Ex Parte McGee et al

Patent Trial and Appeal Board

Sep 12, 2013

10650894 (P.T.A.B. Sep. 12, 2013)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
10/650,894 08/28/2003 Jason Robert McGee RSW920030102US1 8718
46320 7590 09/12/2013
CAREY, RODRIGUEZ, GREENBERG & O''''KEEFE, LLP
STEVEN M. GREENBERG
7900 Glades Road
SUITE 520
BOCA RATON, FL 33434
EXAMINER
BATES, KEVIN T
ART UNIT PAPER NUMBER
2456
MAIL DATE DELIVERY MODE
09/12/2013 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 JASON ROBERT McGEE,
MICHAEL JOHN MORTON, and
BRENT A. PETERS
____________________

Appeal 2013-0086091
Application 10/650,894
Technology Center 2400
____________________

Before JEAN R. HOMERE, ST. JOHN COURTENAY III, and
ANDREW J. DILLON, Administrative Patent Judges.

HOMERE, Administrative Patent Judge.

DECISION ON APPEAL

1 The real party in interest is International Business Machines, Corp. (App.
Br. 2.) In an earlier proceeding (Appeal 2010-000960, dated 05/30/2012),
we previously affirmed the Examiner’s rejection of claims 1, 2, 4-12, and
14-20.

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STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
Final Rejection of claims 1, 2, 4-12, and 14-20. Claims 3 and 13 have been
canceled. (App. Br. 1.) We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
Appellants’ Invention
Appellants invented a method and system for logically merging
identified modules of a web application (410) to thereby generate a set of
merged web modules (440). (Spec. 1, ll. 7-12, Fig. 4.) In particular, upon
identifying one or more shared web modules (422, 424, 426) stored in a
shared web module designation file (416), descriptor information associated
with each identified shared web module is included in the designation file
(416) to logically merge the shared web module with other web modules
(412, 414) within the web application. (Spec. 19, ll. 11-21.)
Illustrative Claim
Independent claim 1 further illustrates the invention as follows:

1. A method of generating a logically merged web module
for a web application, comprising:

responsive to a determination that a shared module
designation file exists, identifying at least one shared web
module from the shared module designation file to be
incorporated into a web application, to form at least one
identified shared web module, wherein the shared web
module designation file includes all descriptors that reference
the at least one shared web module of the web application such
that all descriptor information that is required for each web
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module of the web application is provided in the shared web
module designation file;2

locating the at least one identified shared web module
using path information;

logically merging the at least one shared web module
with web modules of the web application, in accordance with
the shared web module designation file to generate a logically
merged web application, wherein a reference to the at least one shared
web module is used in the logically merged web application rather
than a copy of the at least one shared web module.

Prior Art Relied Upon
The Examiner relies on the following prior art as evidence of
unpatentability:
Li US 6,519,594 B1 Feb. 11, 2003
Sharma US 6,721,777 B1 Apr. 13, 2004
(Filed May 24, 2000)
Spotswood US Patent Pub. No.: 2004/0255293 A1 Dec. 16, 2004
(Effectively filed Feb. 12, 2003)

Rejections on Appeal
The Examiner rejects the claims on appeal as follows:
1. Claims 11, 12, and 14-18 stand rejected under 35 U.S.C. § 101(a) as
being directed to non-statutory subject matter.

2 Claim 1 in the prior proceeding referenced in supra note 1 has been
amended to add therein the limitations emphasized above.
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2. Claims 1, 2, 4, 6-12, and 14-20 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over the combination of Li and
Spotswood.
3. Claim 5 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Li, Spotswood, and Sharma.

ANALYSIS
We consider Appellants’ arguments seriatim as they are presented in
the principal Brief, pages 5-14.
Non-statutory Subject Matter Rejection
Dispositive Issue 1: Under 35 U.S.C. § 101, did the Examiner err in
concluding that claims 11, 12, and 14-18 are directed to non-statutory
subject matter?
Appellants argue that because in various non-precedential decisions
recently issued by the Board “computer readable storage medium” was
interpreted to cover only statutory subject matter, claim 11 is patent-eligible.
(App. Br. 5-8.) In response, the Examiner concludes that because
Appellants’ Specification does not define the scope of “computer readable
storage medium,” the term encompasses both non-transitory and transitory
propagating signals. Therefore, the claim is directed to non-statutory subject
matter. (Ans. 3-4.)
We agree with the Examiner’s conclusion. An expanded PTAB panel
recently held in an appeal involving the same issue and the same real party
in interest (Ex parte Mewherter, PTAB Appeal 2012-007692 (May 08,
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2013) (Precedential), that where Appellants’ Specification fails to define a
computer-readable storage medium, the term must be broadly and
reasonably construed according to its ordinary and customary meanings to a
person of ordinary skill in the art to encompass both non-transitory and
transitory media.3 In assessing the ordinary and customary meanings
attributed to the term computer-readable storage medium,4 the ordinary

3 See Ex parte Mewherter (available at http://e-
foia.uspto.gov/Foia/ReterivePdf?system=BPAI&flNm=fd2012007692-05-
08-2013-4).
4 See Mewherter at 6 n.4 (stating “[a]lthough not binding on this Board, we
do find noteworthy that the Office recently mandated in training to its
examiners that, in such cases, a claim reciting computer-readable storage
media must be construed under the broadest reasonable interpretation as
encompassing a signal per se unless amended to avoid such language. U.S.
Patent & Trademark Office, Evaluating Subject Matter Eligibility Under 35
USC § 101 (Aug. 2012 Update); pp. 11-14, available at
http://www.uspto.gov/patents/law/exam/101_training_aug2012.pdf.”).
See id. at 7-8 n.5 (stating “there are several factors to consider when
determining whether a ‘computer readable storage medium’ type claim
avoids encompassing a non-statutory signal:
(1) Extrinsic evidence relevant to the meaning as would be understood by
one skilled in the art at the time of the effective filing date of the patent
application. As opposed to the voluminous extrinsic evidence dated 2002
and thereafter which is discussed in this decision, before 2002 there is little
evidence that the ordinary and customary meaning of such ‘storage medium’
terms encompassed a signal.
(2) Whether there is express intent in applicant’s specification to limit the
term, i.e., applicant’s specification is not silent as to the meaning of such
terms.
(3) Whether the claim expressly limits the medium to ‘non-transitory’
embodiments.
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skilled artisan needs to consider several factors including intrinsic evidence
as provided in Appellants’ Specification, as well extrinsic evidence (e.g.,
dictionary definitions, prior uses of the term or equivalents thereof by
Appellant and other industry participants). (Mewherter at 9-12.) In
particular, we held that:
[T]hose of ordinary skill in the art would understand the claim term
“machine-readable storage medium” would include signals per se.
Further, where, as here, the broadest reasonable interpretations of all
the claims each covers a signal per se, the claims must be rejected
under 35 U.S.C. § 101 as covering non-statutory subject matter. See
In re Nuijten, 500 F.3d 1346, 1356-57 (Fed. Cir. 2007) (transitory
embodiments are not directed to statutory subject matter); Subject
Matter Eligibility of Computer-Readable Media, supra; U.S. Patent &
Trademark Office, Interim Examination Instructions for Evaluating
Subject Matter Eligibility Under 35 U.S.C. § 101, Aug. 24, 2009; p. 2,
available at http://www.uspto.gov/web/offices/pac/dapp/opla/2009-
08-25_interim_101_instructions.pdf; U.S. Patent & Trademark Office,
Evaluating Subject Matter Eligibility Under 35 USC § 101 (August
2012 Update); pp. 11-14, available at
http://www.uspto.gov/patents/law/exam/101_training_aug2012.pdf.
We note that Appellants are not precluded from amending these
claims to overcome this rejection. Guidance on this point is provided
in U.S. Patent & Trademark Office, Subject Matter Eligibility of
Computer Readable Media, 1351 Off. Gaz. Pat. Office 212 (Feb. 23,
2010) (“A claim drawn to such a computer readable medium that
covers both transitory and non-transitory embodiments may be

(4) Whether the claim implicitly limits the medium to ‘non-transitory’
embodiments. The most common form of this is the use of ‘means plus
function’ elements in the claim (i.e., a true Beauregard type claim). Such
means plus function elements are limited by statute to the corresponding
structure in the specification and equivalents thereof. Such a structure
requirement limits the claim to non-transitory embodiments.”).
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amended to narrow the claim to cover only statutory embodiments to
avoid a rejection under 35 U.S.C. § 101 by adding the limitation ‘non-
transitory’ to the claim.”). See also U.S. Patent & Trademark Office,
Evaluating Subject Matter Eligibility Under 35 USC § 101 (August
2012 Update) (pp. 11-14), available at
http://www.uspto.gov/patents/law/exam/101_training_aug2012.pdf
(noting that while the recitation “non-transitory” is a viable option for
overcoming the presumption that those media encompass signals or
carrier waves, merely indicating that such media are “physical” or
tangible” will not overcome such presumption).

(Id. at 13-14.)
In this case, our construction of a computer-readable storage medium
as encompassing transitory media is appropriate because: (1) there was
voluminous extrinsic evidence at the time of the effective filing date of
Appellants’ patent application that a “storage medium” encompasses a
signal; (2) Appellants’ Specification fails to expressly limit a “computer-
readable storage medium” to non-transitory media; and (3) the claim does
not include recitations either expressly or implicitly limiting the “computer-
readable storage medium” to non-transitory media. Thus, we conclude that
claim 11 encompasses a transitory medium and is, therefore, directed to non-
statutory subject matter under 35 U.S.C. § 101. Similarly, we conclude that
claims 12 and 14-18 depending therefrom are also directed to non-statutory
subject matter.
Prior Art Rejections
Dispositive Issue: Under 35 U.S.C. § 103(a), did the Examiner err in
finding the combination of Li and Spotswood teaches or suggests a shared
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module designation file including descriptors that reference a shared web
module to thereby provide all required descriptor information in the
designation file, as recited claim 1?
Appellants argue that the proffered combination does not teach or
suggest the disputed limitations emphasized above. (App. Br. 11-14.)
According to Appellants, while Li discloses a list of names, each of which
referencing a memory position of a class within a shared memory pool, the
disclosed class location information differs from all required descriptor
information for a web module as claimed. In particular, Appellants submit
that the required descriptor information includes dependency information for
each parent web module in the web application, and that such a type of
information is nowhere suggested by the proposed combination of Li and
Spotswood. (Id. at 13.) In response, the Examiner concludes that the
disputed limitations merely require that the designation file includes all
necessary description information for identifying a shared web module
therein. (Ans. 5.) Thus, the Examiner finds that Li’s disclosure of a JAVA
Machine (JVM) that operates a plurality of classes in a memory pool shared
by a plurality of web applications wherein each class includes a name
identifier, a class size, and an offset teaches all the required description
information for each class included in a common container. (Ans. 5-6.)
Consequently, the Examiner finds that the cited disclosure of Li teaches the
disputed limitations. (Id.)
On the record before us, we agree with the Examiner’s findings and
ultimate conclusion of obviousness. In particular, we agree with the
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Examiner’s interpretation of the disputed limitations. Further, as noted by
the Examiner, Li discloses a method and system for allowing JVM
applications to share various Java classes stored in a memory pool. (Abs.) In
particular, the shared memory pool stores for each class, the name of the
class, its size, and an offset from the start. (Col. 9, ll. 24-28, col. 10, ll. 20-
25.) That is, we agree with the Examiner that Li’s disclosure of storing
these attributes in connection with each class teaches storing all description
information required for the class to be shared among the JV applications.
Additionally, we note that because the claim does not specify that the
required information includes parent dependency information, Appellants’
argument that Li’s class description information does not recite the
description information as being part of the required information is not
commensurate with the scope of claim 1.
Additionally, even if the class description information disclosed by Li
only included certain types of required information and not specifically
dependency information, Appellants cannot rely solely upon such distinction
to patentably distinguish the claims over the prior art of record. In
particular, we find that because Appellants seek to distinguish the required
description information on the basis of its content (i.e. whether it includes
parent dependency data) as opposed to its function (to linking an object class
to a parent class and a subclass,) the argued distinction is directed to non-
functional descriptive material, which is not entitled to patentable weight. In
a precedential Opinion, an expanded Board panel held that non-functional
descriptive material (sequence data) did not distinguish the claimed
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computer-based system from a prior art system that was the same except for
its sequence data. See Ex parte Nehls, 88 USPQ2d 1883, 1887-88 (BPAI
2008) (precedential).5 In our view, it suffices that the combination of Li
and Spotswood teaches that the information necessary for a class to be
shared by JM applications are provided in the shared memory pool, the
proposed combination teaches or suggests the disputed limitations. It follows
that Appellants have not shown error in the Examiner’s rejection of claim 1
over the combination of Li and Spotswood.

Because claims 2, 4-12, and 14-20 are not argued separately, they fall
together with claim 1 for the same reasons discussed above. See 37 C.F.R.
§ 41.37(c)(1)(vii).
DECISION
We affirm the Examiner’s rejections of claims 1, 2, 4-12, and 14-20 as
set forth above.
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

5 See also Ex parte Mathias, 84 USPQ2d 1276, 1279 (BPAI 2005)
(informative) (aff’d 191 Fed. Appx. 959 (Fed. Cir. 2006) (stating if a
claimed phrase cannot alter how the process steps are to be performed to
achieve the utility of the invention or merely states an intended use or
purpose for the data, it is not entitled to patentable weight.)
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