Ex Parte Lamb et al

Patent Trials and Appeals Board

Feb 26, 2013

11109218 - (D) (P.T.A.B. Feb. 26, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte JAMES A. LAMB and JOSEPH G. GIEBLER
____________________

Appeal 2010-008136
Application 11/109,218
Technology Center 2100
____________________

Before: ALLEN R. MACDONALD, JUSTIN BUSCH, and HUNG H. BUI,
Administrative Patent Judges.

BUSCH, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2010-008136
Application 11/109,218
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Appellants appeal under 35 U.S.C. § 134 from a final rejection of
claims 1-24. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

Introduction
According to Appellants, the invention relates to systems, methods,
and devices for configurable functionality chaining. Abstract.

STATEMENT OF THE CASE
Exemplary Claims
Claims 1 and 20, reproduced below, are illustrative of the claimed
subject matter:
1. A computing device, comprising:
a client layer to receive a client instruction from at least
one of a number of clients for a network functionality to be
performed;
a functionality layer having an application program
interface (API) to interpret the client instruction and to
configure a number of functionality modules to form a
functionality chain for use in accomplishing the client
instruction; and
a data store layer to store data for use by the number of
functionality modules.

20. A computing system, comprising:
a number of computing devices, each having access to a
number of functionality modules for accomplishing a client
instruction; and
a computing device, including:
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means for receiving a client instruction from at least one
of a number of clients for a network functionality to be
performed;
means for selecting a number of functionality modules to
form a functionality chain for use in accomplishing the client
instruction; and
means for accessing data, for use by the number of
functionality modules, from a number of data stores.

Reference
Vänttinen WO 02/102093 A1 Dec. 19, 2002

Rejections on Appeal
Claims 1-6 and 20-24 are rejected under 35 U.S.C. § 101 as directed
to non-statutory subject matter. Ans. 3.
Claims 1-7, 10, 12-14, and 20-24 are rejected under 35 U.S.C.
§ 102(b) as being anticipated by Vänttinen. Ans. 4-5.
Claims 8, 9, 11, and 15-19 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Vänttinen. Ans. 6-7.

ISSUES
Appellants argue that claims 1-6 and 20-24 are directed to statutory
subject matter. App. Br. 14-17; Reply 2-3. Appellants also argue that
Vänttinen does not disclose all of the limitations recited in claims 1-7, 10,
12-14, and 20-24, nor does Vänttinen teach or suggest all of the limitations
of claims 8, 9, 11, and 15-19.App. Br. 18-26.
Issue 1a: Has the Examiner erred in determining that claims 1-6 are
directed to non-statutory subject matter?
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Issue 1b: Has the Examiner erred in determining that claims 20-24
are directed to non-statutory subject matter?
Issue 2: Has the Examiner erred in determining that Vänttinen
discloses each limitation of the claims?

ANALYSIS
Issue 1: Rejections under 35 U.S.C. § 101
The Examiner finds that claims 1-6 and 20-24 are “directed to
software alone without claiming associated computer hardware required for
execution” and are thus directed to non-statutory subject matter. Ans. 3
Appellants argue that claim 1 is directed to a “computing device,” and
that, regardless of whether the limitations may include software, the layers
are “elements of a physical computing device, and not software standing
alone.” App. Br. 14. Appellants also argue that the data stores are explicitly
defined as “memory locations that have data stored therein,” and that
“[b]ecause there is data stored in memory locations of a data store, the
memory locations are physical storage locations, and not merely addresses
as asserted by the [Examiner].” App. Br. 15 (citing Spec. 9:12-13).
Appellants then state that the claimed “data store layer” is defined “in terms
of its function,” which is to “store data for use by the number of
functionality modules.” App. Br. 15 (citing Spec. Abstract). Appellants
further assert that, “because storage of data requires physical memory, e.g.,
data stores, the data store layer recited in claim 1 necessarily defines
physical structure.” App. Br. 16. Appellants further argue that the term
“computing device” indicates hardware and that the Examiner has not shown
Appellants’ use of the term “‘computing device’ to denote software alone.”
App. Br. 16. Therefore, Appellants conclude that claim 1 is properly directed
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to a product and, thus, is directed to statutory subject matter. App. Br. 17.
Appellants rely on the same arguments with respect to claims 2-6 and 20-24.
App. Br. 17. Appellants further argue that claim 20 (and dependent claims
21-24) includes a “means for accessing data,” which includes structure as
previously argued. App. Br. 17. Appellants also assert that the Examiner’s
construction of software device is based on a mischaracterization of The
Authoritative Dictionary of IEEE Standards Terms. Reply 3.
The Examiner finds that data stores “can be access[ed] via various
query languages,” suggesting “that the data stores themselves can be
databases or software data structures for storing data [such that] the data
store layer can reasonably be interpreted as software.” Ans. 8. The Examiner
further finds that while data structures and software “require hardware
elements to realize its functionality, claiming the software or software data
structures alone is not equivalent to claiming computer hardware.” Ans. 8-9.
The Examiner also finds that Appellants have not defined “computing
device” and that the broadest reasonable interpretation of a computing
device can encompass purely software and is thus “not equivalent to
claiming computer hardware.” Ans. 9.
With respect to independent claim 1 and claims 2-6, which depend
therefrom, we agree with the Examiner. Appellants’ reliance on claiming a
“computing device” is unpersuasive because “computing device” is merely
recited in the preamble and does not breathe life into the claims. Moreover,
we agree with the Examiner’s finding that each limitation of claim 1 may be
implemented in software alone. The claims recite a “data store layer,” not a
“data store.” Regardless of whether data stores require physical structure,
Appellants’ Specification merely states that the “data store layer 140 can
include a number of data stores.” Spec. 9:10 (emphasis added). This
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language is permissive and does not require that the data store layer includes
data stores. As pointed out by Appellants, “data store layer stores data for
use by the number of functionality modules.” Spec. 2:22-23. Moreover, the
Specification states that “data store layers can utilize object technology
which is a methodology for designing and programming.” Spec. 2:29-30.
The Examiner’s broadest reasonable interpretation that a data store layer
may be implemented in software alone is consistent with Appellants’
Specification. Therefore, we agree with the Examiner that claim 1 and
claims 2-6, not argued separately, are not statutory subject matter under 35
U.S.C. § 101.
With respect to independent claim 20, we disagree with the Examiner.
We note that claim 20 recites several means, including, for example, “means
for receiving a client instruction ...;” “means for selecting a number of
functionality modules ...;” and “means for accessing data, for use by the
number of functionality modules, from a number of data stores.” We note
the guidelines provided in the MPEP:
Often the supporting disclosure for a computer-implemented
invention discusses the implementation of the functionality of
the invention through hardware, software, or a combination of
both. In this situation, a question can arise as to which mode of
implementation supports the means-plus-function limitation.
The language of 35 U.S.C. 112, sixth paragraph requires that
the recited “means” for performing the specified function shall
be construed to cover the corresponding “structure or material”
described in the specification and equivalents thereof.
Therefore, by choosing to use a means-plus-function limitation
and invoke 35 U.S.C. 112, sixth paragraph, applicant limits that
claim limitation to the disclosed structure, i.e., implementation
by hardware or the combination of hardware and software, and
equivalents thereof. Therefore, the examiner should not
construe the limitation as covering pure software
implementation.
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However, if there is no corresponding structure disclosed in
the specification (i.e., the limitation is only supported by
software and does not correspond to an algorithm and the
computer or microprocessor programmed with the algorithm),
the limitation should be deemed indefinite as discussed
above, and the claim should be rejected under 35 U.S.C.
112, second paragraph. It is important to remember that
claims must be interpreted as a whole; so, a claim that includes
a means-plus-function limitation that corresponds to software
per se (and is thus indefinite for lacking structural support in the
specification) is not necessarily directed as a whole to software
per se unless the claim lacks other structural limitations.

U.S. Patent and Trademark Office, MANUAL OF PATENT EXAMINING
PROCEDURE § 2181 II.B., pp. 2100-250, 8th Edition, Rev. 9, August 2012
(emphases added). In view of the means-plus-function limitations of claim
20, we cannot sustain the Examiner’s rejection of claims 20-24 under 35
U.S.C. § 101; however, we note that, in the event of further prosecution, the
Examiner may wish to consider whether a rejection under 35 U.S.C. § 112,
second paragraph, is warranted.

Issue 2: Art Rejections
Appellants argue that Vänttinen does not disclose each limitation of
independent claim 7. App. Br. 18-21. Specifically, Appellants argue that
Vänttinen merely “request[s] to locate a service that the client wants to use”
and does not disclose “receiving a client instruction . . . for a network
functionality to be performed,” as recited in claim 7. App. Br. 18. Appellants
assert that “for a network functionality to be performed,” as recited in claims
7, “defines the structure of the functionality chain that will be formed as a
result of receiving the instruction” and limits the claim because it defines the
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type of instruction as well as “an interaction and interrelationship between
elements.” App. Br. 19.
The Examiner finds that Vänttinen discloses “servicing a client
request by a distributed object component network DOCN via its service
components,” which “shows that a network service/functionality is requested
from and provided to the client, hence performed,” meeting the limitation
recited in claim 7. Ans. 10 (citation omitted).
We agree with the Examiner. As shown in the portions cited by the
Examiner, Vänttinen discloses receiving and servicing a client request to
perform a service, which meets Appellants’ recited “receiving a client
instruction from at least one of a number of clients for a network
functionality to be performed.” Ans. 10 (citing Vänttinen abstract; 3:19-28).
Appellants have not presented persuasive evidence or argument as to why
“receiving a client instruction . . . for a network functionality to be
performed” does not read on Vänttinen’s receipt of a request for a service,
which is subsequently performed.
Appellants also argue that Vänttinen does not disclose “accessing a
number of data stores to obtain data for use by the number of functionality
modules.” App. Br. 20. Appellants argue that Vänttinen only uses the service
repository, which the Examiner has mapped to Appellants’ data stores, “to
find its service components,” and that nothing in Vänttinen indicates “that its
service components do, or are even capable of, using . . . its service
repository SR, in any way.” App. Br. 20.
The Examiner finds that “an existing service can request information
from a service repository SR.” Ans. 11 (citation omitted). Thus, the
Examiner finds that Vänttinen meets the limitation of “accessing a number
of data stores to obtain data for use by the number of functionality modules,”
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as recited in claim 7. Appellants do not address the portion of Vänttinen
cited by the Examiner but argue that the “Examiner fails to provide any
rebuttal of the express statement of Vantinnen [sic]” that Vänttinen “uses its
service repository SR to find its service components.” Reply 4 (citation
omitted).
Once again, we agree with the Examiner. As correctly noted by the
Examiner, Vänttinen describes, in part, “existing service 82 request service
details from the service repository SR.” Ans. 11 (citing Vänttinen 16:29-32).
While Appellants have pointed to one use of the service repository, namely
for locating services, the Examiner has pointed to another use of the service
repository, which meets the recited limitation in claim 7.
Appellants provide no separate argument with respect to the
patentability of claims 1-6 and 8-24. Appellants rely on the arguments
asserted with respect to independent claim 7 and the fact that, with respect to
claims 8, 9, 11, and 15-19, the Official Notice taken by the Examiner does
not cure the alleged deficiencies of Vänttinen. Therefore, the rejections of
claims 1-6 and 8-24 (in combination with Official Notice, with respect to
claims 8, 9, 11, and 15-19) are affirmed for the same reasons as discussed
with respect to independent claim 7 above.

DECISION
For the above reasons, the Examiner’s rejection of claims 1-24 is
affirmed.

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)(2009).

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AFFIRMED

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