Ex Parte Simpson et al

Board of Patent Appeals and Interferences

Jul 2, 2008

09940200 (B.P.A.I. Jul. 2, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte SHELL S. SIMPSON, WARD S. FOSTER,
and KRIS R. LIVINGSTON
____________________

Appeal 2008-0569
Application 09/940,2001
Technology Center 2100
____________________

Decided: July 2, 2008
____________________

Before HOWARD B. BLANKENSHIP, JAY P. LUCAS, and STEPHEN C.
SIU, Administrative Patent Judges.

LUCAS, Administrative Patent Judge.

DECISION ON APPEAL

1 Application filed August 27, 2001. The real party in interest is Hewlett
Packard Development Company, LP.

Appeal 2008-0569
Application 09/940,200

STATEMENT OF CASE
Appellants appeal from a final rejection of claims 22 to 47 under
authority of 35 U.S.C. § 134. The Board of Patent Appeals and
Interferences (BPAI) has jurisdiction under 35 U.S.C. § 6(b).
Appellants’ invention relates to a system for automatically
recognizing peripheral devices, such as printers, on a network, even when
the printers are not attached to a network computer. In the words of the
Appellants:
A system for recognizing devices connected in a distributed
processing environment is disclosed. The system includes a client
computer including a browser coupled to a network, a server
computer coupled to the network, and a database coupled to the
network, the database containing information that identifies devices
coupled to the network. The client computer browses to a predefined
web page and discovers from the database the presence of devices
coupled to the network.

(Spec., 3, ll. 2-7).

Claims 22 and 32 are exemplary:
22. A method, comprising:

discovering devices directly connected to a network that are not
directly connected to a computer; and

providing to a user via a network browser a list of at least one
discovered device that is available for use on the network, wherein the list
comprises at least one link to an available device.

32. A device discovery service stored on a computer-readable medium,
the service comprising:
2
Appeal 2008-0569
Application 09/940,200

logic configured to discover devices directly connected to a network
that are not directly connected to a computer; and

logic configured to provide a user home service accessible with a
network browser with a list of at least one discovered device that is available
for use on the network.

The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Carcerano US 6,308,205 B1 Oct. 23, 2001
(filed Oct. 22, 1998)
Goshey US 6,327,613 B1 Dec. 4, 2001
(filed Jan. 12, 1998)
Hemphill US 6,490,617 B1 Dec. 3, 2002
(filed Jun. 9, 1998)

Rejections:
R1: Claims 22 to 26, 29 to 37, 42, 43, and 45 to 47 stand rejected under
35 U.S.C. § 102(e) for being anticipated by Goshey.
R2: Claims 27, 28, 38, 39, 40, 41, and 44 stand rejected under 35 U.S.C.
§ 103(a) for being obvious over Goshey in view of Carcerano.
Appellants contend that the claimed subject matter is not anticipated
by Goshey, or rendered obvious by Goshey in combination with Carcerano,
for failure of the references to teach the claimed limitations. The Examiner
contends that each of the claims is properly rejected.
Rather than repeat the arguments of Appellants or the Examiner, we
make reference to the Briefs and the Answer for their respective details.
Only those arguments actually made by Appellants have been considered in
this opinion. Arguments which Appellants could have made but chose not to
3
Appeal 2008-0569
Application 09/940,200

make in the Briefs have not been considered and are deemed to be waived.
See 37 C.F.R. § 41.37(c)(1)(vii) (2006).2

We affirm the rejections.
ISSUE
The issue is whether Appellants have shown that the Examiner erred
in rejecting the claims under 35 U.S.C. §§ 102(e) and 103(a). The issue
turns on whether there is a legally sufficient basis for anticipating the
limitations of the claims (or rendering them obvious) in the references.

PRINCIPLES OF LAW
Appellants have the burden on appeal to the Board to demonstrate
error in the Examiner’s position. See In re Kahn, 441 F.3d 977, 985-86
(Fed. Cir. 2006) (“On appeal to the Board, an applicant can overcome a
rejection [under § 103] by showing insufficient evidence of prima facie
obviousness or by rebutting the prima facie case with evidence of secondary
indicia of nonobviousness.”) (quoting In re Rouffet, 149 F.3d 1350, 1355
(Fed. Cir. 1998)).

2 Appellants have not presented any substantive arguments directed
separately to the patentability of the dependent claims or related claims in
each group, except as will be noted in this opinion. In the absence of a
separate argument with respect to those claims, they stand or fall with the
representative independent claim. See In re Young, 927 F.2d 588, 590 (Fed.
Cir. 1991).

4
Appeal 2008-0569
Application 09/940,200

Our reviewing court states in In re Zletz, 893 F.2d 319, 321 (Fed. Cir.
1989) that “claims must be interpreted as broadly as their terms reasonably
allow.” Our reviewing court further states that "the words of a claim 'are
generally given their ordinary and customary meaning.'" Phillips v. AWH
Corp., 415 F.3d 1303, 1312 (Fed. Cir. 2005) (en banc) (internal citations
omitted). The "ordinary and customary meaning of a claim term is the
meaning that the term would have to a person of ordinary skill in the art in
question at the time of the invention, i.e., as of the effective filing date of the
patent application." Id. at 1313.
Furthermore, “‘there must be some articulated reasoning with some
rational underpinning to support the legal conclusion of obviousness’ . . .
[H]owever, the analysis need not seek out precise teachings directed to the
specific subject matter of the challenged claim, for a court can take account
of the inferences and creative steps that a person of ordinary skill in the art
would employ.” KSR Int’l v. Teleflex Inc., 127 S. Ct. 1727, 1741 (2007)
(quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)).

ANALYSIS
From our review of the administrative record, we find that Examiner
has presented a prima facie case for the rejections of Appellants’ claims
under 35 U.S.C. §§ 102 and 103. The prima facie case is presented on pages
3 to 18 of the Examiner’s Answer. In opposition, Appellants present a
number of arguments.

5
Appeal 2008-0569
Application 09/940,200

Arguments with respect to the rejection
under 35 U.S.C. § 102(e) [R1]

The first argument addresses the issue of whether Goshey teaches
“discovering devices directly connected to a network that are not directly
connected to a computer”. (App. Br., 8, middle). More specifically,
Appellants argue that the peripherals in Goshey are directly connected to a
computer. (App. Br., 9).
A key issue, then, is what constitutes the network in the Goshey
reference. The full schematic labeled #110 of Figure 2A is entitled
“[N]etwork [D]iagram”. (Col. 4, l. 32). The term “network” is thus, in a
general way, applied to the full set of connected electrical devices depicted
in Figure 2A. As such, the peripheral scanner, optical drive, etc., (#118,
120, etc.,) are part of the network. Are they directly connected to the
network? It is evident that since the network comprises all of the items in
the Figure, those peripherals are directly connected to the rest of the network
– namely through their connection to the lines that connect to one of the host
adapters. We are taking the plain meaning of the words network, connection
and devices, as instructed by Phillips v. AWH Corp. (cited above), as we
note that no special definition of the terms has been set aside in the
Specification.
Appellants’ argument then alleges that those named peripherals,
(#118, 120, etc.,) are directly connected to the computers, #112, contrary to
the limitations of the claim. That simply is not the teaching of Goshey, as
they are clearly connected “via a host adapter 116a” (col. 4., l. 38) and as
depicted in Figure 2A.
6
Appeal 2008-0569
Application 09/940,200

Finally, Appellants contend “Nowhere in Figure 2C is a peripheral
device directly connected to the network, which is clearly identified by a
cloud containing the term “Network”. (App. Br., 9, bottom). That
contention ignores the fact that #110 labels the schematic of Figure 2A as a
network. The Board declines to take the lack of a depiction of a cloud in
Figure 2A as evidence that it is not a network.
We thus agree with the Examiner’s interpretation of Goshey,
expressed in tabular form for claim 22. (Answer, 19). We note that the
Examiner has read the claimed network browser on the SCSI Explorer
Window #202 of Figure 2D, and we concur in not finding Appellants’
contrary contention (App. Br., 11, top) convincing.
Appellants further argue that “Goshey further does not teach ‘creating
a web service for a discovered device that is not a web enabled device, the
web service enabling access and use of the discovered device via the
network’.” (App. Br., 11, middle). We do not find this argument persuasive
in view of the disclosures in Goshey of the ScanLan software itemized by
the Examiner. (Answer, 8, top).

Arguments with respect to the rejection
under 35 U.S.C. § 103(a) [R2]

The Examiner has applied Goshey to claim 27 as interpreted for claim
26, and then remarked “Goshey fails to teach explicitly providing a list of
available devices comprises providing a set of universal resource locators
(URLs) to the home service, the URLs identifying locations of the available
7
Appeal 2008-0569
Application 09/940,200

devices.” (Answer, 14). The Examiner uses Carcerano for the missing
teaching in rejecting the claims of R2 under 35 U.S.C. § 103(a).
Appellants contend that Carcerano does not remedy the deficiencies
of the Goshey reference. (App. Br., 15).
As we have not supported the deficiencies of Goshey under 35 U.S.C.
§ 102, we now find Appellants’ contention unsupported.

CONCLUSIONS OF LAW
Based on the findings of facts and analysis above, we conclude that
the Examiner did not err in rejecting claims 22 to 26, 29 to 37, 42, 43, and
45 to 47 under 35 U.S.C. § 102(e) for being anticipated by Goshey. We also
conclude that the Examiner did not err in rejecting claims 27, 28, 38, 39, 40,
41, and 44 under 35 U.S.C. § 103(a) for being obvious over Goshey in view
of Carcerano.

OTHER ISSUES
REJECTION OF CLAIMS 32 TO 41 UNDER 37 C.F.R. § 41.50(B)

We make the following new ground of rejection using our authority
under 37 C.F.R. § 41.50(b).

8
Appeal 2008-0569
Application 09/940,200

Rejection:
We reject claims 32 to 41 under 35 U.S.C. § 101 as being directed to
non-statutory subject matter.
Claims 32 to 41 recite a computer readable medium. In the
Specification, page 12, lines 9 through 24 the Appellants define computer
readable medium as including an electromagnetic propagation medium, and
“could even be paper.”
These claims are directed to a “service” stored on a computer-readable
medium, the service comprising logic “configured” to perform functions.
Logic, read with reasonable breadth, includes descriptive material indicating
the algorithm or reasoning behind an operational computer program, not the
program itself. As such the claims are addressed to nonfunctional
descriptive material, which is non-statutory. “When nonfunctional
descriptive material is recorded on some computer-readable medium, in a
computer or on an electromagnetic carrier signal, it is not statutory since no
requisite functionality is present to satisfy the practical application
requirement.” Manual of Patent Examining Procedure (MPEP) § 2106.01
(Eighth Ed., Rev. 6, Sept. 2007).
Further, even if the “service” were claimed as a set of computer
instructions, the “service” being stored on a computer-readable medium,
according to Appellants a computer-readable medium “could even be paper”
(Spec. p. 12, l. 21). -- i.e., a computer listing per se.
[C]omputer programs claimed as computer listings per se, i.e.,
the descriptions or expressions of the programs, are not
physical “things.” They are neither computer components nor
statutory processes, as they are not “acts” being performed.
Such claimed computer programs do not define any structural
9
Appeal 2008-0569
Application 09/940,200

and functional interrelationships between the computer program
and other claimed elements of a computer which permit the
computer program's functionality to be realized.

MPEP § 2106.01, Heading I.
A claim for logic embodied in a signal is also not considered by this
office to be statutory under 35 U.S.C. § 101.3 This policy has recently been
confirmed by the Court of Appeals for the Federal Circuit in In re Nuijten.
“A transitory, propagating signal like Nuijten's is not a ‘process, machine,
manufacture, or composition of matter’. Those four categories define the
explicit scope and reach of subject matter patentable under 35 U.S.C. § 101;
thus, such a signal cannot be patentable subject matter.” In re Nuijten, 500
F.3d 1346, 1357 (Fed. Cir. 2007).
DECISION
The Examiner's rejections of claims 22 to 47 are affirmed.
Claims 32 to 41 are rejected under 35 U.S.C. § 101.
We have sustained the Examiner's prior art rejections with respect to
claims 22 to 47, all the claims on appeal. Moreover, we have entered a new
ground of rejection under 37 C.F.R. § 41.50(b) for claims 32 to 41 as failing
to recite statutory subject matter under 35 U.S.C. § 101.

3 See also "Interim Guidelines for Examination of Patent Applications for
Patent Subject Matter Eligibility," 1300 Off. Gaz. Pat. Office 142, Annex
IV(c) (Nov. 22, 2005).

10
Appeal 2008-0569
Application 09/940,200

With respect to the affirmed rejection(s), 37 C.F.R. § 41.52(a)(1)
provides that “Appellant may file a single request for rehearing within two
months from the date of the original decision of the Board.”
In addition to affirming the Examiner’s rejection(s) of one or more
claims, this decision contains a new ground of rejection 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 ground of rejection
to avoid termination of the appeal 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 § 41.52 by the Board upon the same record. . . .

Should Appellants elect to prosecute further before the Examiner
pursuant to 37 C.F.R. § 41.50(b)(1), in order to preserve the right to seek
review under 35 U.S.C. §§ 141 or 145 with respect to the affirmed rejection,
the effective date of the affirmance is deferred until conclusion of the
prosecution before the Examiner unless, as a mere incident to the limited
prosecution, the affirmed rejection is overcome.
11
Appeal 2008-0569
Application 09/940,200

If Appellants elect prosecution before the Examiner and this does not
result in allowance of the application, abandonment or a second appeal, this
case should be returned to the Board of Patent Appeals and Interferences for
final action on the affirmed rejection, including any timely request for
rehearing thereof.
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
37 C.F.R. § 41.50(b)

rwk

HEWLETT-PACKARD COMPANY
Intellectual Property Administration
P.O. Box 272400
Fort Collins CO 80527-2400

12