Ex Parte Trantow

Board of Patent Appeals and Interferences

May 2, 2012

10280889 (B.P.A.I. May. 2, 2012)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
10/280,889 10/24/2002 Wayne D. Trantow 42P14496 3916
45209 7590 05/03/2012
MISSION/BSTZ
BLAKELY SOKOLOFF TAYLOR & ZAFMAN LLP
1279 OAKMEAD PARKWAY
SUNNYVALE, CA 94085-4040
EXAMINER
SALL, EL HADJI MALICK
ART UNIT PAPER NUMBER
2457
MAIL DATE DELIVERY MODE
05/03/2012 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 WAYNE D. TRANTOW
____________

Appeal 2009-014434
Application 10/280,889
Technology Center 2400
____________

Before GREGORY J. GONSALVES, ERIC B. CHEN,
and BRUCE R. WINSOR, Administrative Patent Judges.

WINSOR, Administrative Patent Judge.

DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134(a) from a Final Rejection of
claims 12-21 and 26-34. Claims 1-11 and 22-35 are cancelled pursuant to a
restriction requirement. We have jurisdiction under 35 U.S.C. § 6(b).
We reverse and institute a new ground of rejection within the
provisions of 37 C.F.R. § 41.50(b).

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STATEMENT OF THE CASE
Appellant’s invention “relates to providing services to devices, and
more particularly to aggregating installed devices to define a virtual device,
which may then be provisioned according to the capabilities of the virtual
device.” (Spec. ¶ [0001]).
Claim 12, which is illustrative of the invention, reads as follows:
12. A method for a service source to provision resources
communicatively coupled with a first network, said
resources including devices or web services associated with
an environment, the method comprising:
receiving from a service host a resource context for
the environment;
accessing service descriptions of services offered by
the service source as well as services offered by other
service sources communicatively coupled with the service
source;
mapping the resource context against the accessed
service descriptions to determine at least one service
operable on selected ones of the resources in the resource
context, said selected ones corresponding to a constellation;
and
providing an identification of the at least one
determined service to the service host.

Claims 12-21 and 26-34 stand rejected under 35 U.S.C. § 102(e) as
anticipated by Han (US 2002/0143819 A1).
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Rather than repeat the arguments here, we make reference to the
Briefs (App. Br. filed Jan. 23, 20091; Reply Br. filed Sept. 17, 2007) and the
Answer (Ans. mailed July 17, 2007) for the respective positions of Appellant
and the Examiner.

ISSUE
Based on Appellant’s arguments we will decide the appeal by
reference to claim 12. The dispositive issue raised by Appellant’s
contentions is: Does Han disclose “receiving from a service host a resource
context for the environment” (hereinafter the “receiving step”), as recited in
claim 12?2 More particularly, did the Examiner err in construing claim 12
by not interpreting the claim in light of the Specification?

ANALYSIS
The Examiner finds that Han discloses the receiving step at paragraph
[0007]. (Ans. 4). The Examiner further explains:
[Appellant] is relying on an overly narrow definition of
"resource environment". On page 14, Han discloses
Requests from the subscribers 403 are mapped to a
corresponding service execution specified in the services
registry 431, permitting content to be exchanged across
boundaries among different networks, protocols, or even

1 The Appeal Brief filed Mar. 16, 2007, has not been considered as it is
deemed to have been superseded and replaced by the Appeal Brief filed Jan.
23, 2009.
2 Appellant’s arguments present additional issues. We are persuaded of
error regarding the identified issue, which is dispositive of the appeal.
Therefore, we do not reach the additional issues.

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using web service models (i.e. "resource context"). The
syndicator 401 can accordingly be viewed as digital asset
hub for aggregating content from all types of providers,
including both web service providers (i.e. "resource context
for an environment of resources including devices and web
services that is provided by a service host" (i.e. web service
provider), sources of content, legacy applications, and so
forth, regardless of location, access protocol, or content
format.
(Ans. 7-8; see also Han ¶¶ [0179], [0181]).
Appellant contends inter alia that Han does not “disclose or suggest a
resource context for an environment of resources including devices or web
services that is provided by a service host.” (App. Br. 4). In particular,
Appellant states:
Appellant first notes that per the claim language, the
method occurs in a service source, not a service host. The
claim recites, “receiving from a service host...; accessing
service descriptions ...; and providing an identification of
[a] service to the service host.” Thus, the claim must be
understood as reciting a method in a service source.
Furthermore, the claim preamble reinforces such an
interpretation in that it recites, “A method for a service
source to provision resources communicatively coupled
with a first network. ...” Thus, Appellant submits that the
body of the claim on its face refers to a method of a service
source, not a service host.
(Ellipses and brackets in original) (Reply Br. 3). Appellant further points
out the following:
Although claim limitations are not generally read from the
Specification into the claims, the claims must be read in
light of, and to be consistent with, the Specification. At
[paragraphs] [0012], [0015], and [0016] of Appellant's
Description, a service context refers to devices coupled to a
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common server of a network in which the devices or
services exist. The network can have multiple different
virtual configurations referred to as constellations. As
recited in the claims, a service context has reference to a
constellation of resources. Thus, the resource context refers
to services and devices available in a particular logical
configuration of a network of devices.
(Reply Br. 4).
We agree with Appellant.
“‘Where an inventor chooses to be his own lexicographer and to give
terms uncommon meanings, he must set out his uncommon definition in
some manner within the patent disclosure’ so as to give one of ordinary skill
in the art notice of the change.” In re Paulsen, 30 F.3d 1475, 1480 (Fed.
Cir. 1994). “This rule of construction recognizes that the inventor may have
imparted a special meaning to a term in order to convey a character or
property or nuance relevant to the particular invention.” Multiform
Desiccants, Inc. v. Medzam, Ltd., 133 F.3d 1473, 1477 (Fed. Cir. 1998).
“[T]he specification may reveal a special definition given to a claim term by
the patentee that differs from the meaning it would otherwise possess. In
such cases, the inventor's lexicography governs.” Phillips v. AWH Corp.,
415 F.3d 1303, 1315 (Fed. Cir. 2005) (citing CCS Fitness, Inc. v. Brunswick
Corp., 288 F.3d 1359, 1366 (Fed. Cir. 2002); see also In re Glaug, 283 F.3d
1335, 1340 (Fed. Cir. 2002) (“[T]he general term must be understood in the
context in which the inventor presents it…. [T]he inventor's lexicography
must prevail.”).
Under the broadest reasonable interpretation consistent with the
Specification, we agree with Appellant that claim 26 recites that the
“resource context” is received by a service source from a “service host.”
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The Specification explicitly defines the terms “service host “ and “resource
context” as follows: “For the purposes of the following description and
claims, a ‘service host’ refers to a machine, such as a local server on the
network, from which services may be obtained, e.g., this machine hosts
services which may be provided to devices on the network.” (Spec. ¶
[0015]). “The phrase ‘resource context’ will be used to refer to devices
coupled with the server.” (Spec. ¶ [0016]). The Specification additionally
defines “service” and “service source” as follows: “A ‘service’ is defined as
an operation performed by a service host in conjunction with a resource
constellation. The operation of the service is defined by a software program
that is packaged and made available to the service host by the service
source.” (Spec. ¶ [0012]). We have reviewed the passages (Han Fig. 1; ¶¶
[0004], [0007], [0013], [0045], [0051], [0053], [0072], [0179], [0181]) cited
by the Examiner in support of the rejection of claim 12. We find no
adequate disclosure therein of a service provider (“service source”) receiving
from a server (“service host”) an identification of the devices coupled with
the server (“resource context”). Furthermore, we conclude that the
Examiner’s findings (Ans. 3-4) and explanations (Ans. 6-8) are in error
because they do not take into account the explicit definitions of the terms
“service source,” “service host,” and “resource context’ in the Specification.
Accordingly, we will not sustain the rejection of claim 12 or claims
13-21 and 26-34.

NEW GROUND OF REJECTION WITHIN 37 C.F.R. § 41.50(b)
Claims 26-34 are rejected on a new ground of rejection under
35 U.S.C. § 101 as being directed to non-statutory subject matter.
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Our reviewing court has found that transitory, propagating signals are
not within any of the four statutory categories (process, machine,
manufacture, or composition of matter). Therefore, a claim directed to
computer instructions embodied in a signal is not statutory under 35 U.S.C.
§ 101. In re Nuijten, 500 F.3d 1346, 1357 (Fed. Cir. 2007). “A transitory,
propagating signal [however] . . . is not a ‘process, machine, manufacture, or
composition of matter.’ [These] 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.” Id. Moreover, “[a] claim that
covers both statutory and non-statutory embodiments . . . embraces subject
matter that is not eligible for patent protection and therefore is directed to
non-statutory subject matter,” U.S. Patent & Trademark Office, Interim
Examination Instructions for Evaluating Subject Matter Eligibility Under 35
U.S.C. § 101, Aug. 2009, at 2, available at http://www.uspto.gov/patents/
law/comments/2009-08-25_interim_101_instructions.pdf .
The preamble of claim 26 recites, in pertinent part (emphasis added):
26. An article comprising a machine-accessible media (sic) having
associated data for a service source to provision resources
communicatively coupled with a first network, said resources
including devices or web services associated with an environment,
wherein the data, when accessed, results in a machine performing:
Appellant’s Specification states (emphases added):
Associated data may be stored in, for example, volatile and/or non-
volatile memory 506, or in storage devices 508 and their associated
storage media, including hard-drives, floppy-disks, optical storage,
tapes, flash memory, memory sticks, digital video disks, biological
storage, etc. Associated data may be delivered over transmission
environments, including network 522, in the form of packets, serial
data, parallel data, propagated signals, etc., and may be used in a
compressed or encrypted format.
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(Spec. ¶ [0043]).
Claim 26 does not recite that the “machine-accessible medi[um]” is a
storage medium and we construe “article” to encompass a transmission
environment. Therefore, we construe claim 26, and the claims that depend
from claim 26, to encompass a transitory propagating signal. Accordingly,
we find claims 26-34 encompass embodiments that are not statutory subject
matter and are, therefore, unpatentable under 35 U.S.C. § 101.3

ORDER
The decision of the Examiner to reject claims 12-21 and 26-34 is
reversed.
We enter a new ground of rejection for claims 26-34 under 35 U.S.C.
§ 101.
This decision contains new grounds 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 Appellant, 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:

3 It has been suggested that “[a] claim drawn to such a computer readable
medium that covers both transitory and non-transitory embodiments may be
amended to narrow the claim to cover only statutory embodiments to avoid a
rejection under 35 U.S.C. § 101 by adding the limitation ‘non-transitory’ to
the claim.” David J. Kappos, Subject Matter Eligibility of Computer
Readable Media, 1351 OFF. GAZ. PAT. OFFICE 212 (Feb. 23, 2010).

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(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.
37 C.F.R. § 41.50(b).
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). See 37 C.F.R.
§ 1.136(a)(1)(iv) (2010).

REVERSED
37 C.F.R. § 41.50(b)

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