Ex Parte Shetty

Patent Trial and Appeal Board

May 8, 2014

11834976 (P.T.A.B. May. 8, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte ROHIT SHETTY
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Appeal 2011-004177
Application 11/834,976
Technology Center 2400
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Before CARL W.WHITEHEAD JR., ERIC S. FRAHM, and
ANDREW J. DILLON, Administrative Patent Judges.

DILLON, Administrative Patent Judge.

DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 1-3 and 5-21. Claim 4 has been cancelled. We have
jurisdiction under 35 U.S.C. § 6(b).
We affirm.

Appeal 2011-004177
Application 11/834,976

2
STATEMENT OF THE CASE
Appellant’s invention is directed to a method and system for assigning
a GUID to a resultant entity generated by converting a source entity, in a
GUID assignment system having a processing means and a storage device.
See Spec. 21, Abstract of the Disclosure.

Claim 1 is illustrative, with key disputed limitations emphasized:
1. A method of providing unique identification for a resultant
entity generated by converting a source entity, said method
comprising:

retrieving origin unique identification information
associated with a first format from a storage device on a
processing device;

retrieving source entity unique identification information
associated with the first format from a storage device on a
processing device;

generating unique identification for the resultant entity
created from a conversion of the source entity from the first
format to a different format from said retrieved origin
unique identification information and said source entity
unique identification information.

The Examiner relies on the following as evidence of unpatentability:
Diller US 6,768,947 B2 July 27, 2004

Appeal 2011-004177
Application 11/834,976

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THE REJECTIONS
1. The Examiner rejected claims 15-21 under 35 U.S.C. § 101 as not
directed to statutory subject matter. Ans. 3-4.1
2. The Examiner rejected claims 1-3 and 5-21 under 35 U.S.C.
§ 102(b) as anticipated by Diller. Ans. 4-9.

ANALYSIS
We have reviewed the Examiner’s rejections in light of Appellant’s
contentions in the Appeal Brief (App. Br. 4-6) that the Examiner has erred.
We disagree with Appellant’s contentions. We adopt as our own (1) the
findings and reasons set forth by the Examiner in the action from which this
appeal is taken (Ans. 3-9), and (2) the reasons set forth by the Examiner in
the Examiner’s Answer in response to Appellant’s Appeal Brief (Ans. 9-11).
We highlight and amplify certain teachings and suggestions of the references
as follows.
With respect to the rejection of claims 15-21 under 35 U.S.C. § 101 as
not directed to statutory subject matter, the Examiner finds that “computer
readable medium” can comprise propagation media, such as carrier waves,
which are not considered statutory subject matter. The Examiner further
suggests amending the claims to recite “a non-transitory computer readable
medium” in order to overcome this rejection. Ans. 3-4.
Appellant argues that “computer readable medium,” as described in
Appellant’s Specification, includes “storage devices 109” and typically
include “a hard disk drive (HDD) 110.” App. Br. 4.

1 Throughout this opinion, we refer to the Appeal Brief filed June 8, 2010,
and the Examiner’s Answer mailed August 31, 2010.
Appeal 2011-004177
Application 11/834,976

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We are not persuaded by Appellant’s argument that we should read
elements of the written description into the claims.
Though understanding the claim language may be aided by the
explanations contained in the written description, it is important
not to import into a claim limitations that are not a part of the
claim. For example, a particular embodiment appearing in the
written description may not be read into a claim when the claim
language is broader than the embodiment.
SuperGuide Corp. v. DirecTV Enters, Inc., 358 F.3d 870, 875 (Fed. Cir.
2004) (citing Electro Med. Sys. S.A. v. Cooper Life Sci., Inc., 34 F.3d 1048,
1054 (Fed. Cir. 1994)).
Further, we note Appellant’s Specification states, “The software may
be stored in a medium, for example a computer readable medium including
storage devices.” Spec. 5, ll. 16-17 (emphasis added). The clear implication
of the use of the word “may,” is that an alternative exists in which the
software may not be stored in a medium.
Consequently, we find the Examiner did not err in rejecting claims 15-
21 under 35 U.S.C. § 101 as not directed to statutory subject matter.
Regarding the rejection of claim 1-3 and 5-21 under 35 U.S.C.
§ 102(b) as anticipated by Diller, Appellant argues that the Examiner erred
in view of the failure of Diller to disclose every element of the claimed
invention. Specifically, Appellant argues the claimed invention is directed
to a method and system for assigning unique identifiers to records that have
undergone a data conversion from a first format to a different format.
Appellant argues that Diller is directed to uniquely identifying seismic data
sets; however, Appellant argues those data sets are never converted from a
first format to a different format. App. Br. 5.
Appeal 2011-004177
Application 11/834,976

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The Examiner points out that while Appellant’s Specification recites
format conversion, such as from BMP to JPEG, Appellant’s claims, merely
recite conversion from a first format to a different format. Ans. 10. The
Examiner finds that Appellant’s claims do not provide a clear definition or
standard from which a clear understanding of the term “format” may be
derived. Id. at 10-11.
In analyzing the Diller reference, the Examiner finds that the
disclosed seismic data comprises binary representations which the Examiner
interprets as a “first format.” The seismic data sets are then processed and
manipulated using processing algorithms, such as image enhancements, into
a final form that is more easily understood by human data interpreters, as
described in Diller at column 1, lines 15-19. The Examiner interprets the
processed and manipulated data set to comprise a “different format.” Id.
In view of the Examiner’s broad, but reasonable interpretation of
“format,” Appellant’s argument regarding the failure of the Diller reference
to disclose a data conversion from a first format to a different format is
therefore not persuasive.
We therefore conclude that the Examiner did not err in rejecting
claims 1-3 and 5-21 under 35 U.S.C. § 102(b) as anticipated by Diller.

CONCLUSION
The Examiner did not err in rejecting claims 1-3 and 5-21.

Appeal 2011-004177
Application 11/834,976

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DECISION
The Examiner’s decision rejecting claims 1-3 and 5-21 is affirmed.
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

msc