Ex Parte Sebot et al

Board of Patent Appeals and Interferences

Apr 27, 2009

10280612 (B.P.A.I. Apr. 27, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte JULIE SEBOT, WILLIAM W. MACY, and ERIC DEBES
____________

Appeal 2008-4181
Application 10/280,612
Technology Center 2100
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Decided:1 April 27, 2009
____________

Before JOHN C. MARTIN, JEAN R. HOMERE, and
THU A. DANG, Administrative Patent Judges.

Opinion for the Board filed by Administrative Patent Judge DANG.

Dissenting Opinion filed by Administrative Patent Judge MARTIN.

DANG, Administrative Patent Judge.

DECISION ON APPEAL

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, begins to run from the decided date
shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Date (electronic delivery).
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I. STATEMENT OF THE CASE
This is an appeal under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 18-22. The Examiner’s rejection of claims 1-17 has been
withdrawn and will not be addressed in this appeal. We have jurisdiction
under 35 U.S.C. § 6(b).
We AFFIRM.

A. Invention
According to Appellants, the invention relates to the field of
microprocessors and computer systems, and more particularly, to a method
and apparatus for a fast full search motion estimation with SIMD merge
instruction (Spec. 2, ¶ [0003]).

B. Representative Claim
Claim 18 is exemplary and is reproduced below:
18. A machine readable, tangible medium having embodied
thereon a computer program, said computer program being executable
by a machine to perform a method comprising:

loading a first line of K data elements far a current macroblock;

loading a first set of L data elements and a second set of L data
elements for pixels in a search window;

performing a shift right merge operation on said first and
second sets of data elements to generate a second line of K data
elements;

calculating a first sum of absolute differences value between
said first line and said second line; and
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accumulating said first sum of absolute differences value to a
first total for a first reference macroblock.

C. Rejection
Claims 18-22 stand rejected under 35 U.S.C. § 101.

II. ISSUE
Have Appellants shown that the Examiner erred in finding that claims
18-22 are not directed to patent eligible subject matter under 35 U.S.C. §
101?

III. FINDINGS OF FACT
Appellants’ Specification
1. The invention may be provided as a computer program product
or software which may include a machine or computer-readable medium
(Spec. 9, ¶ [0041]).
2. The computer-readable medium includes any type of
media/machine-readable medium suitable for storing or transmitting
electronic instructions or information in a form readable by a machine
(id. ¶ [0042]).
3. Transfer of a program may be by way of electrical, optical,
acoustical, or other forms of data signals embodied in a carrier wave or other
propagation medium via a communication link (id. at 10, ¶ [0042]).

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IV. PRINCIPLES OF LAW
35 U.S.C. § 101
“Whoever invents or discovers any new and useful process, machine,
manufacture, or composition of matter, or any new and useful improvement
thereof, may obtain a patent therefor, subject to the conditions and
requirements of this title.” 35 U.S.C. § 101. “[N]o patent is available for a
discovery, however useful, novel, and nonobvious, unless it falls within one
of the express categories of patentable subject matter of 35 U.S.C. § 101
. . . .” Kewanee Oil Co. v. Bicron Corp., 416 U.S. 470, 483 (1974).
“A transitory, propagating signal . . . is not a ‘process, machine,
manufacture, or composition of matter.’ Those 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.” In re Nuijten, 500
F.3d 1346, 1357 (Fed. Cir. 2007), reh’g en banc denied, 515 F.3d 1361
(Fed. Cir. 2008), cert. denied, __ U.S.__, 127 S. Ct. 70 (2008).
“If a claim covers material not found in any of the four statutory
categories, that claim falls outside the plainly expressed scope of § 101 even
if the subject matter is otherwise new and useful.” Id. at 1354.

V. ANALYSIS
35 U.S.C. § 101
Appellants contend that the Examiner erred in rejecting claim 18
under 35 U.S.C. § 101 as being directed to non-statutory subject matter
because “computer programs embodied in a tangible medium are patentable
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subject matter” and “[c]laim 18 sets forth a computer program embodied on
a machine readable, tangible medium” (App. Br. 18). However, the
Examiner finds that “[s]ince the word ‘tangible’ does not appear in the
specification it cannot be given any weight in the legal sense” (Ans. 3) and
that “lacking a definition of tangible in the specification the phrase ‘machine
readable, tangible medium’ includes a program in the form of data signals
embodied in a carrier wave or other propagation medium thereby resulting in
the claims being directed to non-statutory subject matter” (id. at 4).
Accordingly, the issue we address on this appeal is whether claim 18
and claims 19-22 depending therefrom are directed to patent eligible subject
matter under 35 U.S.C. § 101. Upon review of Appellants’ Specification,
we agree with the Examiner.
Claim 18 is directed to “a machine readable, tangible medium.”
However, as the Examiner finds, the word “tangible” does not appear
anywhere in the Specification (Ans. 3). Instead, according to Appellants’
Specification, the invention is directed to a machine or computer-readable
medium “suitable for storing or transmitting electronic instructions or
information in a form readable by a machine” (FF 1-2). That is, as the
Examiner finds (Ans. 4), the medium includes a program transferred “by
way of electrical, optical, acoustical, or other forms of data signals embodied
in a carrier wave or other propagation medium via a communication link”
(FF 3). Thus, in light of the Specification, the recited “machine [tangible]
readable medium” encompasses data signals embodied in a carrier wave or
other propagation medium via a communication link.
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As our courts have concluded, signals, however, are not patentable
subject matter falling within any statutory category under § 101. In re
Nuijten, 500 F.3d at 1357. In reaching this conclusion, the court in Nuijten
noted, among other things, that the transitory nature of signals precluded
their status as manufactures. See id. at 1356 (“In essence, energy embodying
the claimed signal is fleeting and is devoid of any semblance of permanence
during transmission. . . . All signals within the scope of the claim do not
themselves comprise some tangible article or commodity.”).
Consistent with the findings in Nuijten, we construe the “machine
[tangible] readable medium” to encompass a signal which is not subject
matter patentable under 35 U.S.C. § 101. Nuijten, 500 F.3d at 1357.
Also consistent with Nuijten, 500 F.3d at 1346, and contrary to
Appellants’ contention, we find that claim 18 is not limited to a tangible
embodiment. As the Examiner finds, the word “tangible” does not appear in
the Specification of Appellants’ invention (Ans. 3), but is merely a label set
forth for the medium. The label “tangible” does not change the functionality
of or provide any additional function to the claimed medium. Thus,
Appellants cannot properly rely upon such recitation to impart patent
eligibility to the claimed subject matter. For this reason, we conclude that
claim 18 is not directed to statutory subject matter.
For the foregoing reasons, we conclude that independent claim 18
and dependent claims 19-22 do not recite statutory subject matter under 35
U.S.C. § 101. Appellants have therefore not shown that the Examiner erred
in rejecting claims 18-22 under 35 U.S.C. § 101.

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VI. CONCLUSION
Claims 18-22 are not directed to patent eligible subject matter under
35 U.S.C. § 101.

VII. DECISION
We affirm the Examiner’s rejections of claims 18-22 under 35 U.S.C.
§ 101.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).

AFFIRMED

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MARTIN, Administrative Patent Judge, dissenting.

I respectfully disagree with the Majority’s conclusion that the term
“tangible” in claim 18 (reciting “[a] machine readable, tangible medium”)
does not exclude the intangible computer-readable media described in
Appellants’ Specification and accordingly with their conclusion that claims
18-22 embrace patent ineligible subject matter.
Although the application as filed (including the claims) does not
employ the term “tangible” or “intangible” in describing the disclosed
“computer-readable medium,” the Specification clearly describes intangible
as well as tangible embodiments of the disclosed computer-readable
medium. More particularly, the Specification as filed explains that
[t]he computer-readable medium may include, but is not limited
to, floppy diskettes, optical disks, Compact Disc, Read-Only
Memory (CD-ROMs), and magneto-optical disks, Read-Only
Memory (ROMs), Random Access Memory (RAM), Erasable
Programmable Read-Only Memory (EPROM), Electrically
Erasable Programmable Read-Only Memory (EEPROM),
magnetic or optical cards, flash memory, a transmission over
the Internet, or the like.
Specification at para. [0041]) (emphasis added). The Specification further
explains that “the computer-readable medium includes any type of
media/machine-readable medium suitable for storing or transmitting
electronic instructions or information in a form readable by a machine (e.g.,
a computer),” that “the present invention may also be downloaded as a
computer program product,” that “the program may be transferred from a
remote computer (e.g., a server) to a requesting computer (e.g., a client),”
and that “[t]he transfer of the program may be by way of electrical, optical,
acoustical, or other forms of data signals embodied in a carrier wave or
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other propagation medium via a communication link (e.g., a modem,
network connection or the like).” Id. at para. [0042] (emphasis added).
Claim 18 was amended to change “machine readable medium” to
“machine readable, tangible medium” in the June 6, 2006, “Official
Amendment & Response” in response to a rejection under 35 U.S.C. § 101
given in the December 7, 2005, nonfinal Office Action.
When claims are being examined for patentability, they are
interpreted as broadly as is reasonable and consistent with the specification.
In re Thrift, 298 F.3d 1357, 1364 (Fed. Cir. 2002). This principle applies
whether or not the disputed claim term appeared in the application as filed.
As explained in Fujikawa v. Wattanasin, 93 F.3d 1559, 1570 (Fed. Cir.
1996):
[I]psis verbis disclosure is not necessary to satisfy the written
description requirement of section 112. Instead, the disclosure
need only reasonably convey to persons skilled in the art that
the inventor had possession of the subject matter in question.
In re Edwards, 568 F.2d 1349, 1351-52, 196 USPQ 465, 467
(CCPA 1978).
Neither the Examiner nor the Majority has cited any authority for treating
“tangible” as a nonlimiting “label” rather than as an adjective that limits the
claimed machine readable “medium” to tangible media and thereby excludes
the disclosed intangible media.
Claim 18 therefore excludes intangible machine-readable media and
accordingly is not patent ineligible under In re Nuijten, 500 F.3d 1346, 1357
(Fed. Cir. 2007).
Consequently, I would reverse the § 101 rejection of claim 18 and its
dependent claims 19-22.
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