Ex Parte Chen et alDownload PDFPatent Trial and Appeal BoardJan 22, 201411952741 (P.T.A.B. Jan. 22, 2014) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte LI CHEN, JOHN R. HIND, YONGCHENG LI, and LUN XIAO ____________ Appeal 2011-013075 Application 11/952,741 Technology Center 2100 ____________ Before BRUCE R. WINSOR, JOHNNY A. KUMAR, and CATHERINE SHIANG, Administrative Patent Judges. WINSOR, Administrative Patent Judge. DECISION ON APPEAL Appellants1 appeal under 35 U.S.C. § 134(a) from the Final Rejection of claims 1-20, which constitute all the claims pending in this application. 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) (2011). 1 The real party in interest identified by Appellants is International Business Machines Corporation. App. Br. 3. Appeal 2011-013075 Application 11/952,741 2 STATEMENT OF THE CASE Appellants’ disclosure “relates to computer systems and in particular to messaging applications in computer systems.” Spec. ¶ 0001. Claim 1, which is illustrative, reads as follows, with the disputed limitation emphasized: 1. A method comprising: receiving a selection of content within a transcript of an electronic communication; applying a label to the content selected within the transcript; assigning a unique URL to the content selected from within the transcript; and forwarding at least the content selected to a storage location accessible via the unique URL. The Examiner relies on the following prior art in rejecting the claims: Chen US 2005/0235034 A1 Oct. 20, 2005 Graham US 2006/0282819 A1 Dec. 14, 2006 Zhu US 2007/0044017 A1 Feb. 22, 2007 Riddle US 2007/0162589 A1 July 12, 2007 Claims 1, 2, 4, 7, 8, 10, 13, 14, and 16 stand rejected under 35 U.S.C. § 102(b) as anticipated by Chen. Ans. 4-9. Claims 3, 5, 6, 9, 11, 12, 15, 17, and 18 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Chen and Graham. Ans. 9-12. Claim 19 stands rejected under 35 U.S.C. § 103(a) as unpatentable over Chen and Zhu. Ans. 13. Claim 20 stands rejected under 35 U.S.C. § 103(a) as unpatentable over Chen and Riddle. Ans. 13-14. Appeal 2011-013075 Application 11/952,741 3 Rather than repeat the arguments here, we refer to the Briefs (“App. Br.” filed May 20, 2011; “Reply Br.” filed Aug. 22, 2011) and the Answer (“Ans.” mailed June 22, 2011) for the respective positions of Appellants and the Examiner. ISSUE Based on Appellants’ arguments, we discuss the appeal by reference to claim 1. The issue presented by Appellants’ arguments is as follows: Does Chen disclose “assigning a unique URL to the content selected from within the transcript” (hereinafter the “assigning step”), as recited in claim 1? ANALYSIS Chen discloses “[a]s used herein, the term ‘topic marker’ means an identifier attached to a chat transcript segment as metadata.” Chen, ¶ 0037. The Examiner maps the “unique URL” recited in claim 1 to Chen’s “topic marker.” Ans. 5. The Examiner construes “URL” as follows: “The broadest reasonable interpretation of a url is an identifier attached to an object which allows it to be retrieved from a repository.” Ans. 14. Appellants contend “[the Examiner’s] asserted interpretation of the term ‘URL’ is improper because the asserted interpretation is too broad and is not reasonable.” App. Br. 8. Appellants contend that “URL” has an established plain meaning in the computer arts. Reply Br. 5. We agree with Appellants. Appeal 2011-013075 Application 11/952,741 4 A pertinent dictionary definition follows: URL n. Acronym for Uniform Resource Locator. An address for a resource on the Internet. URLs are used by web browsers to locate Internet resources. A URL specifies the protocol to be used in accessing the resource . . . , the name of the server on which the resource resides . . . , and, optionally, the path to a resource . . . . MICROSOFT COMPUTER DICTIONARY 542 (5th ed., 2002); see also T. Berners-Lee et al., Uniform Resource Identifier (URI): Generic Syntax, Internet Engineering Task Force, RFC 3986 § 1.1.3 (Jan. 2005), available at http://www.ietf.org/rfc/rfc3986.txt (cited at Reply Br. 5). We find the dictionary definition is entirely consistent with the use of the term “URL” in the Specification. We conclude the dictionary definition is the broadest reasonable interpretation of “URL.” Accordingly, the Examiner’s claim construction is overly broad. The passages of Chen cited by the Examiner do not disclose that Chen’s Topic Marker is an address for a resource on the Internet, i.e., a URL. Therefore, on this record, the Examiner has failed to show that Chen anticipates claim 1. Accordingly, we do not sustain the rejection of (1) claim 1; (2) independent claims 7 and 13, which were rejected on substantially the same basis as claim 1; and (3) claims 2-6, 8-12, and 14-20, which variously depend, directly or indirectly, from claim 1, 7, or 13. NEW GROUND OF REJECTION WITHIN 37 C.F.R. § 41.50(b) Claims 13-18 are rejected on a new ground of rejection under 35 U.S.C. § 101 as directed to non-statutory subject matter. Our reviewing court has found that transitory, propagating signals are not within any of the four statutory categories. Therefore, a claim directed Appeal 2011-013075 Application 11/952,741 5 to a computer readable medium 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 . . . 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. According to U.S. Patent & Trademark Office (USPTO) guidelines: The broadest reasonable interpretation of a claim drawn to a computer readablle [sic] medium . . . typically covers forms of non-transitory tangible media and transitory propagating signals per se in view of the ordinary and customary meaning of computer readable media . . . . When the broadest reasonable interpretation of a claim covers a signal per se, the claim must be rejected under 35 U.S.C. § 101 as covering non-statutory subject matter. David J. Kappos, Subject Matter Eligibility of Computer Readable Media, 1351 Off. Gaz. Pat. Office 212 (Feb. 23, 2010) (“OG Notice”) (citation omitted); see also Ex parte Mewherter, 107 USPQ2d 1857 (PTAB 2013) (precedential). 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,” MPEP § 2106(I) (8th ed. 2001, rev. 2012) (emphasis added) ; cf. In re Lintner, 458 F.2d 1013, 1015 (CCPA 1972) (“Claims which are broad enough to read on obvious subject matter are unpatentable even though they also read on nonobvious subject matter.”). Claim 13 recites “[a] computer program product comprising: a computer readable medium; and program code on the computer readable medium that when executed by a processor provides the functions of: . . . .” The Specification states the following: Appeal 2011-013075 Application 11/952,741 6 [T]he software aspects of an illustrative embodiment of the present invention are capable of being distributed as a program product in a variety of forms, and that an illustrative embodiment of the present invention applies equally regardless of the particular type of media used to actually carry out the distribution. By way of example, a non exclusive list of types of media includes recordable type (tangible) media such as floppy disks, thumb drives, hard disk drives, CD ROMs, DVDs, and transmission type media such as digital and analogue communication links. Spec. ¶ 0043 (emphases added). Nothing in claim 13 or in the Specification precludes the “computer readable medium” from encompassing a transitory signal. Indeed, the Specification expressly states that the media that carries the program code of the program product may be “transmission type media such as digital and analogue communication links” (id.), i.e., transitory signals. We give the recitation “[a] computer program product comprising: a computer readable medium; and program code on the computer readable medium that when executed by a processor provides the functions of” its broadest reasonable interpretation in light of the Specification, see In re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997). Accordingly, we construe the recitation, and thus claim 13, to encompass a transitory signal and, therefore, to be directed to non-statutory subject matter. By virtue of their dependency from claim 13, claims 14-18 also encompass a transitory signal and are, therefore, similarly directed to non-statutory subject matter. We note that Appellants are not precluded from amending claims 13- 18 to overcome this rejection. Guidance is provided in the OG Notice (“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 Appeal 2011-013075 Application 11/952,741 7 cover only statutory embodiments to avoid a rejection under 35 U.S.C. § 101 by adding the limitation ‘non-transitory’ to the claim.”). DECISION The decision of the Examiner to reject claims 1-20 is reversed. We enter a new ground of rejection for claims 13-18 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 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. 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). REVERSED 37 C.F.R. § 41.50(b) Appeal 2011-013075 Application 11/952,741 8 msc Copy with citationCopy as parenthetical citation