Ex Parte Slaughter et al

Board of Patent Appeals and Interferences

Sep 10, 2009

09660563 (B.P.A.I. Sep. 10, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte GREGORY L. SLAUGHTER, THOMAS E. SAULPAUGH,
BERNARD A. TRAVERSAT, and MOHAMED M. ABDELAZIZ
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Appeal 2008-005948
Application 09/660,563
Technology Center 2400
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Decided: September 10, 2009
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Before JAMES D. THOMAS, HOWARD B. BLANKENSHIP, and
JAMES R. HUGHES, Administrative Patent Judges.

THOMAS, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
This is an appeal under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 1 through 30. We have jurisdiction under 35 U.S.C.
§ 6(b).
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We vacate the rejections encompassing all claims on appeal and,
within the provisions of 37 C.F.R. § 41.50(b), institute a new ground of
rejection of all claims on appeal, claims 1 through 30, under 35 U.S.C.
§ 101.

Invention
A system, method, and medium for advertising, addressing, and/or
accessing services in a distributed computing environment are provided. A
service advertisement includes substantially all the information needed by a
client to access a particular service. A service may publish the service
advertisement in a space which stores documents such as Extensible Markup
Language (XML) documents. The advertisement may include a Uniform
Resource Identifier (URI) and a XML schema for the service. The schema
specifies XML messages which are usable to invoke functions of the service.
A client may access the space and read the advertisement. (Spec. 175,
Abstract, ll. 3-10; Fig. 6).

Illustrative Claim
1. A method comprising:
a client reading an advertisement from a space, wherein the
space comprises a network-addressable storage location, wherein the
advertisement comprises a Uniform Resource Identifier (URI) and a
schema, wherein the URI specifies a network address at which a
service may be accessed, and wherein the schema specifies one or
more messages usable to invoke one or more functions of the service;
and
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the client sending a first message to the service at the URI,
wherein the first message is specified in the schema.

Prior Art and Examiner’s Rejections
The Examiner relies on the following references as evidence of
anticipation and unpatentability:
Roberts 6,560,633 B1 May, 6, 2003
(filed Jun. 10, 1999)
Beck 6,604,140 B1 Aug. 5, 2003
(filed Sep. 23, 1999)

Claims 1 through 5, 7 through 15, 17 through 25, and 27 through 30
stand rejected under 35 U.S.C. § 102(e) as being anticipated by Beck.
Claims 6, 16, and 26 stand rejected under 35 U.S.C. § 103. As evidence of
obviousness, the Examiner relies upon Beck in view of Roberts.

FINDINGS OF FACT
1. We reproduce the disclosed subject matter at page 31, lines 19
through 22 of the Specification:
As shown in Figure 6, two kinds of software programs may run
in the distributed computing model: services 112 and clients 110.
Services 112 may advertise their capabilities to clients wishing to use
the service. The services 112 may advertise their capabilities in
spaces 114.

2. We also reproduce the disclosed subject matter at page 167, line
32 through page 168, line 5 of the Specification:
Various embodiments may further include receiving or storing
instructions and/or data implemented in accordance with the foregoing
description upon a carrier medium. Suitable carrier media may
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include storage media or memory media such as magnetic or optical
media, e.g., disk or CD-ROM, as well as transmission media or
signals such as electrical, electromagnetic, or digital signals, conveyed
via a communication medium such as network and/or a wireless link.

ANALYSIS
At the outset, we vacate the Examiner’s rejection of all claims on
appeal under 35 U.S.C. § 103. We do so because we conclude that the
claims 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, we reject all claims on appeal, claims 1 through 30, as being
directed to non-statutory subject matter.
The United States Supreme Court has held that a claim is not a patent-
eligible “process” if it claims “laws of nature, natural phenomena, [or]
abstract ideas.” Diamond v. Diehr, 450 U.S. at 185 (citing Parker v. Flook,
437 U.S. 584, 589 (1978) and Gottschalk v. Benson, 409 U.S. 63, 67
(1972)). 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
the claim covers material not found in any of the four statutory categories,
that claims 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), reh’g en banc denied, 515 F.3d 1361 (Fed. Cir.
2008), cert. denied, 127 S. Ct. 70 (2008). Accord In re Ferguson, 558 F.3d
1359 (Fed. Cir. 2009). This latter case held that claims directed to a
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“paradigm” are non-statutory under 35 U.S.C. § 101 as representing an
abstract idea.
All claims on appeal, in particular independent claims 1, 11, and 21,
variously recite a space, messages, advertisements, and schemas, each of
which directly relates to abstract ideas or abstract intellectual concepts.
These terms also relate or may be fairly characterized as mere data
constructs not unlike and clearly akin to the “paradigm” of In re Ferguson.
Some of these terms are merely virtual data constructs of real world
elements or things, none of which are positively recited. As disclosed,
“space” is considered an object depository, which in itself is another
variation of an abstract data construct.
Each independent claim on appeal in some manner recites clients and
services. From Finding of Fact 1, it is apparent that these are software
programs in accordance with a distributed computing “model” depicted in
Figure 6. Therefore, these entities are not recited as physical structures or
locations.
On its face, independent method claim 1 purports to be statutory
subject matter as a “process” within 35 U.S.C. § 101. On the other hand, the
actual recitations in the body of the claim of such method directly relate to
non-statutory subject matter as noted earlier in this Opinion. The Supreme
Court’s “machine-or-transformation test, properly applied, is the governing
test for determining patent eligibility of a process under § 101.” In re Bilski,
545 F.3d 943, 956 (Fed. Cir. 2008) (en banc), cert. granted, 129 S. Ct. 2735
(U.S. Jun. 1, 2009) (No. 08-964). “A claim process is surely patent-eligible
under § 101 if: (1) it is tied to a particular machine or apparatus, or (2) it
transforms a particular article into a different state or thing.” Id. at 954. The
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present version of method independent claim 1 does not meet these
requirements.
Turning to independent “system” claim 11, again the body of this
claim recites subject matter essentially recited in the body of method
independent claim 1, where the client is said to be merely “operable to”
perform two functionalities. Again referencing our previous analysis and
Finding of Fact 2, the claim’s system is clearly directed to a software system
alone with no hardware system specified.
As to independent claim 21, its preamble recites a “computer-readable
storage medium comprising program instructions.” Based upon Appellants’
statements in the Specification, reproduced in Finding of Fact 2, Appellants’
medium is directed to encompass transmission media or signals in various
forms transmitted over a communication medium including a network and/or
a wireless link. As such, the claimed medium is not directed to a tangible
medium but appears to be directed to signal embodiments proscribed by In
re Nuijten, 500 F.3d 1346, 1357 referenced earlier in this Opinion.
Moreover, the program instructions of the preamble are recited in terms of
the software client mentioned earlier in this Opinion. Since the instructions
are merely recited in the preamble to be computer executable, there is no
positively stated computer; it is only passively recited. There is also no
recitation in the present tense of any instruction execution in claim 21.

CONCLUSION AND DECISION
We have vacated the outstanding rejections under 35 U.S.C. §§ 102
and 103 encompassing all claims on appeal, claims 1 through 30. Within the
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provisions of 37 C.F.R. § 41.50(b), we have rejected these claims as being
directed to non-statutory subject matter within 35 U.S.C. § 101.
In addition to vacating the Examiner’s rejection of one or more
claims, this decision contains a new ground of rejection pursuant to 37
C.F.R. § 41.50(b). Section 41.50(b) provides that “[a] new ground of
rejection . . . shall not be considered final for judicial review.”
Section 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. . . .

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)

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