Ex Parte Taylor et alDownload PDFPatent Trial and Appeal BoardJun 17, 201310247453 (P.T.A.B. Jun. 17, 2013) Copy Citation 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. 10/247,453 09/19/2002 Keith A. Taylor 02166; 190206-1260 2138 83658 7590 06/17/2013 AT & T Legal Department - WS Attn: Patent Docketing Room 2A-207 One AT & T Way Bedminster, NJ 07921 EXAMINER CHRISTENSEN, SCOTT B ART UNIT PAPER NUMBER 2444 MAIL DATE DELIVERY MODE 06/17/2013 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 PATENT TRIAL AND APPEAL BOARD ____________________ Ex parte KEITH A. TAYLOR and LEE G. FRIEDMAN ____________________ Appeal 2011-000029 Application 10/247,453 Technology Center 2400 ____________________ Before KALYAN K. DESHPANDE, GEORGIANNA W. BRADEN, and PATRICK M. BOUCHER, Administrative Patent Judges. BOUCHER, Administrative Patent Judge. DECISION ON APPEAL Appeal 2011-000029 Application 10/247,453 2 STATEMENT OF THE CASE Introduction Appellants appeal under 35 U.S.C. § 134 from a rejection of claims 1– 7 and 9–29. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. Illustrative Claim The disclosure relates to exchange of text-based protocol language information. Abs. Claim 1 is illustrative and is reproduced below: 1. A system for an efficient exchange of text based protocol language information, comprising: a compressor processor for compressing text based protocol language information in a communication entered in a chat transaction; and a decompressor processor in a server for decompressing the compressed text based protocol language information, and wherein the compressed and decompressed text protocol language information is transmitted between a plurality of processors that are adapted to process text based protocol language information; wherein the compressor processor is configured to determine commands with multiple occurrences and assign ordered codes to commands such that a more frequently occurring command always corresponds to a smaller value code than any other code corresponding to a less frequently occurring command. Appeal 2011-000029 Application 10/247,453 3 References The prior art relied upon by the Examiner in rejecting the claims on appeal is: Lindbergh US 4,870,662 Sep. 26, 1989 Kamrowski US 2003/0004994 A1 Jan. 2, 2003 Miller, J., “The Jabber.org Project,” June 15, 2000. Huffman, D. A., “A method for the construction of minimum- redundancy codes,” Proceedings of the I.R.E. (September 1952), pp. 1098–1101. Rejections The Examiner made the following rejections:1 Claims 25 and 26 stand rejected under 35 U.S.C. § 112, second paragraph as indefinite (Ans. 3–6). Claim 27–29 stand rejected under 35 U.S.C. § 101 as directed to nonstatutory subject matter (Ans. 6). Claims 1–7 and 9–29 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Miller in view of Kamrowski, Huffman, and Lindbergh (Ans. 7–12). 1 The § 112 and § 101 rejections were raised as new grounds of rejection in the Examiner’s Answer. Appellants have elected to maintain the appeal by filing a Reply Brief on July 26, 2010 and addressing the new grounds of rejection. See 37 C.F.R. § 41.39(b)(2). Appeal 2011-000029 Application 10/247,453 4 ANALYSIS We have reviewed Appellants’ arguments in their Appeal Brief and Reply Brief, and have reviewed the Examiner’s response to Appellants’ arguments. § 112 Rejections The rejections of claims 25 and 26 under 35 U.S.C. § 112, second paragraph present us with the issue of whether the Examiner erred in finding that the Specification provides insufficient disclosure of structure, material, or acts for performing the functions recited in the claims. An indefiniteness rejection under § 112, second paragraph, is appropriate if the Specification discloses no corresponding algorithm associated with a computer or processor. Aristocrat Techs. Austrl. PTY Ltd. v. Int’l Game Tech., 521 F.3d 1328, 1333 (Fed. Cir. 2008); see also Function Media, L.L.C. v. Google Inc, 708 F.3d 1310, 1318 (Fed. Cir. 2013). Mere reference to a general-purpose computer or processor without providing an explanation of the appropriate programming is not an adequate disclosure. Id. at 1334; see also Finisar Corp. v. DirecTV Group, Inc., 523 F.3d 1323, 1340–41 (Fed. Cir. 2008). Simply reciting the claimed function in the Specification, while saying nothing about how the computer or processor ensures that those functions are performed, is not a sufficient disclosure for an algorithm which, by definition, must contain a sequence of steps. Blackboard, Inc. v. Desire2Learn, Inc. 574 F.3d 1371, 1384 (Fed. Cir. 2009). Appeal 2011-000029 Application 10/247,453 5 Claim 25 recites “processor means” for “compressing text based protocol language information” and for “decompressing the compressed text based protocol language information.” The Specification describes the basic structures of a processor (Spec., Figs. 2, 4; p. 5, ll. 15–22; p. 6, l. 8 – p. 7, l. 28). While this basic structure of a general-purpose processor is provided, the Specification fails to set forth specific structure, an algorithm, or the specific functions, steps, or instructions to transform the basic general- purpose processor to a special-purpose processor. Appellants have directed us to the disclosure at p. 9, l. 14 – p. 10, l. 6 of the Specification (which describes Fig. 5) as “provid[ing] sufficient detail of the appropriate programming and means to accomplish the claimed functionality” (Rep. Br. 2–3), but have not provided any evidence or rationale to illustrate how this disclosure sets forth a special-purpose processor. The disclosure merely provides examples of the result of compressing certain tags and/or text, but does not set forth a sufficiently detailed sequence of steps of how that compression is performed. We therefore disagree that the Examiner has erred, and accordingly sustain the Examiner’s rejections of claims 25 and 26 under 35 U.S.C. § 112, second paragraph. § 101 Rejections The rejections of claims 27–29 under 35 U.S.C. § 101 present us with the issue of whether the Examiner erred in finding those claims directed to nonstatutory subject matter. Claims 27–29 impose no limitation on the transitory or nontransitory nature of the recited “computer-readable medium.” Appellants argue that Appeal 2011-000029 Application 10/247,453 6 the Specification “specifically states that an example of computer-readable media would include [certain nontransitory media]” (Rep. Br. 3–4, emphasis added). But the Specification also asserts that “a ‘computer-readable medium’ can be any means that can store or communicate the program for use by or in connection with the instruction execution system, apparatus, or device” (Spec. p. 8, ll. 3–5, as amended December 18, 2007). Thus, in addition to encompassing statutory media, those claims that recite a “computer-readable medium” may also reasonably be construed to encompass a transitory signal, which is not within the categories of patentable subject matter defined under 35 U.S.C. § 101. In re Nuijten, 500 F.3d 1346, 1357 (Fed. Cir. 2007).2 We therefore disagree that the Examiner has erred, and accordingly sustain the Examiner’s rejections of claims 27–29 under 35 U.S.C. § 101. § 103 Rejections The rejections of claims 1–7 and 9–29 under 35 U.S.C. § 103 present us with the issue of whether the Examiner erred in finding those claims unpatentable over Miller in view of Kamrowski, Huffman, and Lindbergh. Appellants contend that one of ordinary skill in the art would not have combined the disclosures of Miller, Huffman, and Lindbergh with the 2 Both the Examiner (Ans. 6) and Appellants (Rep. Br. 3–4) address an example provided in the originally filed Specification in which the computer-readable medium “could even be paper … and then stored in a computer memory.” While we note that this example was canceled from the Specification in the Amendment filed May 21, 2008, its cancellation does not affect our analysis. Appeal 2011-000029 Application 10/247,453 7 disclosure of Kamrowski because Kamrowski “fails to address XML specific optimization” (App. Br. 7, 9, 11, 13).3 This contention is not persuasive. As the Examiner correctly states (Ans. 13), the proper test for obviousness is what the combined teachings of the prior art would have suggested to the hypothetical person of ordinary skill in the art. KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 406; see also In re Keller, 642 F.2d 413 (CCPA 1981). We agree with the Examiner that a person with ordinary skill in the art would have gleaned from Kamrowski the techniques to optimize and would have understood that such optimizations can be applied to programming languages, including XML (Ans. 12–13). Accordingly, we conclude that one of skill in the art would reasonably have applied Kamrowski’s teachings to the combination of Miller, Huffman, and Lindbergh for the reasons found by the Examiner (Ans. 8–9). Appellants also assert that that claims 1, 11, 18, and 25 are “patentably distinct from the cited art for at least the reason that the cited art does not disclose the features emphasized” (App. Br. 6, 9, 10, 12). While those claims are reproduced in the Appeal Brief with the notation “(Emphasis added),” no features of the claims are identified with any emphasis and Appellants provide no reasoning for us to consider. As such, we do not consider Appellants’ assertions to be arguments. See 37 C.F.R. § 41.37(c)(1)(vii) (“A statement which merely points out what a claim 3 Appellants separately present arguments for four groupings of claims, i.e. for claims 1–7, 9, and 10; for claims 11–17; for claims 18–24; and for claims 25 and 26. But the same arguments are substantially repeated for each grouping. Our analysis accordingly applies to each of the separate groupings. Appeal 2011-000029 Application 10/247,453 8 recites will not be considered an argument for separate patentability of the claim”); In re Lovin, 652 F.3d 1349, 1357 (Fed. Cir. 2011) (“[W]e hold that the Board reasonably interpreted Rule 41.37 to require more substantive arguments in an appeal brief than a mere recitation of the claim elements and a naked assertion that the corresponding elements were not found in the prior art.”). We therefore disagree that the Examiner has erred, and accordingly sustain the Examiner’s rejections of claims 1–7 and 9–29 under 35 U.S.C. § 103(a). CONCLUSION On the record before us, we conclude the following: (1) The Examiner has not erred in rejecting claims 25 and 26 under 35 U.S.C. § 112, second paragraph as indefinite. (2) The Examiner has not erred in rejecting claims 27–29 under 35 U.S.C. § 101 as directed to nonstatutory subject matter. (3) The Examiner has not erred in rejecting claims 1–7 and 9–29 under 35 U.S.C. §103(a) as unpatentable over Miller in view of Kamrowski, Huffman, and Lindbergh. DECISION The Examiner’s decision rejecting claims 1–7 and 9–29 is affirmed. Appeal 2011-000029 Application 10/247,453 9 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 Copy with citationCopy as parenthetical citation