Ex Parte Anderson et al

Board of Patent Appeals and Interferences

Jan 25, 2012

10922500 (B.P.A.I. Jan. 25, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte BROOKE MADSEN ANDERSON, WILLIAM C. BUNN,
MARY KARNES, SARAH M. LIEBERMAN, and MIRA E. WILCZEK
____________

Appeal 2009-013430
Application 10/922,500
Technology Center 2400
____________

Before ERIC S. FRAHM, JEFFREY S. SMITH, and BRUCE R. WINSOR,
Administrative Patent Judges.

SMITH, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2009-013430
Application 10/922,500

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STATEMENT OF THE CASE
This is an appeal under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 1-28, which are all the claims pending in the application.
We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.

Invention
Appellants’ invention relates to a graphical representation of a
firewall and a network coupled to the firewall. A number of an inbound port
of the network is displayed. An arrow adjacent to the port number pointing
toward the network is displayed to indicate that a communication is
permitted to the port. The source IP address and destination IP address
entries are color coded to indicate security levels of respective source and
destination networks. Abstract.

Representative Claim
1. A method for reporting a data flow in a firewall, said
method comprising:

generating and displaying a graphical representation of
said firewall and a network coupled to said firewall;

displaying a number of an inbound port of said network;
and

displaying an arrow adjacent to said port number
pointing toward said network indicating that a communication
is permitted to said port.

Appeal 2009-013430
Application 10/922,500

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Prior Art
Schmidt US 5,991,807 Nov. 23, 1999
Cole US 7,257,630 B2 Aug. 14, 2007

Examiner’s Rejections
Claims 11-15, 20, and 25-28 stand rejected under 35 U.S.C. § 112,
first paragraph, for failing to satisfy the written description requirement.
Claims 11-15, 20, and 25-28 stand rejected under 35 U.S.C. § 101 as
being directed to non-statutory subject matter.
Claims 16-28 stand rejected under 35 U.S.C. § 102(e) as being
anticipated by Cole.
Claims 1-15 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Cole and Schmidt.

Claim Groupings
Based on Appellants’ arguments in the Appeal Brief, we will decide
the Appeal on the basis of claim 11 for the rejections under 35 U.S.C.
§§ 101 and 112, on the basis of claim 16 for the rejections under 35 U.S.C.
§ 102, and on the basis of claim 1 for the rejections under 35 U.S.C. § 103.

ISSUES
Did the Examiner err in finding that the “computer readable medium”
recited in claim 11 lacks written description support in the Specification as
originally filed?
Did the Examiner err in finding that the scope of claim 11
encompasses non-statutory subject matter?
Appeal 2009-013430
Application 10/922,500

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Did the Examiner err in finding that the method of claim 16 is
anticipated by Cole?
Did the Examiner err in concluding that the method of claim 1 is
taught by the combination of Cole and Schmidt?

ANALYSIS
Section 112, first paragraph rejection
The Examiner finds that the “computer readable medium” recited in
claim 11 does not have adequate written description support in the
Specification as originally filed. Ans. 3. Appellants contend that the storage
shown in Figure 2 of the Specification as originally filed provides written
description support for the “computer readable medium” recited in claim 11.
Br. 12-13. We agree with Appellants. We do not sustain the rejection of
claims 11-15, 20, and 25-28 under 35 U.S.C. § 112, first paragraph.

Section 101 rejection
The Examiner finds that the language of claim 11 does not limit the
“computer readable medium” to a tangible embodiment. Ans. 3-4. The
USPTO has offered guidance on this issue:
The United States Patent and Trademark Office (USPTO) is
obliged to give claims their broadest reasonable interpretation
consistent with the specification during proceedings before the
USPTO. See In re Zletz, 893 F.2d 319 (Fed. Cir. 1989) (during
patent examination the pending claims must be interpreted as
broadly as their terms reasonably allow). The broadest
reasonable interpretation of a claim drawn to a computer
readable medium (also called machine readable medium and
other such variations) typically covers forms of non-transitory
tangible media and transitory propagating signals per se in view
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Application 10/922,500

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of the ordinary and customary meaning of computer readable
media, particularly when the specification is silent. See MPEP
2111.01. 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. See
In re Nuijten, 500 F.3d 1346, 1356-57 (Fed. Cir. 2007)
(transitory embodiments are not directed to statutory subject
matter) and Interim Examination Instructions for Evaluating
Subject Matter Eligibility Under 35 U.S.C. § 101, Aug. 24,
2009; p. 2.

The USPTO recognizes that applicants may have claims
directed to computer readable media that cover signals per se,
which the USPTO must reject under 35 U.S.C. § 101 as
covering both non-statutory subject matter and statutory subject
matter. In an effort to assist the patent community in
overcoming a rejection or potential rejection under 35 U.S.C.
§ 101 in this situation, the USPTO suggests the following
approach. 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. Cf.
Animals - Patentability, 1077 Off. Gaz. Pat. Office 24 (April 21,
1987) (suggesting that applicants add the limitation "non-
human" to a claim covering a multi-cellular organism to avoid a
rejection under 35 U.S.C. § 101). Such an amendment would
typically not raise the issue of new matter, even when the
specification is silent because the broadest reasonable
interpretation relies on the ordinary and customary meaning that
includes signals per se. The limited situations in which such an
amendment could raise issues of new matter occur, for
example, when the specification does not support a non-
transitory embodiment because a signal per se is the only viable
embodiment such that the amended claim is impermissibly
broadened beyond the supporting disclosure. See, e.g., Gentry
Gallery, Inc. v. Berkline Corp., 134 F.3d 1473 (Fed. Cir. 1998).
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David J. Kappos, Subject Matter Eligibility of Computer Readable
Media, 1351 Off. Gaz. Pat. Office 212 (Feb. 23, 2010).
We find that the term “computer readable medium” recited in claim
11 encompasses transitory propagating signals. We sustain the rejection of
claims 11-15, 20, and 25-28 under 35 U.S.C. § 101.

Section 102 rejection
The Examiner finds that Cole describes the method of claim 16. Ans.
4-5, 39-40. Appellants contend that the color-coded vulnerability of a
computer disclosed by Cole is based on the violations of security policy,
whereas the security level of a network in claim 16 is based on the nominal
or intended level of security. Br. 21-22. The term “nominal or intended
level of security” is not recited in claim 16 and we find no basis for reading
this term into claim 16.
We agree with the Examiner. We adopt as our own (1) the findings
and reasons set forth by the Examiner in the action from which this appeal is
taken and (2) the reasons set forth by the Examiner in the Examiner’s
Answer in response to Appellant’s Appeal Brief. We concur with the
conclusions reached by the Examiner.
We also find that the color coding as recited in claim 16 provides a
description of data that does not alter any method steps or structural
limitations recited in claim 16. The color coding is non-functional
descriptive material that does not distinguish the claim from the prior art in
terms of patentability. See In re Ngai, 367 F.3d 1336, 1339 (Fed. Cir. 2004).
Cf. In re Gulack, 703 F.2d 1381, 1385 (Fed. Cir. 1983). See also Ex parte
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Nehls, 88 USPQ2d 1883, 1887-90 (BPAI 2008) (precedential) (discussing
non-functional descriptive material).
We sustain the rejection of claim 16. Because Appellant has not
presented any additional substantive arguments directed to claims 17-28, we
are not convinced of Examiner error regarding claims 17-28. See In re
Lovin, 652 F.3d 1349, 1356 (Fed. Cir. 2011) (“We conclude that the Board
has reasonably interpreted Rule 41.37 to require applicants to articulate more
substantive arguments if they wish for individual claims to be treated
separately.”). Accordingly, we sustain the Examiner’s rejection of claim 17-
28 (not argued separately). See 37 C.F.R. § 41.37(c)(1)(vii).

Section 103 rejection
Appellants contend that neither Cole nor Schmidt teaches “displaying
a number of an inbound port of said network” and “displaying an arrow
adjacent to said port number pointing toward said network indicating that a
communication is permitted to said port” as recited in claim 1. Br. 14-17.
The Examiner finds that the combination of Cole and Schmidt teaches these
limitations. Ans. 13-15, 23-26.
We agree with the Examiner. We adopt as our own (1) the findings
and reasons set forth by the Examiner in the action from which this appeal is
taken and (2) the reasons set forth by the Examiner in the Examiner’s
Answer in response to Appellant’s Appeal Brief. We concur with the
conclusions reached by the Examiner. We also find that the data that is
displayed in each of the “displaying” steps of claim 1 is non-functional
descriptive material that does not distinguish the claim from the prior art in
terms of patentability.
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Application 10/922,500

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We sustain the rejection of claim 1. Because Appellant has not
presented any additional substantive arguments directed to claims 2-15, we
are not convinced of Examiner error regarding claims 2-15. We sustain the
Examiner’s rejection of claim 2-15 (not argued separately). See 37 C.F.R.
§ 41.37(c)(1)(vii).

CONCLUSIONS
The Examiner erred in finding that the “computer readable medium”
recited in claim 11 lacks written description support in the Specification as
originally filed.
The Examiner did not err in finding that the scope of claim 11
encompasses non-statutory subject matter.
The Examiner did not err in finding that the method of claim 16 is
anticipated by Cole.
The Examiner did not err in concluding that the method of claim 1 is
taught by the combination of Cole and Schmidt.

DECISION
The rejection of claims 11-15, 20, and 25-28 under 35 U.S.C. § 112,
first paragraph, for failing to satisfy the written description requirement is
reversed.
The rejection of claims 11-15, 20, and 25-28 under 35 U.S.C. § 101 as
being directed to non-statutory subject matter is affirmed.
The rejection of claims 16-28 under 35 U.S.C. § 102(e) as being
anticipated by Cole is affirmed.
Appeal 2009-013430
Application 10/922,500

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The rejection of claims 1-15 under 35 U.S.C. § 103(a) as being
unpatentable over Cole and Schmidt 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).

AFFIRMED

ELD