Ex Parte Lamb et alDownload PDFPatent Trial and Appeal BoardFeb 26, 201311109218 (P.T.A.B. Feb. 26, 2013) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________________ Ex parte JAMES A. LAMB and JOSEPH G. GIEBLER ____________________ Appeal 2010-008136 Application 11/109,218 Technology Center 2100 ____________________ Before: ALLEN R. MACDONALD, JUSTIN BUSCH, and HUNG H. BUI, Administrative Patent Judges. BUSCH, Administrative Patent Judge. DECISION ON APPEAL Appeal 2010-008136 Application 11/109,218 2 Appellants appeal under 35 U.S.C. § 134 from a final rejection of claims 1-24. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. Introduction According to Appellants, the invention relates to systems, methods, and devices for configurable functionality chaining. Abstract. STATEMENT OF THE CASE Exemplary Claims Claims 1 and 20, reproduced below, are illustrative of the claimed subject matter: 1. A computing device, comprising: a client layer to receive a client instruction from at least one of a number of clients for a network functionality to be performed; a functionality layer having an application program interface (API) to interpret the client instruction and to configure a number of functionality modules to form a functionality chain for use in accomplishing the client instruction; and a data store layer to store data for use by the number of functionality modules. 20. A computing system, comprising: a number of computing devices, each having access to a number of functionality modules for accomplishing a client instruction; and a computing device, including: Appeal 2010-008136 Application 11/109,218 3 means for receiving a client instruction from at least one of a number of clients for a network functionality to be performed; means for selecting a number of functionality modules to form a functionality chain for use in accomplishing the client instruction; and means for accessing data, for use by the number of functionality modules, from a number of data stores. Reference Vänttinen WO 02/102093 A1 Dec. 19, 2002 Rejections on Appeal Claims 1-6 and 20-24 are rejected under 35 U.S.C. § 101 as directed to non-statutory subject matter. Ans. 3. Claims 1-7, 10, 12-14, and 20-24 are rejected under 35 U.S.C. § 102(b) as being anticipated by Vänttinen. Ans. 4-5. Claims 8, 9, 11, and 15-19 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Vänttinen. Ans. 6-7. ISSUES Appellants argue that claims 1-6 and 20-24 are directed to statutory subject matter. App. Br. 14-17; Reply 2-3. Appellants also argue that Vänttinen does not disclose all of the limitations recited in claims 1-7, 10, 12-14, and 20-24, nor does Vänttinen teach or suggest all of the limitations of claims 8, 9, 11, and 15-19.App. Br. 18-26. Issue 1a: Has the Examiner erred in determining that claims 1-6 are directed to non-statutory subject matter? Appeal 2010-008136 Application 11/109,218 4 Issue 1b: Has the Examiner erred in determining that claims 20-24 are directed to non-statutory subject matter? Issue 2: Has the Examiner erred in determining that Vänttinen discloses each limitation of the claims? ANALYSIS Issue 1: Rejections under 35 U.S.C. § 101 The Examiner finds that claims 1-6 and 20-24 are “directed to software alone without claiming associated computer hardware required for execution” and are thus directed to non-statutory subject matter. Ans. 3 Appellants argue that claim 1 is directed to a “computing device,” and that, regardless of whether the limitations may include software, the layers are “elements of a physical computing device, and not software standing alone.” App. Br. 14. Appellants also argue that the data stores are explicitly defined as “memory locations that have data stored therein,” and that “[b]ecause there is data stored in memory locations of a data store, the memory locations are physical storage locations, and not merely addresses as asserted by the [Examiner].” App. Br. 15 (citing Spec. 9:12-13). Appellants then state that the claimed “data store layer” is defined “in terms of its function,” which is to “store data for use by the number of functionality modules.” App. Br. 15 (citing Spec. Abstract). Appellants further assert that, “because storage of data requires physical memory, e.g., data stores, the data store layer recited in claim 1 necessarily defines physical structure.” App. Br. 16. Appellants further argue that the term “computing device” indicates hardware and that the Examiner has not shown Appellants’ use of the term “‘computing device’ to denote software alone.” App. Br. 16. Therefore, Appellants conclude that claim 1 is properly directed Appeal 2010-008136 Application 11/109,218 5 to a product and, thus, is directed to statutory subject matter. App. Br. 17. Appellants rely on the same arguments with respect to claims 2-6 and 20-24. App. Br. 17. Appellants further argue that claim 20 (and dependent claims 21-24) includes a “means for accessing data,” which includes structure as previously argued. App. Br. 17. Appellants also assert that the Examiner’s construction of software device is based on a mischaracterization of The Authoritative Dictionary of IEEE Standards Terms. Reply 3. The Examiner finds that data stores “can be access[ed] via various query languages,” suggesting “that the data stores themselves can be databases or software data structures for storing data [such that] the data store layer can reasonably be interpreted as software.” Ans. 8. The Examiner further finds that while data structures and software “require hardware elements to realize its functionality, claiming the software or software data structures alone is not equivalent to claiming computer hardware.” Ans. 8-9. The Examiner also finds that Appellants have not defined “computing device” and that the broadest reasonable interpretation of a computing device can encompass purely software and is thus “not equivalent to claiming computer hardware.” Ans. 9. With respect to independent claim 1 and claims 2-6, which depend therefrom, we agree with the Examiner. Appellants’ reliance on claiming a “computing device” is unpersuasive because “computing device” is merely recited in the preamble and does not breathe life into the claims. Moreover, we agree with the Examiner’s finding that each limitation of claim 1 may be implemented in software alone. The claims recite a “data store layer,” not a “data store.” Regardless of whether data stores require physical structure, Appellants’ Specification merely states that the “data store layer 140 can include a number of data stores.” Spec. 9:10 (emphasis added). This Appeal 2010-008136 Application 11/109,218 6 language is permissive and does not require that the data store layer includes data stores. As pointed out by Appellants, “data store layer stores data for use by the number of functionality modules.” Spec. 2:22-23. Moreover, the Specification states that “data store layers can utilize object technology which is a methodology for designing and programming.” Spec. 2:29-30. The Examiner’s broadest reasonable interpretation that a data store layer may be implemented in software alone is consistent with Appellants’ Specification. Therefore, we agree with the Examiner that claim 1 and claims 2-6, not argued separately, are not statutory subject matter under 35 U.S.C. § 101. With respect to independent claim 20, we disagree with the Examiner. We note that claim 20 recites several means, including, for example, “means for receiving a client instruction ...;” “means for selecting a number of functionality modules ...;” and “means for accessing data, for use by the number of functionality modules, from a number of data stores.” We note the guidelines provided in the MPEP: Often the supporting disclosure for a computer-implemented invention discusses the implementation of the functionality of the invention through hardware, software, or a combination of both. In this situation, a question can arise as to which mode of implementation supports the means-plus-function limitation. The language of 35 U.S.C. 112, sixth paragraph requires that the recited “means” for performing the specified function shall be construed to cover the corresponding “structure or material” described in the specification and equivalents thereof. Therefore, by choosing to use a means-plus-function limitation and invoke 35 U.S.C. 112, sixth paragraph, applicant limits that claim limitation to the disclosed structure, i.e., implementation by hardware or the combination of hardware and software, and equivalents thereof. Therefore, the examiner should not construe the limitation as covering pure software implementation. Appeal 2010-008136 Application 11/109,218 7 However, if there is no corresponding structure disclosed in the specification (i.e., the limitation is only supported by software and does not correspond to an algorithm and the computer or microprocessor programmed with the algorithm), the limitation should be deemed indefinite as discussed above, and the claim should be rejected under 35 U.S.C. 112, second paragraph. It is important to remember that claims must be interpreted as a whole; so, a claim that includes a means-plus-function limitation that corresponds to software per se (and is thus indefinite for lacking structural support in the specification) is not necessarily directed as a whole to software per se unless the claim lacks other structural limitations. U.S. Patent and Trademark Office, MANUAL OF PATENT EXAMINING PROCEDURE § 2181 II.B., pp. 2100-250, 8th Edition, Rev. 9, August 2012 (emphases added). In view of the means-plus-function limitations of claim 20, we cannot sustain the Examiner’s rejection of claims 20-24 under 35 U.S.C. § 101; however, we note that, in the event of further prosecution, the Examiner may wish to consider whether a rejection under 35 U.S.C. § 112, second paragraph, is warranted. Issue 2: Art Rejections Appellants argue that Vänttinen does not disclose each limitation of independent claim 7. App. Br. 18-21. Specifically, Appellants argue that Vänttinen merely “request[s] to locate a service that the client wants to use” and does not disclose “receiving a client instruction . . . for a network functionality to be performed,” as recited in claim 7. App. Br. 18. Appellants assert that “for a network functionality to be performed,” as recited in claims 7, “defines the structure of the functionality chain that will be formed as a result of receiving the instruction” and limits the claim because it defines the Appeal 2010-008136 Application 11/109,218 8 type of instruction as well as “an interaction and interrelationship between elements.” App. Br. 19. The Examiner finds that Vänttinen discloses “servicing a client request by a distributed object component network DOCN via its service components,” which “shows that a network service/functionality is requested from and provided to the client, hence performed,” meeting the limitation recited in claim 7. Ans. 10 (citation omitted). We agree with the Examiner. As shown in the portions cited by the Examiner, Vänttinen discloses receiving and servicing a client request to perform a service, which meets Appellants’ recited “receiving a client instruction from at least one of a number of clients for a network functionality to be performed.” Ans. 10 (citing Vänttinen abstract; 3:19-28). Appellants have not presented persuasive evidence or argument as to why “receiving a client instruction . . . for a network functionality to be performed” does not read on Vänttinen’s receipt of a request for a service, which is subsequently performed. Appellants also argue that Vänttinen does not disclose “accessing a number of data stores to obtain data for use by the number of functionality modules.” App. Br. 20. Appellants argue that Vänttinen only uses the service repository, which the Examiner has mapped to Appellants’ data stores, “to find its service components,” and that nothing in Vänttinen indicates “that its service components do, or are even capable of, using . . . its service repository SR, in any way.” App. Br. 20. The Examiner finds that “an existing service can request information from a service repository SR.” Ans. 11 (citation omitted). Thus, the Examiner finds that Vänttinen meets the limitation of “accessing a number of data stores to obtain data for use by the number of functionality modules,” Appeal 2010-008136 Application 11/109,218 9 as recited in claim 7. Appellants do not address the portion of Vänttinen cited by the Examiner but argue that the “Examiner fails to provide any rebuttal of the express statement of Vantinnen [sic]” that Vänttinen “uses its service repository SR to find its service components.” Reply 4 (citation omitted). Once again, we agree with the Examiner. As correctly noted by the Examiner, Vänttinen describes, in part, “existing service 82 request service details from the service repository SR.” Ans. 11 (citing Vänttinen 16:29-32). While Appellants have pointed to one use of the service repository, namely for locating services, the Examiner has pointed to another use of the service repository, which meets the recited limitation in claim 7. Appellants provide no separate argument with respect to the patentability of claims 1-6 and 8-24. Appellants rely on the arguments asserted with respect to independent claim 7 and the fact that, with respect to claims 8, 9, 11, and 15-19, the Official Notice taken by the Examiner does not cure the alleged deficiencies of Vänttinen. Therefore, the rejections of claims 1-6 and 8-24 (in combination with Official Notice, with respect to claims 8, 9, 11, and 15-19) are affirmed for the same reasons as discussed with respect to independent claim 7 above. DECISION For the above reasons, the Examiner’s rejection of claims 1-24 is affirmed. 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)(2009). Appeal 2010-008136 Application 11/109,218 10 AFFIRMED llw Copy with citationCopy as parenthetical citation