11551429 (P.T.A.B. May. 20, 2014)

Ex Parte Heinkel et al

Patent Trial and Appeal BoardMay 20, 2014

11551429 (P.T.A.B. May. 20, 2014)

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. 11/551,429 10/20/2006 Ulrich Karl Heinkel Heinkel 3-2-1 (LCNT/12861 1314 46363 7590 05/21/2014 WALL & TONG, LLP/ ALCATEL-LUCENT USA INC. 25 James Way Eatontown, NJ 07724 EXAMINER GOOD JOHNSON, MOTILEWA ART UNIT PAPER NUMBER 2616 MAIL DATE DELIVERY MODE 05/21/2014 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 ULRICH KARL HEINKEL, AXEL SCHNEIDER and STEPHAN WALTER ____________ Appeal 2011-005754 Application 11/551,429 Technology Center 2600 ____________ Before JASON V. MORGAN, MICHAEL J. STRAUSS, and CATHERINE SHIANG, Administrative Patent Judges. SHIANG, Administrative Patent Judge. DECISION ON APPEAL Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s rejection of claims 1-29. We have jurisdiction under 35 U.S.C. § 6(b). We reverse, and enter a new ground of rejection. In reaching the decision, we have considered only the arguments Appellants actually raised. Arguments Appellants did not make are deemed to be waived. See 37 C.F.R. § 41.37(c)(1)(vii) (2010). Appeal 2011-005754 Application 11/551,429 2 STATEMENT OF THE CASE We have reviewed Appellants’ arguments in the Briefs, the Examiner’s rejection, and the Examiner’s response to Appellants’ arguments. We concur with Appellants’ conclusion that the Examiner erred in finding Itoh (US 2002/0196292 A1) and Nitta (US 2006/0235658 A1) collectively teach “wherein the positions of the nodes within the layout of the graph are determined using a force model comprising a substantially linear repulsive force in a first region, a substantially exponential repulsive force in a second region, and an attractive force in a third region,” as recited in independent claim 1.1 The Examiner does not adequately explain, and we do not see, how Itoh’s separate intermolecular model and spring models, and Nitta’ teachings fit together to teach “wherein the positions of the nodes within the layout of the graph are determined using a force model comprising a substantially linear repulsive force in a first region, a substantially exponential repulsive force in a second region, and an attractive force in a third region.” Accordingly, we do not sustain the Examiner’s rejection of independent claim 1 and corresponding dependent claims. For similar reasons, we do not sustain the Examiner’s rejection of independent claims 15 and 29, and corresponding dependent claims. NEW GROUND OF REJECTION UNDER 37 C.F.R. § 41.50(b) Claim 29 is rejected on a new ground of rejection under 35 U.S.C. § 101 as covering non-statutory subject matter. 1 Appellants raise additional arguments. Because the identified issue is dispositive of the appeal, we do not reach the additional arguments. Appeal 2011-005754 Application 11/551,429 3 Independent claim 29 recites “[a] computer readable storage medium.” The Specification merely states “a computer readable medium or carrier, e.g., RAM memory, magnetic or optical drive or diskette and the like.” Spec. 18. Therefore, the Specification has not assigned a special meaning to the term computer readable storage medium. In Ex parte Mewherter, Appeal No. 2012-007692 (PTAB May 08, 2013) (precedential-in-part), the Board held that: [T]hose of ordinary skill in the art would understand the claim term “machine-readable storage medium” would include signals per se. Further, where, as here, the broadest reasonable interpretations of all the claims each covers a signal per se, the claims must be rejected under 35 U.S.C. § 101 as covering non- statutory subject matter. See In re Nuijten, 500 F.3d 1346, 1356-57 (Fed. Cir. 2007) (transitory embodiments are not directed to statutory subject matter); Subject Matter Eligibility of Computer-Readable Media, supra; U.S. Patent & Trademark Office, Interim Examination Instructions for Evaluating Subject Matter Eligibility Under 35 U.S.C. § 101, Aug. 24, 2009; p. 2, available at http://www.uspto.gov/web/offices/pac/dapp/opla/2009-08- 25_interim_101_ instructions.pdf; U.S. Patent & Trademark Office, Evaluating Subject Matter Eligibility Under 35 USC § 101 (August 2012 Update); pp. 11-14, available at http://www.uspto.gov/patents/law/exam/101_training_aug2012. pdf. Id. at 13-14. The Board noted that “[t]he term ‘machine-readable medium’ is equivalent to the more commonly used term ‘computer-readable medium.’” See id. at 4 fn 2. The Board also rejected the contention that Appeal 2011-005754 Application 11/551,429 4 machine-readable storage medium is distinguishable from a machine- readable medium. See id. at 4, 6. Because under Mewherter, the broadest reasonable interpretation of the term computer readable storage medium encompasses signals per se, claim 29 is rejected under 35 U.S.C. § 101 as covering non-statutory subject matter. We note Appellants are not precluded from amending the claims to overcome the rejection. Relevant guidance is in the U.S. Patent & Trademark Office, Subject Matter Eligibility of Computer Readable Media, 1351 Off. Gaz. Pat. Office 212 (Feb. 23, 2010) (“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.”); U.S. Patent & Trademark Office, Evaluating Subject Matter Eligibility Under 35 USC § 101 (August 2012 Update) (pp. 11-14), available at http://www.uspto.gov/patents/law/exam/101_training_aug2012.pdf (noting that while “non-transitory” is a viable option for overcoming the presumption that the media encompass signals or carrier waves, merely indicating that such media are “physical” or “tangible” will not overcome such presumption). See id. at 14. DECISION The Examiner’s decision rejecting claims 1-29 is reversed. We enter a new ground of rejection for claim 29 under 35 U.S.C. Appeal 2011-005754 Application 11/551,429 5 § 101 as covering non-statutory subject matter. This decision contains a new ground of rejection pursuant to 37 C.F.R. § 41.50(b) (2010), which states that “[a] new ground of rejection . . . shall not be considered final for judicial review.” WITHIN TWO MONTHS FROM THE DATE OF THE DECISION, Appellants 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) (2010). REVERSED 37 C.F.R. § 41.50(b) (2010) gvw