Ex Parte Proudler

Board of Patent Appeals and Interferences

Jul 8, 2010

10643306 (B.P.A.I. Jul. 8, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte GRAEME JOHN PROUDLER
____________

Appeal 2009-006599
Application 10/643,306
Technology Center 2400
____________

Before JAMES D. THOMAS, THU A. DANG, and CAROLYN D.
THOMAS, Administrative Patent Judges.

J. THOMAS, Administrative Patent Judge.

DECISION ON APPEAL1

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.

Appeal 2009-006599
Application 10/643,306

STATEMENT OF THE CASE
This is an appeal under 35 U.S.C. § 134(a) from the Examiner’s Final
Rejection of claims 1-43, and 50. We have jurisdiction under 35 U.S.C. §
6(b).
We vacate the rejection before us under 35 U.S.C. § 103 and institute
a new ground of rejection within the provisions of 37 C.F.R. § 41.50(b).
Invention
A method of controlling the processing of data is
provided comprising defining security controls for a plurality of
data items, and applying individualised security rules to each of
the data items based on a measurement of integrity of a
computing entity to which the data items are to be made
available.
(Abstract, Fig. 3).

Representative Claim
33. A method of controlling processing of data, wherein the
data comprises a plurality of rules associated with a plurality of
data items comprising a set of logically related data items, each
data item in the set having a rule associated therewith, said rules
acting to individually define usage and/or security to be
observed when processing each of the data items in the set of
data items, and in which forwarding of the set of data items is
performed in accordance with mask means provided in
association with the rules.

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Prior Art and the Examiner’s Rejections
The Examiner relies on the following references as evidence of
unpatentability:
Ishizaki US 2002/0019934 A1 Feb. 14, 2002
Raley US 2003/0196119 A1 Oct. 16, 2003
(effective filing date of Jan. 16, 2002)
Claims 1-43, and 50 stand rejected under 35 U.S.C. § 103. As
evidence of obviousness, the Examiner relies upon Raley in view of Ishizaki.

ANALYSIS
We vacate the prior art rejection encompassing all claims on appeal
because we conclude that all claims on appeal, claims 1-43, and 50, are
“barred at the threshold by § 101.” In re Comiskey, 554 F.3d 967, 973 (Fed.
Cir. 2009) (citing Diamond v. Diehr, 450 U.S. 175, 188 (1981)). Therefore,
the following new ground of rejection is set forth in this Opinion within the
provisions of 37 C.F.R. § 41.50(b).

NEW REJECTION UNDER 35 U.S.C. § 101
PRINCIPLES OF LAW
Statutory Subject Matter
The subject matter of claims permitted within 35 U.S.C. § 101 must
be a machine, a manufacture, a process, or a composition of matter.
Moreover, our reviewing court has stated that “[t]he four categories [of
§ 101] together describe the exclusive reach of patentable subject matter. If
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Application 10/643,306

the claim covers material not found in any of the four statutory categories,
that claim falls outside the plainly expressed scope of § 101 even if the
subject matter is otherwise new and useful.” In re Nuijten, 500 F.3d 1346,
1354 (Fed. Cir. 2007); accord In re Ferguson, 558 F.3d 1359 (Fed. Cir.
2009). This latter case held that claims directed to a “paradigm” are
nonstatutory under 35 U.S.C. § 101 as representing an abstract idea. Thus, a
“signal” cannot be patentable subject matter because it is not within any of
the four categories. In re Nuijten, 500 F.3d at 1357. Laws of nature,
abstract ideas, and natural phenomena are excluded from patent protection.
Diamond v. Diehr, 450 U.S. at 185. A claim that recites no more than
software, logic or a data structure (i.e., an abstraction) does not fall within
any statutory category. In re Warmerdam, 33 F.3d 1354, 1361 (Fed. Cir.
1994). Significantly, "Abstract software code is an idea without physical
embodiment." Microsoft Corp. v. AT&T Corp., 550 U.S. 437, 449 (2007).
The unpatentability of abstract ideas was confirmed by the U.S. Supreme
Court in Bilski v. Kappos, No. 08-964, 2010 WL 2555192 (June 28, 2010).
With this background in mind, all claims on appeal, claims 1-43, and
50, are rejected under 35 U.S.C. § 101 as being directed to nonstatutory
subject matter. Consistent with our earlier noted invention statement from
Appellants’ disclosed abstract, the disclosed and claimed invention is
directed to software per se, abstract ideas, abstract concepts, and the like,
including data per se, data items, data structures, usage rules, and the
abstract intellectual processes associating them within the claims on appeal.

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Appeal 2009-006599
Application 10/643,306

This brief analysis is clearly seen from representative independent
claim 33 on appeal. The manner in which the so-called “computer
apparatus” of the preamble of independent claim 50 is recited in the body of
this claim is characterized as directly reciting in its two clauses
“programming for” achieving a certain abstract functionality. Thus, no true
hardware structure is recited. The Specification at page 4, lines 19 and 20,
also indicates that a “computing entity, either hardware or software, is often
called a ‘node’ and this term will appear here and after.” In view of this
assessment, the broadly recited “computer apparatus” in independent claim
50 is additionally recited in independent claim 1 on appeal and must be
construed in like manner. Corresponding abstract functionalities are recited
in all of these independent claims.
In like manner, independent claim 43 recites in its preamble a direct
recitation to a computer program that is said to be stored on a computer
readable “media”. Besides falling within our earlier analysis, the manner in
which this claim is recited in its preamble encompasses signals per se based
upon the correlation of this claim to the signals associated with the Internet
at page 4 of the “Summary of the Invention” in the principal Brief on appeal
as well as its reference to the teachings of the signaling embodiment
associated with networks, including the Internet, at Specification page 11
beginning at line 19. Thus, this claim is directed to include communications
media. As such, this claim is inclusive of transitory signaling embodiments,
which are proscribed by the early-noted case law. The media of this claim
include transitory embodiments, such as to comprise signals per se. Note

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also the analysis provided by Subject Matter Eligibility of Computer
Readable Media, 1351 Off. Gaz. Pat. Office 212 (Feb. 23, 2010).

CONCLUSION AND DECISION
We have pro forma reversed the outstanding rejection over applied
prior art of all claims on appeal, claims 1-43, and 50. We have instituted a
new ground of rejection within 37 C.F.R. § 41.50(b). This new rejection of
all claims on appeal is based upon 35 U.S.C. § 101 since these claims are
directed to non-statutory subject matter.
A new ground of rejection is pursuant to 37 C.F.R. § 41.50(b).
37 C.F.R. § 41.50(b) provides that, “[a] new ground of rejection pursuant to
this paragraph shall not be considered final for judicial review.”
37 C.F.R. § 41.50(b) also provides that the Appellants, WITHIN
TWO MONTHS FROM THE DATE OF THE DECISION, must exercise
one of the following two options with respect to the new grounds of
rejection to avoid termination of proceedings (37 C.F.R. § 1.197 (b)) as to
the rejected claims:
(1) Reopen prosecution. Submit an appropriate amendment of the
claims so rejected or new evidence relating to the claims so rejected,
or both, and have the matter reconsidered by the examiner, in which
event the proceeding will be remanded to the examiner ….

(2) Request rehearing. Request that the proceeding be reheard under
37 C.F.R. § 41.52 by the Board upon the same record ….

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Appeal 2009-006599
Application 10/643,306

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).

VACATED
37 C.F.R. § 41.50(b)

peb

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