ‘[a] program product stored on a recordable
medium[,]’ . . . . the Board findings and analysis are . . . based upon
improper claim construction(s) . . . . [and] the Board has not properly relied
upon In re Nuijten” (Req. Reh’g. 14; see Req. Reh’g. 15-20).

DISCUSSION
A request for rehearing “‘must state with particularity the points
believed to have been misapprehended or overlooked by the Board’” and
“must specifically recite ‘the points of law or fact which appellant feels were
overlooked or misapprehended by the Board.’” Ex Parte Quist, 95 USPQ2d
1140, 1141 (BPAI 2010) (precedential) (quoting MPEP § 1214.03). The
Board will not consider any issues or arguments not particularly contested
by Appellant. Ex Parte Frye, 94 USPQ2d 1072, 1075-76 (BPAI 2010)
(precedential). Although we have reconsidered our April 8, 2011 Decision
in light of Appellant’s contentions in the Request, we find no errors therein.
Thus, we decline to change our prior decision for the reasons that follow.
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Issue 1: The Board’s Authority for Deciding Not to Reach
a Particular Ground of an Examiner’s Rejection
Appellant contends that the Board does not have the authority to “not
reach” the prior art rejections of an examiner and that a decision not to reach
(“not reaching”) the prior art rejections violates statutes and rules governing
the Board – 5 U.S.C. §§ 555(b) and (e) and 37 C.F.R. § 41.1. (Req. Reh’g
2-4.) Specifically, Appellant first contends that “‘the procedural rules
governing appeals before the Board are separate and distinct from the
procedural rules of an Article III Court of Appeals’” (Req. Reh’g. 2 (quoting
Ex parte Borden, 93 USPQ2d 1473, 1475 (BPAI 2010) (informative)) and
that “[n]othing in 37 C.F.R Part 41 grants the Board authority to not reach
an appealed rejection of the Examiner” (Req. Reh’g. 3) because 37 C.F.R.
§ 41.50(a) “only permit[s] three dispositions of . . . appealed rejections”
(Req. Reh’g. 2). Appellant also asserts that “[a]lthough the Board may . . .
introduce a new ground of rejection, this new ground of rejection is
additional to the opinion of the Board presented in 37 C.F.R. 41.50(a),” but
“a new ground of rejection is included within the opinion[, it] is not a
substitute for an opinion.” (Req. Reh’g. 3.) We agree with Appellant that
the Board’s rules are distinct from those governing Article III courts but do
not agree that 37 C.F.R. § 41.50(a) only permits three methods of disposing
of appealed rejections.
The rule governing the Board’s disposition of appeals – 37 C.F.R.
§ 41.50 – in relevant part states:
(a)(1) The Board, in its decision, may affirm or reverse
the decision of the examiner in whole or in part on the grounds
and on the claims specified by the examiner. The affirmance of
the rejection of a claim on any of the grounds specified
constitutes a general affirmance of the decision of the examiner
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on that claim, except as to any ground specifically reversed.
The Board may also remand an application to the examiner.
37 C.F.R. § 41.50(a) (2010).
Rule 41.50(a) states that the Board “in its decision, may affirm or
reverse the decision of the examiner . . . [or] remand an application to the
examiner” (emphasis added). The use of the word “may” rather than the
word “shall” in Rule 41.50(a) indicates that “affirm,” “reverse,” or
“remand,” are three actions which the Board may take in its decision, but
they are not the only three actions which the Board may take. The word
“may” is permissive and expansive, not mandatory and inclusive. It does
not exclude other actions left to the Board’s discretion.
Appellant is correct that 37 C.F.R. § 41.50(a) grants express authority
to the Board only to affirm, reverse or remand decisions (rejections) of the
examiner. This, however, does not make the Board’s decision not to reach a
ground of an examiner’s rejection ultra vires. The Board has the inherent
authority not to reach decisions (rejections) of an examiner.
The Board’s enabling statute, 35 U.S.C. § 6, states in relevant part that
“[t]he Board of Patent Appeals and Interferences shall, on written appeal of
an applicant, review adverse decisions of examiners upon applications for
patents.” 35 U.S.C. § 6(b) (2007). In ex parte appeals, the statutory duty of
the Board is to “review adverse decisions of examiners.” 35 U.S.C. § 6(b).
By its terms, the statute places no restrictions or conditions on how the
Board should review adverse decisions of examiners. See Berman v.
Housey, 291 F.3d 1345, 1353-54 (Fed. Cir. 2002) (this section addresses
“only what issues the Board is empowered to consider, and thus does not
establish any affirmative obligations that it must perform”).
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Our reviewing court, the U.S. Court of Appeals for the Federal
Circuit, has had occasion to analyze the word “review” as it is used in its
jurisdictional statutes – 35 U.S.C. § 144.3 See Gechter v. Davidson, 116
F.3d 1454, 1458, 1460 (Fed. Cir. 1997) (discussing the scope of review, and
vacating a Board decision that omits several crucial findings). We find the
Federal Circuit’s discussion of the term “review,” in the context of the
Federal Circuit’s review of Board decisions, to be particularly helpful in
determining the meaning of the word “review” in the context of our statutory
duty to review adverse decisions of examiners.
In Gechter, the CAFC determined that the Board had only provided
limited analysis and had not expressly construed a limitation of the claim in
dispute. Gechter, 116 F.3d at 1456. As the Gechter court explains
The relevant statute and our own case law compel our
vacatur of the Board’s decision. . . . It then becomes our duty to
review that decision for error. 35 U.S.C. § 144 (1994) (“The
United States Court of Appeals for the Federal Circuit shall
review the decision from which an appeal is taken on the record
before the Patent and Trademark Office.” (emphasis added)).
For an appellate court to fulfill its role of judicial review, it
must have a clear understanding of the ground[s] for the
decision being reviewed. . . . When the opinion explaining the
decision lacks adequate fact findings, meaningful review is not
possible, frustrating the very purpose of appellate review as
well as this court’s compliance with its statutory mandate.

3 Section 144 states:
The United States Court of Appeals for the Federal Circuit shall
review the decision from which an appeal is taken on the record
before the Patent and Trademark Office. Upon its
determination the court shall issue to the Director its mandate
and opinion, which shall be entered of record in the Patent and
Trademark Office and shall govern the further proceedings in
the case.

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Therefore, the statute’s mandate to “review” implies inherent
power in this court to require that the Board’s decision be
capable of review.
Gechter, 116 F.3d at 1457 (citations omitted).
We see no reason to interpret the word “review” as it appears in § 6(b)
of the statute more restrictively. In other words, just as the word “review” in
§ 144 of the statute implies that the court has inherent powers concerning its
review of a Board decision, this Board also has inherent powers concerning
its review of an examiner’s adverse decision on patentability under section
6(b) of the statute. We believe those inherent powers include taking actions
which are ordinarily and customarily taken by appellate bodies in reviewing
an underlying decision. Not reaching an alternate ground in a subordinate
decision (e.g., an alternate ground of rejection) is one of those actions.
We further note that Rule 41.2 contemplates final Board decisions that
choose not to dispose of all issues before the Board – “Final means, with
regard to a Board action, final for the purposes of judicial review. A
decision is final only if: . . . . [t]he decision disposes of all issues or the
decision state it is final.” 37 C.F.R. § 41.2.
The Board has available to it the full range of actions or dispositions
which appellate tribunals use, and we conclude the Board has within its
authority and discretion the ability to not decide certain issues. Each of
these actions by the Board is procedurally different but has a similar effect
on the examiner’s rejection. For example, every reversal by the Board
necessarily vacates the rejection reversed and remands the rejection to the
Examiner for further prosecution, and every remand returns the remanded
rejection to the Examiner for further findings, clarification, or withdrawal.
Similarly, a new ground of rejection, if not subject to rehearing, returns the
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patent application and new ground of rejection to the Examiner for further
prosecution.
Thus, no matter the “label” for the Board’s action, the final result is
the same – to return the application to the jurisdiction of the examiner, with
or without a particular rejection intact, for further action. If a rejection
remains (stands), e.g. through an affirmance or new ground of rejection, or
by the Board’s inaction (decision not to reach the rejection), then the patent
applicant may choose to further prosecute the application, e.g., by amending
the claims. If a rejection has been reversed or vacated, then the examiner
may choose to further prosecute the application using the guidance from the
Board, e.g., by presenting a new or revised rejection.
Analogizing concepts of federal appellate practice to the
administrative appeal process in the USPTO, the patent examiner is the
initial fact finder and decision maker while the Board is the reviewing
appellate tribunal. The patent examiner is charged with determining the
patentability of the claims presented in a patent application. The examiner’s
decision on patentability (office action) must be complete as to the facts
relied upon and the legal basis used in determining that an applicant’s patent
claims are unpatentable. It is our duty in an ex parte appeal proceeding to
review that decision. 35 U.S.C. § 6(b). If the facts relied upon by the
examiner are unclear or the legal basis for reaching the decision is uncertain,
the record forwarded to the Board by the examiner is not susceptible to
meaningful review. When confronted with these circumstances, the Board
should have available to it the full range of actions or dispositions which
appellate tribunals use. In our view, like other appellate tribunals which
have the duty to review decisions, this Board, in reviewing an examiner’s
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adverse decision on patentability, may not reach a particular ground of the
decision if appropriate.
Both the Supreme Court and our reviewing court frequently decide
not to reach particular issues or questions, e.g., alternate grounds for a
particular issue. See, e.g., Jerman v. Carlisle, McNellie, Rini, Kramer &
Ulrich LPA, 130 S.Ct. 1605, 1610-11 n.4 (2010) (deciding not to reach the
alternate ground of whether § 1692k(c) of the FDCPA applies due to a debt
collectors misinterpretation of the legal requirements of state law or federal
law other than the FDCPA); Liebel-Flarsheim Co. v. Medrad, Inc., 481 F.3d
1371, 1382 (Fed. Cir. 2007) (deciding not to reach alternate ground for
holding of invalidity). In Microsoft Corp. v. AT & T Corp., the Court
decided not to reach the issue of whether installing a computer program on a
foreign computer would give rise to liability under 35 U.S.C. § 271(f).
Microsoft Corp. v. AT & T Corp., 550 U.S. 437, 453-54 n.14 (2007). This
case is interesting in that only a plurality of Justices decided not to reach the
issue. Three Justices did reach the issue in a concurrence. Id. at 459-62.
In particular, our reviewing court has declined to reach alternate
grounds of affirmance (examiner rejection) when presented with a 35 U.S.C.
§ 101 non-statutory subject matter issue – “[w]e do not reach the ground
relied on by the Board below–that the claims were unpatentable as obvious
. . . –because we conclude that many of the claims are ‘barred at the
threshold by § 101.’” In re Comiskey, 554 F.3d 967, 973 (Fed. Cir. 2009)
(quoting Diamond v. Diehr, 450 U.S. 175, 188 (1981)). The court further
explained:
It is well-established that “[t]he first door which must be
opened on the difficult path to patentability is § 101.” State St.
Bank & Trust Co. v. Signature Fin. Group, Inc., 149 F.3d 1368,
1372 n. 2 (Fed. Cir.1998) (quoting In re Bergy, 596 F.2d 952,
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960 (CCPA 1979)). Only if the requirements of § 101 are
satisfied is the inventor “allowed to pass through to” the other
requirements for patentability, such as novelty under § 102 and,
of pertinence to this case, non-obviousness under § 103. See id.
As the Supreme Court stated in Parker v. Flook,“[t]he
obligation to determine what type of discovery is sought to be
patented [so as to determine whether it is ‘the kind of
“discoveries” that the statute was enacted to protect’] must
precede the determination of whether that discovery is, in fact,
new or obvious.” 437 U.S. 584, 593[ ] (1978) (emphases
added).
Comiskey, 554 F.3d at 973.
Similarly, we also note that the Board has had occasion not to reach
alternate grounds of affirmance when presented with a 35 U.S.C. § 101 non-
statutory subject matter issue. See Ex Parte Gutta, 93 USPQ2d 1025, 1036
(BPAI 2009) (precedential).
We next address Appellant’s arguments that not reaching the prior art
rejections violates statutes and rules governing the Board – 5 U.S.C.
§ 555(b) and (e) and 37 C.F.R. § 41.1. (Req. Reh’g 2-4.) Appellant’s legal
arguments are unavailing and without merit.
Firstly, with respect to Rule 41.1, Appellant asserts that not reaching a
ground of rejection introduces unreasonable delay and expense. It is unclear
how the Board’s exercise of its discretion in deciding a matter properly
before it would in anyway impede the “the just, speedy, and inexpensive
resolution” (37 C.F.R. § 41.1(b)) of such a matter. Appellant has not
provided any evidence, much less persuasive evidence of any
“unreasonable” delay or expense.
Secondly, with respect to 5 U.S.C. § 555(b), this statute concerns
compelling persons to appear before an agency. Appellants choose the
avenues by which they prosecute their patent application. The USPTO is
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responsible “for the granting and issuing of patents.” 35 U.S.C. § 2(a)(1).
The agency has the duty to grant patents that meet the requirements of the
patent statute (including § 101). (See discussion of In re Comiskey (infra).)
To the extent this section applies to administrative appellate tribunals, rather
than an agency in general, we note that our decision returns jurisdiction of
the patent application to the Examiner – concluding the matter before us in a
reasonable time. Appellant fails to present any persuasive evidence of
undue delay.
Lastly, with respect to 5 U.S.C. § 555(e), the Board’s Decision
provides prompt and detailed notice of the new grounds of rejection under
§ 101, as well as the reasons for not reaching the Examiner’s prior art
rejections. The result promotes efficient use of agency resources (supra)
and does not put Appellant’s patent application into “never ending loops” as
averred by Appellant. We remain unpersuaded that not reaching alternate
grounds of rejection produces unreasonable delay or expense.
Appellant’s core argument seems to be that a decision delayed is a
decision denied (here we paraphrase the legal maxim that “justice delayed is
justice denied”). We completely agree with Appellant that procedural
“yo-yoing” burdens the applicant, the examining corps, future panels of the
Board and the public – in that the public loses the benefits of the patent grant
and is subject to the burdens of exclusivity longer than necessary as a result
of patent term adjustment. Inasmuch as Appellant argues that an incomplete
disposition is not a best practice – Appellant has a valid point that would in
most cases be persuasive.
The present case, however, does not involve an incomplete
disposition. As a consequence of the original Board decision, all of
Appellant’s claims stand rejected. Without further action, Appellant’s
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application will be abandoned. A decision need not resolve all rejections to
be complete. KSR Int’l v. Teleflex Inc., 550 U.S. 398, 426 (2007) (not
reaching alternate basis because obviousness sufficient to dispose of case)
Resolution of a single rejection for a claim renders other rejections moot.
See e.g. 37 C.F.R. § 41.50(a)(1) (“The affirmance of the rejection of a claim
on any of the grounds specified constitutes a general affirmance of the
decision of the examiner on that claim . . . .”). Moreover, any resolution of
the statutory subject matter rejection is likely to affect the prior art
rejections. The order in which to reach the rejections and whether all
rejections should be reached is a matter of sound discretion guided by logic,
precedent and overall process efficiency. 37 C.F.R. § 41.125(a) (providing
in interferences that the board “may take up motions…in any order”); see
also Berman, 291 F.3d at 1352.
The Board has a considerable inventory for completely disposing of
an appeal on the merits. As pointed out by Appellant (Req. Reh’g. 2-3), it
may affirm, reverse, or remand a rejection (37 C.F.R. § 41.50(a)), or enter a
new ground of rejection (37 C.F.R. § 41.50(b)). The Board may also affirm
a rejection with a statement regarding amendment (37 C.F.R. § 41.50(c)),
and, as is the case here, opt not to reach a moot rejection.
Moreover, economy of the USPTO’s administrative and judicial
resources favors not reaching the prior art rejections. The Board should not
be compelled to reach a final decision, affirming or reversing an examiner’s
rejection, when the record does not allow for a reasoned review of the issues
raised in the appeal. Nor should the Board be limited to remand when the
record before us on appeal is not susceptible to meaningful review. There
are circumstances where we should not reach alternate grounds for rejecting
a claim (affirming or reversing an examiner’s rejection) because these
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subordinate issues may be enlightened or clarified, or rendered moot, by
subsequent action of appellants or our reviewing court. There are no bright
lines which govern such decisions. The wisest course under the present
circumstances would be to allow Appellant to revise their claims – rendering
the prior art rejections moot – or to appeal our decision. If Appellant
appeals, then the CAFC will either affirm our § 101 rejection – again
requiring Appellant to amend or abandon the claims – or reverse our § 101
rejection – leaving the prior art rejections ripe for resolution. Under such
circumstances, clarity of the record and conservation of agency resources are
best served if we do not reach the prior art rejections.
In summary, we conclude that it was within our authority and
discretion to opt not to reach an alternate (moot) ground of rejection (the
Examiner’s prior art rejections). Appellant has not presented any persuasive
evidence that our Decision was unreasonable.
Issue 2: Rejections Under 5 U.S.C. § 101
We address each of Appellant’s contentions, with respect to the § 101
rejections (supra), seriatim.
Software:
Appellant first contends that software is statutory subject matter under
35 U.S.C. § 101, citing Bilski v. Kappos (130 S.Ct. 3218, 3225 (2010)) and
In re Alappat (31 F.3d 1526, 1545 (Fed. Cir. 1994)), in that “software” is not
interchangeable with “software per se” because software necessarily
includes “computer program instructions stored within a computer
storage/recording medium (e.g., a CD or DVD) or computer program
instructions stored within a storage device of a computer (e.g., a hard drive,
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memory, etc.) and/or being executed by a processor” (Req. Reh’g. 7). (See
Req. Reh’g. 6-9.)
Appellant misconstrues the Board’s Decision (see Dec. 9-17)
concerning software or “software per se.” Appellant admits that “software
per se is computer program instructions as an abstract idea and unconnected
to anything else . . . . [which] is non-statutory subject matter under 35 U.S.C.
§ 101.” (Req. Reh’g. 7.) Our Decision did not conclude that software is
some new exception to statutory subject matter under § 101. (See Req.
Reh’g. 6.) Rather, the Decision explained that software in itself (without
execution by a processor, and not stored in a tangible non-transitory medium
(such as a memory or CD)) is software per se (computer instructions, data
structures, logic, abstract software code, etc.), which is an abstract idea and
is non-statutory subject matter under 35 U.S.C. § 101. (Dec. 9, 12-17.)
Appellant’s attempt to reclassify or interpret software to include processor
execution or tangible storage is entirely unpersuasive and fallacious. The
claims do not recite “software.” (See App. Br. 9-14.) The Decision
discussed software because it construed Appellant’s claims to be no more
than software (a “software” system (Dec. 9, 12-13), a method realized in
(entirely composed of) software – i.e., software per se (Dec. 14-18), and a
program product – i.e., software embedded in a program product (Dec. 20)).
To the extent Appellant argues our claim construction (discussed infra) is
incorrect, we disagree for the reasons that follow.
Claims 9-14:
Appellant next contends that “[a] ‘system’ is normally considered to
be apparatus” and that Appellant’s Specification supports this interpretation
of independent claim 9 (and dependent claims 10-14) – “Appellants’ [sic]
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disclosure . . . describes the claimed systems to be ‘in memory 808’” and
“that the system ‘may be provided as a computer program product.’” (Req.
Reh’g. 9.)
As we explained in our Decision, we construed the claims to be a
software system – that is, we interpreted the claims to be entirely software
based on the illustrated findings of fact. (Dec. 8-13.) In particular, we
concluded that claim 9: (1) is not a “machine” claim and does not fall within
an enumerated statutory category based on the portions of the Specification
presently cited by Appellant (Dec. 8-12; see Req. Reh’g. 9, citing ¶ [0044];
see e.g. Dec. 9, citing FF 1, 3 (¶¶ [0044], [0046])); (2) that claim 9
constitutes software per se (Dec. 12-13); and (3) the claim limitations could
be performed solely in one’s mind (Dec. 13). In other words, the Decision
found claim 9 to be abstract and therefore non-statutory subject matter.
Appellant fails to point out any purported error in claims 10-14.
Accordingly, Appellant’s arguments do not persuade us of error in the
original Decision with respect to claims 9-14.
Claim 1:
Appellant next contends that the Board improperly construed claim 1
because the claim specifically recites “‘periodically generating census data,
for at least one object type in a heap[,]’” which “clearly implicates physical
structure.” (Req. Reh’g. 10.) Appellant further asserts that “a ‘heap’ refers
to an area of memory used for dynamic memory allocation.” (Id.)
We find Appellant’s contentions unpersuasive of error in our
Decision. In particular, we disagree with Appellant that the mere mention of
an object type in a heap implicates any physical structure. While we agree
that a “heap” is known to refer to an area of memory, the claim recites a
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nominal method step of generating data for an object – an object type
(residing) in a heap (a portion of memory). As the Decision points out, the
claim limitations are purely functional, may be entirely composed of
software, and are not directed to physical structure, e.g., the actual heap, to
memory of any kind, or to manipulating memory. (Dec. 17-18.) Further,
the limitations do not transform the data into a different state (Dec. 18-19)
and could be performed solely in one’s mind (Dec. 19).
Appellant also presents an entirely new position that a claim may be
“directed to statutory subject matter . . . without the explicit recitation of any
machine” where “‘[t]he invention presents functional and palpable
applications in the field of computer technology.’” (Req. Reh’g. 11 quoting
Research Corp. Tech., Inc. v. Microsoft, Corp., 627 F.3d 859, 868-69 (Fed.
Cir. 2010).) In Research Corp., the CAFC found the claims in question to
be “a process, [which] qualifies [as patent-eligible subject matter] under both
the categorical language of section 101 and the process definition in section
100.” Research Corp. Tech., 627 F.3d at 868. The CAFC then proceeded to
determine if the claims were abstract, stating:
[T]his court also will not presume to define “abstract” beyond
the recognition that this disqualifying characteristic should
exhibit itself so manifestly as to override the broad statutory
categories of eligible subject matter and the statutory context
that directs primary attention on the patentability criteria of the
rest of the Patent Act. In that context, this court perceives
nothing abstract in the subject matter of the processes claimed
in the ‘310 and ‘228 patents. The ‘310 and ‘228 patents claim
methods (statutory “processes”) for rendering a half-tone image
of a digital image by comparing, pixel by pixel, the digital
image against a blue noise mask.
The invention presents functional and palpable
applications in the field of computer technology.
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Id. The court found the claims were not abstract for the reasons above, but
first specifically found the claims in question fell within an enumerated
statutory category – that is, the claims were processes qualifying as patent-
eligible subject matter unless falling within the abstractness exception. In
the Decision, we concluded that the instant claim was abstract because the
claim limitations: (1) may be entirely composed of software; (2) are purely
functional, not directed to any physical structure, and thus provide no
limitations as to the mechanism for performing the functions (execution of
the process steps); and (3) could be performed solely in one’s mind. (Supra;
Dec. 8-13.) In other words, the abstractness of claim 1 “exhibit[s] itself so
manifestly as to override the broad statutory categories of eligible subject
matter.” Research Corp. Tech., 627 F.3d at 868. Thus, we find Appellant’s
citation to Research Corp. Tech. unavailing as to Appellant’s claim 1.
Claims 2-6:
Appellant next contends “the Board concluded, without analysis, the
dependent claims 2-6 did not meet the requirements of 35 U.S.C. § 101.”
(Req. Reh’g. 12.) Appellant mischaracterizes the Decision. Specifically, the
Decision states that “Appellant’s claims 1-6 each recite a ‘method for
detecting memory management anti-patterns,’ . . . . [and] Appellant’s
Specification describes these methods as being realized in software.” (Dec.
14; see Dec. 15-18.) Based on an extensive analysis as to the abstractness of
claim 1, we concluded 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.” (Dec. 20.) It is unclear what additional
analysis Appellant would require in the Decision. As noted in the Decision
(Dec. 14, 20), claims 2-6 are dependent on claim 1 and directed to the same
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method for detecting memory management anti-patterns. Further, claims 3-
6 merely provide additional limitations with respect to the categories
(classifying limitation) recited in claim 1without providing any additional
physical limitations with respect to the classifying limitation or the
categories. Thus, we find Appellant’s argument unpersuasive of error in the
Decision with respect to claims 2-6.
Claim 2:
Appellant next provides additional arguments with respect to the
patent-eligibility of the subject matter of dependent claim 2. Appellant
contends that claim 2 recites “‘performing garbage collection,’” which
Appellant asserts is “well known in the art,” “involves memory, which is a
device or . . . a ‘machine[,]’. . . . requires the use of a particular machine,”
and “transforms this machine in that the characteristics of the memory is
changed.” (Req. Reh’g. 13.) As the Decision explained, claim 2’s method
limitations may be realized entirely in software. (Supra; Dec. 14.) That is,
claim 2 provides the additional limitation of “performing garbage collection”
– utilizing an unclaimed and undisclosed algorithm or process – for the
“generating census data” limitation of claim 1. Thus, “performing garbage
collection” does not provide any additional physical limitations with respect
to the generating limitation. Accordingly, we find Appellant’s argument
unpersuasive of error in the Decision with respect to claim 2.
Claim 17:
Appellant next contends “claim 17 recites ‘[a] program product stored
on a recordable medium,’” that “the Board findings and analysis are . . .
based upon improper claim construction(s),” and the Board misapplied In re
Nuijten. (Req. Reh’g. 14; see Req. Reh’g. 15-20). In particular, Appellant
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focuses on the purported distinction in the Specification between “the
present invention” being “embedded in a computer program product or a
propagated signal.” (Req. Reh’g. 14.) But, as explained in the Decision, we
give claim terminology the “broadest reasonable interpretation consistent
with the Specification” (Dec. 17 (quoting In re Am. Acad. of Sci. Tech
Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004) (citations omitted)).) Appellant’s
Specification consistently describes the software program (method) as a
program product, which may be embedded in both a “computer program
product” or “a propagated signal” (Dec. 5, FF 1; Spec. ¶ [0046]) For
Example, “the present invention can be realized in hardware, software, a
propagated signal, or any combination thereof” (Dec. 5, FF 1)4; “[c]omputer
program, propagated signal, software program, program, or software, in the
present context mean any expression, . . . of a set of instructions intended to
cause a system . . . to perform a particular function” (Dec. 5, FF 1); and
“[s]hown in memory 808 is an anti-pattern detection system 818, which may
be provided as a computer program product” (Dec. 7, FF 3; Spec. ¶ [0044]).
Therefore, we concluded that the program or program product could be
embedded in a propagating signal. (Dec. 20.) We did not, as Appellant
contends, “ignore[ ] that the claim recites a ‘program product’ and not a
transitory propagating signal.” (Req. Reh’g. 14-15.) We also note that
Appellant’s argument on page 15 of the Request is meritless and therefore
unavailing. (See Req. Reh’g. 15.) Although Appellant’s original
Specification includes claims 17 and 26, Appellant canceled claim 26 to

4 We note, as did the Decision, that Appellant amended the Specification to
read “realized in hardware, software, a propagated signal, etc.” instead of
“realized in hardware, software, a propagated signal, or any combination
thereof” (see Dec. 6 citing After-Final Amendment dated September 17,
2007).
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overcome the Examiner’s § 101 rejection – see Amendment filed June 11,
2007. Accordingly, Appellant’s present disclosure (Specification and
claims) does not distinguish a program product from “‘software embodied in
a propagated signal.’” (Req. Reh’g. 15.) Thus, we remain unpersuaded of
error in either our interpretation of claim 17 or our conclusion that claim 17
includes non-statutory subject matter.

CONCLUSION
We conclude and hold that Appellant’s disputed claims 1-6, 9, and 17,
as well as independent claim 25 and dependent claims 10-14 and 18-22 fail
to meet the requirements of 35 U.S.C. § 101. The Decision properly
considered all of the evidence of record, affirmed the rejection of claims 9-
14 under § 101, and presented a new ground of rejection under § 101 for
claims 1-6, 17-22, and 25. Appellant has not presented any persuasive
evidence that the Decision was in error. Accordingly, we decline to make
any substantive change in the Decision affirming the rejection of claims 9-14
under § 101 and rejecting Appellant’s claims 1-6, 17-22, and 25 under 35
U.S.C. § 101. The Board has the authority and discretion not to reach the
Examiner’s prior art rejections of claims 1-6, 9-14, 17-22, and 25; we
conclude that the most appropriate action is to not reach these rejections.
We decline to reverse or withdraw the § 101 rejections or substantively
review the Examiner’s §§ 102 and 103 rejections. Accordingly, we do not
grant the relief requested (to the extent such relief is requested) in
Appellant’s Request for Rehearing.

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DECISION
We have granted Appellant’s Request to the extent we have
reconsidered the Decision as indicated above. We decline to make any
substantive change to the Decision.

DENIED

peb