Ex Parte Shen

Board of Patent Appeals and Interferences

May 24, 2011

10603428 (B.P.A.I. May. 24, 2011)

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.
10/603,428 06/24/2003 Bo Shen 200208570-1 4318
7590 05/25/2011
HEWLETT-PACKARD DEVELOPMENT COMPANY
Intellectual Property Administration
P.O. Box 272400
Fort Collins, CO 80527-2400
EXAMINER
FINDLEY, CHRISTOPHER G
ART UNIT PAPER NUMBER
2482
MAIL DATE DELIVERY MODE
05/25/2011 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte BO SHEN
____________________

Appeal 2009-007707
Application No. 10/603,428
1

Technology Center 2600
____________________

Before MARC S. HOFF, CARLA M. KRIVAK, and THOMAS S. HAHN,
Administrative Patent Judges.

HOFF, Administrative Patent Judge.

DECISION ON APPEAL

1
The real party in interest is Hewlett-Packard Development Company, L.P.
Appeal 2009-007707
Application 10/603,428

2

STATEMENT OF CASE
Appellant appeals under 35 U.S.C. § 134 from a Final Rejection of
claims 1-27. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm-in-part.
Appellant‟s invention concerns methods and systems for servicing
streaming media. The method includes performing a multi-stage service on
the streaming media and caching an intermediate result from one of the
stages of the multi-stage process. The intermediate result is selected
according to the available processing and memory resources (Spec. 3).
Claim 1 is exemplary of the claims on appeal:
1. A method for servicing streaming media comprising:
receiving said streaming media;
determining an allocation of available processing and memory
resources;
performing a multi-stage service on said streaming media; and
caching an intermediate result from one of the stages of said multi-
stage process, said result selected according to said available
procesing and memory resources.

The Examiner relies upon the following prior art in rejecting the
claims on appeal:
Yoo US 6,999,512 B2 Feb. 14, 2006
Apostolopoulos US 6,404,814 B1 Jun. 11, 2002
Panusopone US 6,647,061 B1 Nov. 11, 2003

Claims 1-27 stand rejected under 35 U.S.C. § 101 as being directed to
nonstatutory subject matter.
Claims 1-5, 9-14, and 19-23 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over Yoo in view of Apostolopoulos.
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Claims 6-8, 15-18, and 24-27 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over Yoo in view of Apostolopoulos and Panusopone.
Throughout this decision, we make reference to the Appeal Brief
(“App. Br.” filed Apr. 30, 2008), the Reply Brief (“Reply Br.” filed Oct. 20,
2008) and the Examiner‟s Answer (“Ans.” mailed Aug. 20, 2008) for their
respective details.

ISSUES
Regarding the § 101 rejection of claims 1-27, Appellant argues that
the invention recited in the appealed claims qualifies as patent-eligible
subject matter because the claims produce the useful, concrete and tangible
result of “caching an intermediate result” (App. Br. 9). The Examiner
contends that the claims do not recite a tangible result (Ans. 10); further, the
Examiner concludes that claims 10-18 recite nonfunctional descriptive
material because they do not recite a computer readable medium (Ans. 3,
10).
With respect to the § 103 rejections, Appellant argues, inter alia, that
Apostolopoulos teaches neither caching an intermediate result from one of
the stages of the multi-stage process (App. Br. 13), nor caching an
intermediate result selected according to available processing and memory
resources (Reply Br. 1).
Appellant‟s contentions present us with the following issues:
1. Is the claimed invention directed to a patent-ineligible abstract idea
which is neither tied to a particular machine nor transforms a particular
article into another state or thing?
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2. Does Apostolopoulos teach caching an intermediate result from one
of the stages of the multi-stage process, with the result to be cached selected
according to available processing and memory resources?

PRINCIPLES OF LAW
The law in the area of patent-eligible subject matter for process claims
has recently been clarified by the Supreme Court in Bilski v. Kappos, 130
S. Ct. 3218 (2010). The Court in Bilski confirmed that “[t]he Court‟s
precedents provide three specific exceptions to § 101‟s broad patent-
eligibility principles: „laws of nature, physical phenomena, and abstract
ideas.‟” Bilski, 129 S. Ct. at 3225 (quoting Diamond v. Chakrabarty, 447
U.S. 303, 309 (1980)).
2
As to the machine-or-transformation test, the Court
held that “[t]his Court‟s precedents establish that the machine-or-
transformation test is a useful and important clue, an investigative tool, for
determining whether some claimed inventions are processes under § 101”
but “[t]he machine-or-transformation test is not the sole test for deciding
whether an invention is a patent-eligible „process.‟” Id. at 3227. The Court
further held that the term “process,” as used in § 101, does not categorically
exclude business methods. Id. at 3222.
Section 103(a) forbids issuance of a patent when „the differences
between the subject matter sought to be patented and the prior art are
such that the subject matter as a whole would have been obvious at
the time the invention was made to a person having ordinary skill in
the art to which said subject matter pertains‟.

2
These three exceptions also apply to claims directed to machines and
articles of manufacture.
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KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 406 (Fed. Cir. 2007). The
question of obviousness is resolved on the basis of underlying factual
determinations including (1) the scope and content of the prior art, (2) any
differences between the claimed subject matter and the prior art, (3) the level
of skill in the art, and (4) where in evidence, so-called secondary
considerations. Graham v. John Deere Co., 383 U.S. 1, 17-18, ( Fed. Cir.
1966). See also KSR, 550 U.S. at 407, (“While the sequence of these
questions might be reordered in any particular case, the [Graham] factors
continue to define the inquiry that controls.”)

ANALYSIS
§ 101 REJECTION
Appellant argues that the claimed invention is directed to patent-
eligible subject matter under § 101 because the claims produce the tangible
real-world result of caching an intermediate result (App. Br. 9).
Subsequent to the Examiner‟s Answer and Reply Brief, however, the
Supreme Court held that while “[t]he machine-or-transformation test is not
the sole test for deciding whether an invention is a patent-eligible „process.‟”
the machine-or-transformation test “is a useful and important clue, an
investigative tool, for determining whether some claimed inventions are
processes under § 101.” Bilski v. Kappos, 130 S. Ct. 3218, 3227 (2010).
We conclude that the invention recited in independent claims 1 and 10
is not directed to patent-eligible subject matter. Claim 1 (method) and claim
10 (computer-readable medium) both recite performing the steps of
receiving streaming media, determining an allocation of available processing
and memory resources, performing a multi-stage service on the streaming
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media, and caching an intermediate result selected according to the available
resources. First, none of these steps is tied to a particular machine, and none
results in the transformation of a particular article to a different state or
thing. Second, although the machine-or-transformation test is not the sole
test for patent eligibility, we find that the claimed invention is directed to an
abstract idea. Because no physical limitations are present in the claims, there
is nothing to preclude an interpretation that the method steps could be
performed entirely mentally. “[C]aching an intermediate result” could
amount to no more than the memorization of a number.
Therefore, we will sustain the Examiner‟s § 101 rejection of claims 1
and 10, as well as claims 2-9 and 11-18 dependent therefrom, as not directed
to patent-eligible subject matter.
3

Claim 19, directed to a device for servicing streaming data that
comprises a processor and memory, is not a process claim and thus is not
subject to the Bilski analysis. We will not sustain the § 101 rejection of
claims 19-27.
§ 103 REJECTION OF CLAIMS 1-5, 9-14, AND 19-23
Independent claims 1, 10, 19 recite caching an intermediate result,
said result selected according to said available processing and memory
resources. The Examiner concedes that Yoo does not teach the claimed
caching, but relies on Apostolopoulos as suggesting this feature (Ans. 11).
We disagree with the Examiner‟s finding. While we agree with the
Examiner that Apostolopoulos teaches an entropy coding module that

3
Because we sustain the § 101 rejection of claims 10-18, we need not reach
the Examiner‟s further rejection of claims 10-18 as reciting nonfunctional
descriptive material.

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applies entropy coding to blocks of quantized discrete cosine transform
(DCT) coefficients and an output buffer (not shown) that organizes the
entropy-coded blocks into a predictively-coded block-based picture signal
(col. 23, ll. 36-42), corresponding to the claim limitation of “caching an
intermediate result,” we do not find that Apostolopoulos teaches selecting
that result “according to said available processing and memory resources,”
as the claims require. We agree with Appellant‟s argument that the output
buffer of Apostolopoulos receives entropy-coding blocks regardless of
available resources (Reply Br. 2).
We therefore find that the Examiner erred in rejecting claims 1-5, 9-
14, and 19-23 as unpatentable under § 103. We will not sustain the
Examiner‟s rejection.
§ 103 REJECTION OF CLAIMS 6-8, 15-18, AND 24-27
As noted supra, we do not sustain the § 103 rejection of independent
claims 1, 10, and 19, from which these claims depend. We have reviewed
Panusopone, and find that it does not remedy the noted deficiencies of Yoo
and Apostolopoulos. Accordingly, we will not sustain the § 103 rejection of
claims 6-8, 15-18, and 24-27, for the same reasons expressed supra with
respect to claims 1-5, 9-14, and 19-23.

CONCLUSIONS
1. The invention recited in claims 1-18 is directed to a patent-
ineligible abstract idea which is neither tied to a particular machine nor
transforms a particular article into another state or thing.
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2. Apostolopoulos does not teach caching an intermediate result from
one of the stages of the multi-stage process, the result to be cached selected
according to available processing and memory resources.

ORDER
The Examiner‟s rejection of claims 1-18 is affirmed. The Examiner‟s
rejection of claims 19-27 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-IN-PART

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