Ex Parte McCanne et al

Patent Trial and Appeal Board

Dec 20, 2013

10618369 (P.T.A.B. Dec. 20, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
10/618,369 07/10/2003 Steven McCanne 50269-0722 6737
73066 7590 12/20/2013
HICKMAN PALERMO TRUONG BECKER BINGHAM WONG/Yahoo!
1 Almaden Boulevard
Floor 12
San Jose, CA 95113
EXAMINER
CLOUD, JOIYA M
ART UNIT PAPER NUMBER
2444
MAIL DATE DELIVERY MODE
12/20/2013 PAPER
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte STEVEN McCANNE and ANDREW SWAN
____________

Appeal 2011-007456
Application 10/618,369
Technology Center 2400
____________

Before JOSEPH F. RUGGIERO, JEFFREY S. SMITH, and
JOHNNY A. KUMAR, Administrative Patent Judges.

RUGGIERO, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Final Rejection
of claims 16, 18-24, 26, and 28-39. Claims 1-15, 17, 25, and 27 have been
canceled. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm-in-part.
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Rather than reiterate the arguments of Appellants and the Examiner,
reference is made to the Appeal Brief (filed Sep. 3, 2010), the Answer
(mailed Nov. 29, 2010), and the Reply Brief (filed Jan. 21, 2011).

Appellants’ Invention
Appellants’ invention relates to implementing a Multipoint
Infrastructure Transport (MINT) protocol in a data network. The data
network connects at least a portion of a plurality of nodes to form a multicast
group with one of the nodes designated as a rendezvous node. The
rendezvous node receives state updates and updates the group state in a data
store at the rendezvous node. The state updates are propagated from the
rendezvous node to other nodes in the multicast group. See generally
Abstract.

Claim 16 is illustrative of the invention and reads as follows:

16. An apparatus for processing data at a node in a data network, wherein
the data network connects a plurality of nodes and at least a portion of the
plurality of the nodes form a multicast group, the apparatus comprising:
a data store that stores, in a database, a plurality of entries associated
with the multicast group, wherein each entry comprises data to
be transmitted from a rendezvous point of the multicast group
to members of the multicast group; and
one or more processors comprising one or more sequences of
instructions which when executed by one or more processors,
cause the one or more processors to perform:
logic that disseminates the plurality of entries to members of
the multicast group;
logic that receives, from a node that is not a member of the
multicast group, a request to run a query against the
entries stored in the data store, wherein the query
specifies matching criteria;
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logic that runs the query against the entries in the data store;
logic that indicates that the apparatus has been designated as the
rendezvous node in the multicast group, wherein
designation as the rendezvous node indicates that the
apparatus is to disseminate the plurality of entries to
members of the multicast group; and
logic that disseminates one or more entries that satisfy the
matching criteria to the node that is not a member of the
multicast group.

The Examiner’s Rejection
The Examiner relies on the following prior art reference to show
unpatentability:
Badovinatz US 5,793,962 Aug. 11, 1998

Claims 16 and 36 stand rejected under 35 U.S.C. § 101 as being
directed to non-statutory subject matter.
Claims 16, 18-24, 26, and 28-39, all of the appealed claims, stand
rejected under 35 U.S.C. § 102(e) as being anticipated by Bodavinatz.
1

ANALYSIS
I. 35 U.S.C. § 101 REJECTION
The Examiner finds that claims 16 and 36 are ineligible for patent
protection as being directed to software per se. Ans. 3-4. Appellants argue
that because these claims recite and are directed to “processors” which are
machines, they are therefore directed to statutory subject matter. App. Br. 8;
Reply Br. 1–2. According to Appellants, the Examiner erred in not

1
The Examiner has withdrawn the 35 U.S.C. § 112, second paragraph,
rejection of claim 16. Ans. 8.
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interpreting the claimed “processors” as electronic processing elements, i.e.,
hardware elements, such as a central processing unit (CPU). Id.
We are not persuaded by Appellants’ arguments that the Examiner’s
rejection is erroneous. Contrary to Appellants’ contention that the claimed
“processors” are to be construed as corresponding to the hardware CPUs of
the instant Specification, we agree with the Examiner that the claimed
“processors” can reasonably be interpreted as corresponding to the software
processing agents described in Appellants’ disclosure. Ans. 3-4 (citing
Spec., 2:31-3:8.
“Abstract software code is an idea without physical
embodiment . . . .” 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 abstraction) does not fall within any statutory category. See In re
Warmerdam, 33 F.3d 1354, 1361 (Fed. Cir. 1994). A reasonable
interpretation of claims 16 and 36 consistent with Appellants’ Specification
is that the claims recite no more than software per se which does not fall
within one of the four categories of subject matter that are eligible for patent
protection under § 101: (1) processes; (2) machines; (3) manufactures; and
(4) compositions of matter. 35 U.S.C. § 101. Rather, claims 16 and 36 are
directed to an abstract idea. See Bilski v. Kappos, 130 S.Ct. 3218, 3230
(2010); see also Bancorp Services, L.L.C. v. Sun Life Assur. Co. of Canada,
687 F.3d 1266, 1281 (Fed. Cir. 2012).
Accordingly, we find no error in the Examiner’s rejection of claims 16
and 36 as being direct to non-statutory subject matter.

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II. 35 U.S.C. § 102(e) REJECTION

Appellants contend, with respect to the Examiner’s anticipation
rejection of independent claims 16, 26, and 36 that the Examiner erred in
interpreting Badovinatz as disclosing “a request to run a query against the
entries stored in the data store, wherein the query specifies matching
criteria” as claimed. According to Appellants, the INQUIRY request in
Badovinatz, relied upon by the Examiner as corresponding to the claimed
query, is merely a signal which is sent to a node that has already been
selected from a list to determine if the selected node is active. App. Br. 9-
10. In Appellants’ view (id.), therefore, Badovinatz’s INQUIRY is not a
query which specifies matching criteria and is run against entries in a data
store as required by the claims.
We agree with Appellants, as our interpretation of the disclosure of
Badovinatz coincides with that of Appellants. In support of the stated
position, the Examiner directs attention to the portion of Badovinatz at
column 7, lines 20-28 which describes an INQUIRY to a created processor
group membership list by a processor wishing to become a member of a
processor group to determine the group leader of the processor group. Ans.
9. According to the Examiner (id.), because there is no specific claim
language which defines the “entries” upon which the claimed query is run,
the return of the group leader in response to Badovinatz’s INQUIRY
satisfies the claimed query matching criteria.
As argued by Appellants, however, the claimed “entries” are indeed
defined by the claim language, i.e., they are data that is to be transmitted
from a rendezvous point of a multicast group to members of the multicast
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group. Reply Br. 4-5. Further, Appellants contend, and we agree, that even
assuming, arguendo, that Badovinatz’s processor group membership list can
be construed as corresponding to the claimed data “entries, the claimed
requirements are not satisfied. Id. That is, the mere transmission in
Badovinatz of a group leader’s server name to the non-member wishing to
join the processor group, is not an entry that is transmitted to members of the
multicast group as required by the claims
In view of the above discussion, since all of the claim limitations are
not present in the disclosure of Badovinatz, we do not sustain the
Examiner’s 35 U.S.C. § 102(e) rejection of independent claims 16, 26, and
36, or the rejection of claims 18-24, 28-35, and 37-39 dependent thereon.

CONCLUSION
Based on the analysis above, we conclude that the Examiner erred in
rejecting claims 16, 18-24, 26, and 28-39 for anticipation under 35 U.S.C.
§ 103(a), but did not err in rejecting claims 16 and 36 as being directed to
non-statutory subject matter under 35 U.S.C. § 101.

DECISION
The Examiner’s decision rejecting claims 16, 18-24, 26, and 28-39 is
affirmed-in-part.
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-IN-PART
ELD