Ex Parte Mazzara

Board of Patent Appeals and Interferences

Feb 5, 2009

10193488 (B.P.A.I. Feb. 5, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
________________

Ex parte WILLIAM E. MAZZARA
________________

Appeal 2008-4741
Application 10/193,488
Technology Center 2600
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Decided: February 5, 2009
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Before KENNETH W. HAIRSTON, JOHN A. JEFFERY, and BRADLEY
W. BAUMEISTER, Administrative Patent Judges.

BAUMEISTER, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF CASE
Appellant appeals under 35 U.S.C. § 134 (2002) from the Examiner’s
rejection of claims 1-21. The final rejection of claims 22 and 23 has been
withdrawn, and these claims stand allowed (Ans. 2). We have jurisdiction
under 35 U.S.C. § 6(b) (2002). We affirm.

A. Appellant’s invention
Appellant’s invention relates to a mobile vehicle communication
system and method for performing over the air parameter administration of a
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mobile station (MS) using an internet protocol based over-the-air activation
(IOTA) standard (Spec. 1-2). The MS receives IOTA Alert short message
service (SMS) messages and stores them in a First-In-First-Out (FIFO)
message queue (Spec. 6). When the MS is ready to process the IOTA Alert
SMS messages, the MS initiates a parameter call to the system to service the
first alert message in the queue (Spec. 6).

B. The claims
Independent claims 1 and 17 are illustrative. They read as follows:

1. A method for storing an alert message request for a mobile
vehicle communication system into a message queue comprising:

determining service type availability for the mobile vehicle
communication system;

receiving an alert message request from a wireless
communication system;

setting a preferred roaming list flag for the mobile vehicle
communication system;

storing the alert message request into a mobile vehicle
communication [unit]1 message queue;

1 Dependent claims 2 and 8 recite “the vehicle communication unit” and “the
mobile vehicle communication unit,” respectively. Also, the Abstract states
that the invention provides a method of, inter alia, “storing the alert message
request into the vehicle communication unit message queue,…” (emphasis
added). We therefore interpret independent claim 1 to intend to recite “a
mobile vehicle communication unit message queue,” as this resolves any
(Continued on next page)
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initiating a parameter call to the wireless communication
system to service the alert message request in the message queue; and

servicing the alert message request to a mobile communication
system until completion.

17. A computer usable medium including a program for storing an
alert message request for a mobile vehicle communication system into
a queue comprising:

computer program code that determines service type
availability for the mobile vehicle communication system;

computer program code that receives an alert message request
from a wireless communication system;

computer program code that sets a preferred roaming list flag
for the mobile vehicle communication system;

computer program code that stores the alert message request
into a mobile vehicle communication message queue;

computer program code that initiates a parameter call to the
wireless communication system to service the alert message request in
the message queue; and

computer program code that services the alert message request
to a mobile communication system until completion.

questions regarding the sufficiency of the antecedent bases for claims 2 and
8.
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C. The references and rejections

The Examiner relies on the following prior art references to show
unpatentability:
Bridges US 6,148,197 Nov. 14, 2000
Kari US 6,243,579 B1 Jun. 5, 2001
Lorello US 6,751,463 B1 Jun. 15, 2004
(filed Oct. 4, 1999)
Kaplan US 2004/0203941 A1 Oct. 14, 2004
(filed Apr. 11, 2002)
Yau-Fan WO 98/41044 A2 Sep. 17, 1998

1. Claims 1-4, 6-10, 12-14, 16-19 and 21 stand rejected under 35
U.S.C. § 103(a) as obvious over Yau-Fan in view of Lorello and
Bridges.
2. Claims 5, 15 and 20 stand rejected under 35 U.S.C. § 103(a) as
obvious over Yau-Fan in view of Lorello, Bridges and Kaplan.
3. Claim 11 stands rejected under 35 U.S.C. § 103(a) as obvious over
Yau-Fan in view of Lorello, Bridges and Kari.
4. Claims 17-21 stand rejected under 35 U.S.C. § 101 for being
directed to non-statutory subject matter.

Rather than repeat the arguments of the Appellant or the Examiner,
we refer to the Briefs and the Answer for their respective details.2 In this
decision, we have considered only those arguments actually made by

2 We refer to (1) the Appeal Brief filed Mar. 16, 2007; (2) the Examiner’s
Answer mailed Nov. 28, 2007; and (3) the Reply Brief filed Nov. 12, 2007
throughout this opinion.

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Appellant. Arguments which Appellant could have made but did not make
in the Briefs have not been considered and are deemed to be waived. See 37
C.F.R. § 41.37(c)(1)(vii).

I. THE REJECTIONS OF CLAIMS 1-21 UNDER 35 U.S.C. § 103

ISSUE
The Examiner asserts that it would have been obvious to modify the
method and system for network initiated parameter updating of a MS via
over the air parameter administration that is taught by Yau-Fan so as to: (1)
further include a FIFO message queue for storing SMS messages because
Lorello teaches this would allow the MS user to view the various updates
(Ans. 5-6); and also (2) set a preferred roaming list flag as taught by Bridges
because the flag would inform the system that a required update to the
preferred roaming list is yet to be performed (Ans. 6-7).
Appellant asserts (1) the combined teachings of Yau-Fan, Lorello and
Bridges do not teach every element of claims 1, 12 or 17 because none of the
references teaches initiating a parameter call to the wireless communication
system to service the alert message request (App. Br. 11; Reply Br. 2-3); and
(2) the Examiner’s rationale for combining Lorello’s FIFO message queue is
improper (App. Br. 13-14). Appellant also asserts multiple reasons why the
references teach away from each other and are not reasonably combinable to
form the basis for a proper obviousness rejection under 35 U.S.C. § 103
(App. Br. 12-14).
The issues before us, then, are as follows:
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(1) Has Appellant shown the Examiner erred in finding that the cited
prior art teaches all of the elements of claims 1, 12 and 17, including the
specific teaching of the MS initiating a parameter call to the wireless
communication system to service the alert message request?
(2) Has Appellant shown that the Examiner erred in finding that
reasonable motivation existed to combine the prior-art FIFO queue and
preferred roaming list flag into Yau-Fan’s system?

FINDINGS OF FACT
The record supports the following Findings of Fact (FF) by a
preponderance of the evidence:
1. Bridges is directed towards an intelligent roaming system that
performs over the air updating of MS parameters (Bridges, Abstract; col. 1,
ll. 1-9), including updates of preferred roaming lists stored within the MS
(Bridges, col. 8, ll. 50-55; col. 9, ll. 10-15). Bridges discloses that use of
SMS messages may facilitate the variously used air-interface technologies
with the delivery of messages to the MS (Bridges, col. 10, ll. 10-32).
2. Bridges teaches that in order for the MS to receive updated lists for
preferred wireless carriers for intelligent roaming, the home network system
can broadcast a code indicating when the central Preferred System
Identification List/Intelligent Database Downloading database was last
updated. Based on this code, the MS could then determine periodically if it
has the most current information, and when not current, the MS can initiate a
request for reprogramming (or updating of the proper parameters) (Abstract
and col. 30, ll. 42-53). Restated, Bridges discloses that as an alternative to
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the wireless system initiating the parameter call, the MS may initiate a
parameter call to the wireless communication system to service alert
messages requests stored in the MS.
3. Yau-Fan discloses that the roaming list is one of the parameters that
commonly needs to be updated by the over-the-air parameter administration
(OTAPA) methodology (Yau-Fan, 8:21-26).
4. Lorello discloses in its BACKGROUND OF THE INVENTION
section that it was previously known to store SMS messages for mobile
subscribers either at a server location or at a mobile subscriber in a FIFO
queue memory (Lorello, col. 3, ll. 11-26).
5. Lorello teaches that various types of SMS messages may be stored in
a queue possessed within a handset (or MS) (Lorello, col. 3, ll. 11-17), and
that depending upon the type of SMS message, a determination can be made
whether the received message requires alerting the user (Lorello, col. 10, l.
66 – col. 11, l. 6).

PRINCIPLES OF LAW
1. In rejecting claims under 35 U.S.C. § 103, it is incumbent upon the
Examiner to establish a factual basis to support the legal conclusion of
obviousness. See In re Fine, 837 F.2d 1071, 1073 (Fed. Cir. 1988).
2. If the Examiner’s burden is met, the burden then shifts to the
Appellant to overcome the prima facie case with argument and/or evidence.
Obviousness is then determined on the basis of the evidence as a whole and
the relative persuasiveness of the arguments. See In re Oetiker, 977 F.2d
1443, 1445 (Fed. Cir. 1992).
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3. “The test for obviousness is not whether the features of a secondary
reference may be bodily incorporated into the structure of the primary
reference.... Rather, the test is what the combined teachings of the
references would have suggested to those of ordinary skill in the art.” In re
Keller, 642 F.2d 413, 425 (CCPA 1981). See also In re Sneed, 710 F.2d
1544, 1550 (Fed. Cir. 1983) (“[I]t is not necessary that the inventions of the
references be physically combinable to render obvious the invention under
review.”); and In re Nievelt, 482 F.2d 965, 968 (CCPA 1973) (“Combining
the teachings of references does not involve an ability to combine their
specific structures.”). Rather, “if a technique has been used to improve one
device, and a person of ordinary skill in the art would recognize that it would
improve similar devices in the same way, using the technique is obvious
unless its actual application is beyond his or her skill.” KSR Int’l v. Teleflex,
Inc., 127 S.Ct. 1727, 1740 (2007).
4. One cannot show nonobviousness by attacking references individually
where the rejections are based on combinations of references. See In re
Keller, 642 F.2d 413, 426 (CCPA 1981); In re Merck & Co., 800 F.2d 1091,
1097 (Fed. Cir. 1986).

ANALYSIS
A. THE CITED PRIOR ART DISCLOSES ALL CLAIMED ELEMENTS.
The base reference of the obviousness rejection, Yau-Fan, discloses
an apparatus and method for initiating an OTAPA of a MS without the need
for interacting with a MS user. Flags are used in the network to alert the
system that an attempted update was not completed because a MS was not
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update accessible for any of several reasons. The flags cause the system to
initiate an update when the MS next becomes update accessible (Abstract).
Yau-Fan performs the OTAPA procedure via Short Message Service (SMS)
messages (Yau-Fan, 12:10-15). The preselected roaming list (PRL) was one
known operational parameter that the invention of Yau-Fan wished to update
via an OTAPA mechanism (e.g., 2:13−3:15; 8:21−26).
Against this background, Appellant argues that every element of the
claims is not taught by the cited prior art. Specifically, Appellant argues that
claims 1, 12 and 17 require initiating a parameter call to the wireless
communication system to service the alert message request in the message
queue. In contrast, each of the cited references relies on the wireless
communication system contacting the MS to provision the MS rather than
the MS initiating the parameter call to the wireless communication system
(App. Br. 11; Reply Br. 2-3).
This argument is not persuasive. Bridges is directed towards an
intelligent roaming system that performs over the air updating of MS
parameters, including updates of preferred roaming lists stored within the
MS (FF 1). Bridges discloses that use of SMS messages may facilitate the
variously used air-interface technologies with the delivery of messages to
the MS (FF 1). Bridges teaches that one option for implementing the
intelligent roaming system with over-the-air programming is for the home
network (or wireless communication system) to broadcast a code indicating
when the central database was last updated, and based upon this code, MSs
could then determine periodically if they have the most current information.
If the information is not current, the MS could request reprogramming by
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sending a request message to the wireless communication system using an
over-the-air messaging protocol (FF 1, 2). This disclosure is synonymous
with stating the MS is “initiating a parameter call to the wireless
communication system to service the alert message.”

B. THE CITED PRIOR ART PROVIDES REASONABLE MOTIVATION TO COMBINE
THE PRIOR-ART FIFO QUEUE AND PREFERRED ROAMING LIST FLAG INTO YAU-
FAN’S SYSTEM.

Appellant argues that the references teach away from each other, or
are otherwise not combinable, for multiple reasons. Appellant first argues
that the references teach away from each other because the three references
possess different functionalities (App. Br. 11). This argument is not
persuasive. “The test for obviousness is not whether the features of a
secondary reference may be bodily incorporated into the structure of the
primary reference.... Rather, the test is what the combined teachings of
those references would have suggested to those of ordinary skill in the art.”
Keller, 642 F.2d at 425. See also Sneed, 710 F.2d at 1550 (“[I]t is not
necessary that the inventions of the references be physically combinable to
render obvious the invention under review.”); and Nievelt, 482 F.2d at 968
(“Combining the teachings of references does not involve an ability to
combine their specific structures.”). Rather, “if a technique has been used to
improve one device, and a person of ordinary skill in the art would recognize
that it would improve similar devices in the same way, using the technique is
obvious unless its actual application is beyond his or her skill.” KSR, 127
S.Ct. at 1740.
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Appellant next argues that since Yau-Fan teaches the OTAPA may be
performed whether the MS is idle or is being used actively on a traffic
channel, one of ordinary skill in the art would not be motivated to use
Lorello’s queue or Bridge’s flag (App. Br. 11, citing Yau-Fan, 12:18-19.).
This argument is not persuasive. The cited passage on page 12 of
Yau-Fan states, “As indicated previously, OTAPA may be performed
whether the MS is idle or being used actively on a traffic channel” (emphasis
added). The phrase, “as indicated previously,” signals that Yau-Fan contains
additional discussion on this point. This additional discussion is provided on
page 6: “[T]he OTAPA mechanism of the present invention may be
performed at any time the subscriber has an active mobile station, as long as
the OTAPA process does not interfere with normal user operation of the
device (e.g., placing or receiving telephone calls).”
We read Yau-Fan to teach that in some circumstances the OTAPA
may be able to be performed regardless of whether the MS is idle or actively
in use. Under other envisioned circumstances, though, the OTAPA would
not be able to be performed while the MS is in use. In these latter
circumstances, Lorello’s SMS queue would be useful for storing the
message alerts of Yau-Fan. Moreover, the use of Bridge’s flag would be
useful when Lorello’s queue is combined since Yau-Fan discloses that the
roaming list is one of the parameters that commonly needs to be updated by
the OTAPA methodology (FF 3). Thus, the Examiner’s proposed
modification would not render the invention unsatisfactory for its intended
purpose.

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Appellant argues (App. Br. 12):
Yau-Fan further teaches away from “setting a preferred
roaming list flag for the mobile vehicle”, and the combination
with Bridges, by teaching that the [mobile switching center] in
the newly visited system sends a registration notification
message to the [visiting location registry] which forward[s] the
notification request to the home system “and the message
eventually gets to the home system.” See, FIG. 18 and page 19,
lines 9-18.

This argument is not persuasive. The cited portions of Yau-Fan relate
to the specific situation where the OTAPA process has been initiated but the
MS can not be contacted (Yau-Fan, 17:29-30). This scenario is different
from the scenario upon which the rejection was based: where the MS is
contacted, but the MS is actively in use.
Appellant argues that the Examiner makes no showing that the
motivation to combine the references comes from the references or that the
motivation comes from legal precedent. Appellant also argues that the
Examiner has not provided a sufficient showing of motivation through the
use of Official Notice or an Examiner’s Affidavit (App. Br. 12).
This argument is not persuasive. For the reasons set forth throughout
this opinion, we find that the prior art, itself, does possess reasonable
motivation to combine the cited references’ teachings. As such, the
Examiner did not need to rely upon Official Notice or an Examiner’s
Affidavit.
Appellant argues no motivation exists to combine Bridges or Lorello
when faced with a network-initiated parameter update problem of the kind
addressed by Yau-Fan. Appellant alleges this is because the systems of
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Bridges and Lorello operate based on a fully parameter updated system, and
without proper parameters, neither Lorello nor Bridges can operate properly
(App. Br. 12-13).
This argument is not persuasive. Bridges teaches that in order for the
MS to receive updated lists for preferred wireless carriers for intelligent
roaming, the home network system can broadcast a code indicating when the
central Preferred System Identification List/Intelligent Database
Downloading database was last updated. Based on this code, the MS could
then determine periodically if it has the most current information, and when
not current, the MS can initiate a request for reprogramming (or updating of
the proper parameters) (FF 2).
Appellant argues that the Examiner is incorrect in asserting that
“Lorello does teach such a queue and storing system…” (App. Br. 13, citing
statements made by the Examiner in a Non-Final Office Action dated Dec.
28, 2004). Appellant argues that “Lorello does not teach ‘such a queue
system’ as alleged by the Examiner [because] Lorello does not result in
initiation of any call to a wireless communication system” (Id., emphasis in
original).
This argument is not persuasive. Lorello was not relied upon for
teaching the initiation of the parameter update call. This limitation was
taught by Bridges (FF 2). Therefore, it is immaterial whether Lorello, alone,
failed to teach this limitation. One cannot show nonobviousness by
attacking references individually where the rejections are based on
combinations of references. See Keller, 642 F.2d at 426; Merck, 800 F.2d at
1097.
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Appellant argues that the Examiner’s asserted motivation to combine
the references—because the “use of message queues to store SMS is well
known in the art and allows the MS user to view the various updates”—is
improper for several reasons (App. Br. 14:1-2; Reply Br. 4:1-5; emphasis
omitted). We agree with Appellant that the asserted motivation was
improper. As noted by Appellant, “Yau-Fan’s system is intentionally
designed to avoid MS user involvement… Thus, there would be no reason
for queuing alert message requests to ‘allow the MS user to view the various
updates’ as asserted by the Examiner.” (Reply Br. 4:6-16).
However, the Examiner’s failure to fully articulate a proper
motivation is not dispositive of whether appropriate motivation to combine
the references’ teachings exists in fact. Lorello discloses in its
BACKGROUND OF THE INVENTION section that it was previously
known to store SMS messages for mobile subscribers either at a server
location or at a mobile subscriber in a FIFO queue memory (FF 4). This
passage is an implicit teaching that sometimes SMS messages—of various
natures—are received by the MS faster than they can be processed, and in
such cases, they may be stored in a queue until the MS is ready to process
them. This passage also teaches that queuing the SMS messages either at
the server or in the MS are functionally equivalent methods. Lorello also
teaches that various types of SMS messages may be stored in a queue
possessed within a handset (or MS), and that depending upon the type of
SMS message, a determination can be made whether the received message
requires alerting the user (FF 5). As such, Lorello does teach FIFO queues
located in the MS for receiving SMS messages, and Lorello does provide
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reasonable motivation for one of ordinary skill in the art to include such a
queue in the system disclosed by Yau-Fan.
Appellant argues no motivation exists to combine references because
“Yau-Fan addresses unavailability and incomplete parameter administration
attempts using the flag setting procedure at the wireless system” (Reply Br.
4:7-8). Since “Yau-Fan includes a provision for dealing with the
unavailability of the MS and/or an incomplete update process . . . there must
be some objectively-based reason shown why one of ordinary skill in the art
would abandon the express teaching of this in Yau-Fan to implement a
different procedure disclosed in another prior art reference that is not even
related to parameter administration” (Reply Br. 4:17-22).
This argument is not persuasive. Whether Lorello is specifically
directed towards parameter administration is not dispositive. Lorello teaches
a wireless communications system and method that performs the same
general purpose or function as desired by Yau-Fan: the sending of SMS
messages to a MS and the storing of these messages until the MS is ready to
process them (Lorello, BACKGROUND OF THE INVENTION). “[I]f a
technique has been used to improve one device, and a person of ordinary
skill in the art would recognize that it would improve similar devices in the
same way, using the technique is obvious unless its actual application is
beyond his or her skill.” KSR, 127 S.Ct. at 1740. Appellant has not
provided any evidence that the substitution of Lorello’s FIFO queue for
Yau-Fan’s flag setting procedure would be beyond the skill of a person of
ordinary skill in the art. Accordingly, Appellant has not met the burden of
showing the Examiner erred in finding the replacement of Lorello’s queue
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for Yau-Fan’s flag setting procedure constituted an obvious substitution of a
functionally equivalent component having an art recognized suitability for
an intended purpose.
Appellant argues “Lorello is directed to queuing situations in which at
least some subsequent queued messages render one or more earlier queued
messages obsolete (Reply Br. 4:8-10), and that “[t]here is nothing in Yau-
Fan or otherwise from the prior art that has been identified by the Examiner
to indicate that the multiple alert message requests stored in Appellant’s
queue would include ones super[s]eding or obsoleting earlier alert message
requests” (Reply Br. 4:24-29).
This argument is not persuasive. Lorello is not being relied upon for
the teachings of the specific types of SMS messages that are being stored in
the queue. Rather, Lorello is being used for its broader teaching that it was
known to store SMS messages, generally, in a FIFO queue within a MS.
Appellant does not separately argue any additional limitations of
dependent claims 2-4, 6-10, 13, 14, 16, 18, 19, and 21, which were also
rejected as obvious over Yau-Fan in view of Lorello and Bridges. With
respect to the remaining rejections of claims 5, 11, 15, and 20, Appellant
provides no patentability arguments directed to the additional references of
Kaplan for claims 5, 15, and 20; or Kari for claim 11. Rather, Appellant
repeats arguments directed to claims 1, 12 and 17 and applies them to the
remaining rejections (App. Br. 14 and 16). Accordingly, for the reasons
discussed above, we sustain the obviousness rejections of claims 1-21.

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II. THE REJECTION OF CLAIMS 17-21 UNDER 35 U.S.C. § 101
ISSUE
The Examiner rejected claims 17-21 under 35 U.S.C. §101 for being
directed to non-statutory subject matter (Ans. 3-4). The Examiner’s
rationale was that “claims to a computer usable medium including a program
and then listing program codes are not physical ‘things’ and do not define
any structural and functional interrelationships between the computer
program and other claimed elements of a computer, which permit the
computer program’s functionality to be realized” (Id.). The Examiner also
cited MPEP 2106 and the USPTO’s “Interim Guidelines for Examination of
Patent Applications for Patent Subject Matter Eligibility” (Id. 4).
Appellant responds that the claim language, “computer usable
medium” is synonymous with the more ubiquitous language, “computer
readable medium” (Reply Br. 2). Appellant further argues (1) that
“computer readable medium” has been widely accepted by the Patent Office
to mean a tangible device that can be read or otherwise utilized by a
computer to provide it with data or programming; and (2) that the ordinarily
skilled artisan would understand “computer readable medium” to include
optical storage media (such as a DVD or CDROM), magnetic media (such as
a magnetic disk drive), and solid state memory (such as FLASH memory)
(Id.).
The issue before us, then, is whether a claim directed to patentable
subject matter when it recites, “[a] computer usable medium including a
program for storing an alert message request for a mobile vehicle
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communication system into a queue comprising: computer program
code…?”

PRINCIPLES OF LAW
1. “Congress intended statutory subject matter [encompassed by 35
U.S.C. § 101] to ‘include anything under the sun that is made by man.’”
Diamond v. Chakrabarty, 447 U.S. 303, 309 (1980).
2. “[T]he term ‘manufacture’ in § 101 in accordance with its dictionary
definition [means] ‘the production of articles for use from raw or prepared
materials by giving to these materials new forms, qualities, properties, or
combinations, whether by hand-labor or by machinery.’” Diamond v.
Chakrabarty, 447 U.S. 303, 308 (1980) (internal citation omitted).
3. The scope of subject matter encompassed by § 101 does have limits.
Exceptions falling outside of the scope of § 101’s coverage include the laws
of nature, physical phenomena, and abstract ideas. Diamond v.
Chakrabarty, 447 U.S. 303, 309 (1980).
4. “The fact that the claim covers methods which are essentially
mathematical in nature…is not dispositive [of whether the claim is directed
to statutory subject matter]. Claims should be evaluated by their limitations,
not by what they incidentally cover.” In re Warmerdam, 33 F.3d 1354, 1359
(Fed. Cir. 1994).
5. “Whether to treat a preamble as a limitation is a determination
‘resolved only on review of the entire[ ] ... patent to gain an understanding of
what the inventors actually invented and intended to encompass by the
claim.’” Catalina Marketing Int’l., Inc. v. Coolsavings.com, Inc., 289 F.3d
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801, 808 (Fed. Cir. 2002) (quoting Corning Glass Works v. Sumitomo
Electric U.S.A., Inc., 868 F.2d 1251, 1257 (Fed. Cir. 1989)). “In general, a
preamble limits the invention if it recites essential structure or steps, or if it
is ‘necessary to give life, meaning, and vitality’ to the claim. Id. (quoting
Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1305 (Fed. Cir.
1999)). “Conversely, a preamble is not limiting ‘where a patentee defines a
structurally complete invention in the claim body and uses the preamble only
to state a purpose or intended use for the invention.’” Id. (quoting Rowe v.
Dror, 112 F.3d 473, 478 (Fed. Cir. 1997)). The court in Catalina noted that
although no litmus test exists for determining whether to treat a preamble as
a limitation, several “guideposts” have emerged from the case law in this
area. Id. In particular, guideposts tending to show that the preamble is a
claim limitation include: Jepson claiming, dependence on a particular
disputed preamble phrase for antecedent basis, when the preamble is
essential to understand limitations or terms in the claim body, and when the
preamble recites additional structure or steps underscored as important by
the specification. Id. On the other hand, the preamble might not constitute a
claim limitation when the claim body describes such a structurally complete
invention that deleting the preamble phrase does not affect the structure or
steps of the claimed invention. Id. at 809. Also, “preambles describing the
use of an invention generally do not limit the claims because the
patentability of apparatus or composition claims depends on the claimed
structure, not on the use or purpose of that structure.” Id.

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ANALYSIS
Claim 17 is directed to “a computer usable medium including a
program,” or restated, computer software recorded on a storage media.
Appellant correctly contends that one of ordinary skill in the art would
recognize a “computer usable medium” to include optical storage media
(such as a DVD or CDROM), magnetic media (such as a magnetic disk
drive), and solid state memory (such as FLASH memory). Such media fall
within the meaning of a “manufacture” as defined in Diamond v.
Chakrabarty, 447 U.S. 303, 308 (1980): “[T]his Court has read the term
‘manufacture’ in § 101 in accordance with its dictionary definition to mean
‘the production of articles for use from raw or prepared materials by giving
to these materials new forms, qualities, properties, or combinations, whether
by hand-labor or by machinery.’” See also Warmerdam, 33 F.3d at 1358,
1360 (holding that a claim directed to “[a] machine having a memory which
contains data representing [well known mathematical constructs]” is directed
to patentable subject matter under 35 U.S.C. §101: a machine.)
The ultimate question though is not whether this type of claim reads
on statutory “manufactures.” Rather, the more significant question is
whether a claim that recites “a computer usable medium” should be
interpreted so broadly as reading not only on statutory subject matter, but
additionally reading on non-statutory subject matter as well. The Federal
Circuit has not considered this precise issue, but the USPTO has, for a
number of years, considered such claims to be statutory as a product claim.
See In re Lowry, 32 F.3d 1579, 1582 (Fed. Cir. 1994); see also MPEP
2106.01(I).
Appeal 2008-4741
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21
It is true that this tribunal has, at times, sustained rejections of such
claims under § 101 for being directed to non-statutory subject matter. But
those decisions are distinguishable from this case because they addressed
situations where the Specifications expressly defined the claimed “computer
readable medium” as also reading on non-statutory subject matter. In Ex
parte Shealy, No. 2006-1601 (BPAI Apr. 23, 2007) (Informative), for
example, this tribunal sustained the Examiner’s rejection of the claims under
35 U.S.C. § 101 as being directed to non-statutory subject matter because the
Specification expressly stated that “the computer-readable medium could
even be paper” (Id., at 36). In Ex Parte Casazza, No. 2006-2228 (BPAI
Sept. 6, 2007) (non-precedential), this tribunal sustained the Examiner’s
rejection of claims reciting “computer-readable signal bearing media”
because, as Appellant Casazza acknowledged, the claimed media was not
limited to tangible media, but may also include intangible media such as a
carrier wave (Id. at 4).
The present Specification, however, does not set forth any definition
or any examples of what is covered by their “computer usable medium.”
The Summary of the Claimed Subject Matter section of the Appeal Brief
also fails to point to any specific description or definition in the
Specification for the term, “computer usable medium.” See App. Br. 7-9. In
light of this absence of any further guidance from the Specification, we must
determine whether the term, “computer usable medium,” should be
interpreted to only read on statutory manufactures, or whether it should be
interpreted more broadly to also include non-statutory media such as printed
paper or signal waves.
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22
The Examiner has not cited any legal authority for the proposition that
a claim to a computer usable media should be barred under 35 U.S.C. § 101
merely because it may incidentally read on nonstatutory subject matter. In
fact, if this were the law, all claims to computer readable media would be
presumed nonstatutory unless the associated Specifications clearly and
unambiguously defined the term “computer readable medium” to be limited
to only statutory subject matter. Such a bright-line default rule would be
contrary to established precedent. See Warmerdam, 33 F.3d at 1359
(holding that “[t]he fact that the claim covers methods which are essentially
mathematical in nature…is not dispositive [of whether the claim is directed
to statutory subject matter]. Claims should be evaluated by their limitations,
not by what they incidentally cover.”).
In the present case, there is no express statement in the Specification,
nor any other indication in the record, that the term “computer usable
medium” is intended to include non-statutory subject matter such as signals
or paper. Accordingly, we find that the term “computer usable medium” is
limited to only tangible manufactures. As such, claim 17 is directed to
statutory subject matter.
Appellant’s use of “computer usable medium” instead of the more
commonly used term, “computer readable medium,” does not change our
analysis. While the term “usable” is broader than “readable,” this distinction
does not affect our analysis regarding whether the claim as a whole recites
statutory subject matter under § 101. Further, the Examiner has not
explained why the former expression of claim 17 should be interpreted any
differently than the latter expression.
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23
The Examiner’s position appears to be that the body of claim 17 only
recites computer program code, and computer program code, per se, is not
patentable subject matter (Ans. 3-4). This position implies that the
Examiner is not treating the preamble of claim 17 as a limitation of the
claim. Therefore, to answer whether claim 17 is directed to patentable
subject matter, we must decide whether the preamble of claim 17 further
limits the body of the claim.
A close review of claim 17 evidences that the first and third
limitations in the claim’s body depend on the preamble for antecedent basis
for the language, “the mobile vehicle communication system.” Also, the
preamble recites structures that are additional to the computer code itself,
and which the Specification indicates to be important: the mobile vehicle’s
communication system and the queue. Moreover, the limitations of the
claim body alone cannot be said to describe a structurally complete
invention because they recite absolutely no physical structure at all. The
only physical structure expressly recited in claim 17 appears in the
preamble: “a computer usable medium including a program.” On balance,
the body of claim 17 sufficiently depends on the claim’s preamble to find
that the preamble is an additional limitation of the claim. As such, we find
that claims 17-21 are directed towards patentable subject matter, and the
Examiner’s rejection under 35 U.S.C. § 101 cannot be sustained.3

3 Dependent claims 18, 20 and 21 each recite, “[t]he program of claim 17
further comprising computer program code that determines [a parameter].”
Dependent claim 19 recites, [t]he program of claim 17 further comprising
computer [sic: program code] that determines…” Based upon the
(Continued on next page)
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24

CONCLUSIONS OF LAW
For the reasons set forth above, we find:
(1) Appellant has not shown that the Examiner erred in finding that Yau-
Fan, Lorello and Bridges, in combination, teach all of the elements of
independent claims 1, 12 and 17, including the specific teaching of the MS
initiating a parameter call to the wireless communication system to service
the alarm message request.
(2) Appellant has not shown that the Examiner erred in finding that
reasonable motivation existed to combine the prior-art FIFO queue and
preferred roaming list flag into Yau-Fan’s system.
(3) Accordingly, Appellant has not shown that the Examiner erred in
rejecting claims 1-21 under 35 U.S.C. § 103.
(4) Appellant has shown that the Examiner erred in rejecting claims 17-21
under 35 U.S.C. § 101.

interrelationship between dependent claims 18-21 and independent claim 17,
we interpret claims 18-21 as also being meant to be directed to the computer
readable medium—not to a computer program per se. Accordingly, claims
18-21 are interpreted as intending to recite, “[t]he computer usable medium
including a program of claim 17, the program further comprising…” No
portion of this decision should be interpreted as holding that claims to
computer software, per se, are deemed to be directed to patentable subject
matter under 35 U.S.C. § 101.
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DECISION
We sustain the Examiner's obviousness rejections with respect to all
pending claims on appeal. Therefore, the Examiner’s rejection of claims 1-
21 under 35 U.S.C § 103 is affirmed.
We do not sustain the Examiner's rejection of claims 17-21 under 35
U.S.C. § 101. Therefore, the Examiner’s rejection of claims 17-21 under 35
U.S.C § 101 is reversed.
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

tdl

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