Ex Parte Bradford et al

Patent Trial and Appeal Board

Dec 13, 2013

11097679 (P.T.A.B. Dec. 13, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte LINDSAY BRADFORD, STEPHEN MILLINER, and
JULIEN J.P. VAYSSIERE
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Appeal 2011-004989
Application 11/097,679
Technology Center 2100
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Before JOSEPH F. RUGGIERO, JASON V. MORGAN, and
LARRY J. HUME, Administrative Patent Judges.

RUGGIERO, Administrative Patent Judge.

DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Final Rejection
of claims 1-18 and 20, which are all of the pending claims. Claim 19 has
been canceled. We have jurisdiction under 35 U.S.C. § 6(b).
We reverse, and enter a new ground of rejection in accordance with
37 C.F.R. § 41.50(b).
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Rather than reiterate the arguments of Appellants and the Examiner,
reference is made to the Appeal Brief (filed Mar. 31, 2010), the Answer
(mailed July 26, 2010), and the Reply Brief (filed Sep. 27, 2010).

Appellants’ Invention
Appellants’ invention relates to dynamically detecting and installing
an enhancement for a software component. The enhancement is
dynamically processed for requests directed to the component or for
responses generated by the component. See generally Abstract.

Claim 1 is illustrative of the invention and reads as follows:
1. A computer-implemented method, including:
dynamically and in real-time detecting an enhancement to a
component within a processing environment, wherein the
enhancement is executable instructions that alter the behavior of the
component and the component is also a software application that
executes within the processing environment, wherein the component
is identified as an active object;
dynamically and in real-time installing the enhancement and its
instructions within the processing environment in response to a type
of the enhancement detected; and
dynamically and in real-time processing the enhancement via its
instructions for at least one of a request for and a response from the
component, and wherein when the enhancement is processed in
response to the request, the enhancement is processed either before
the request is handled or after the request is handled by the processing
component, wherein an adapting component is responsible for
dynamically and in real-time installing and executing the component
and the enhancement, and the adapting component dynamically and in
real-time installs and references the enhancement to force the
enhancement to install and process either before the component is
processed or after the component is processed.

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The Examiner’s Rejection

The Examiner relies on the following prior art reference to show
unpatentability.
Hugh US 2003/0227487 A1 Dec. 11, 2003

Claims 1-18 and 20, all of the appealed claims, stand rejected under
35 U.S.C. § 102(b) as being anticipated by Hugh.

ANALYSIS
Appellants argue, with respect to the Examiner’s anticipation rejection
of each of the appealed independent claims 1, 8, and 15, that Hugh does not
disclose “dynamically and in real-time installing” an enhancement to a
component within a processing environment as claimed. According to
Appellants, the Examiner (Ans. 3, 4, 10, and 11) erred in relying upon the
description of the Brain software at paragraphs 467 and 468 of Hugh as
disclosing the “dynamically and in real-time installing” feature. App.Br. 10-
11; Reply Br. 2-3. Appellants further contend that the Examiner erred in
additionally relying upon Hugh’s discussion of a browser plug-in at
paragraphs 454 and 455 as disclosing the claimed feature. Id.1
We agree with Appellants, as our interpretation of the disclosure of
Hugh coincides with that of Appellants. As argued by Appellants, Hugh’s
Brain software, which “wakes up” upon detection of a code in a website that
indicates that the website can use the Brain’s functionality, is a system tray

1 Appellants have made other arguments. We do not reach these arguments
since the arguments discussed infra are dispositive of this appeal.

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application which is pre-installed in Hugh’s system, not “dynamically and in
real time” installed. App. Br. 12 (citing Hugh, ¶ [0459]). Further, to
whatever extent the detected website code in Hugh can be considered an
“enhancement,” as posited by the Examiner (Ans. 10), there is no indication
that such code is “dynamically and in real-time” installed.
We also agree with Appellants that the Examiner further erred in
relying upon Hugh’s disclosure of browser plug-ins as corresponding to the
claimed “enhancement.” As argued by Appellants, while Hugh’s plug-ins
may be dynamically called into service when needed, they are pre-installed
in the system through web download or CD-ROM installation. App. Br. 11
(citing Hugh, ¶¶ [0454]-[0455]). Further, while the Examiner suggests (Ans.
10) that Hugh’s plug-ins are dynamically installed in the HTML file of a
presented active web page, the Examiner has provided no evidence to
support such a conclusion.
Lastly, we note that the Examiner, in the responsive arguments
portion of the Answer, directs attention to paragraphs 759 and 762-764 of
Hugh, which describe real-time modification of data resources used by the
Brain software. Ans. 11. We find no indication in these cited paragraphs
that the executable instructions of Hugh’s Brain software itself are modified
with an enhancement dynamically and in real time. As argued by
Appellants, the claimed “enhancement” that is “dynamically and in real-
time” installed is defined as “executable instructions.” Reply Br. 3.
In conclusion, we find that the Examiner has not adequately explained
how the various cited portions of Hugh are interpreted to correspond to the
claimed features so as to support a rejection based on anticipation. As
argued by Appellants, the Examiner’s analysis repeatedly attempts to read
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the same specific elements of the claims on different aspects and elements of
Hugh. Reply Br. 4. Accordingly, in view of the above discussion, since all
of the claim limitations are not present in the disclosure of Hugh, we do not
sustain the Examiner’s 35 U.S.C. § 102(b) rejection of independent claims 1,
8, and 15, nor the rejection of claims 2-7, 9-14, 16-18, and 20 dependent
thereon.

CONCLUSION
Based on the analysis above, we conclude that the Examiner erred in
rejecting claims 1-18 and 20 for anticipation under 35 U.S.C. § 102(b).

NEW GROUND OF REJECTION
We reject claims 15-18 and 20 under 35 U.S.C. § 101 as being
directed to non-statutory subject matter.
Independent claim 15 recites “[a] computer-readable storage medium
encoded with instructions thereon, the instructions when processed by a
machine perform the method of . . . .” (emphasis added). Appellants’
disclosure provides no examples of a computer readable medium but
indicates that the computer-readable medium is accessible “over a network”
and the network “may be wired, wireless, or a combination of wired and
wireless.” Spec. ¶ [0014].
The broadest reasonable interpretation of the “computer-readable
storage medium” language of claims 15-18 and 20, when read in light of
Appellants’ Specification, is inclusive of transitory propagating signals. See
Ex parte Mewherter, 107 USPQ2d 1857, 1862 (PTAB 2013) (precedential).
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“A transitory, propagating signal [however] . . . 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.” In re Nuijten, 500
F.3d 1346, 1357 (Fed. Cir. 2007).
We direct Appellants’ attention to 1351 Off. Gaz. Pat. Office 212
(Feb. 23, 2010); Subject Matter Eligibility of Computer Readable Media.
We also conclude that independent claim 8 (and dependent claims 9-11, 13,
and 14) can be rendered statutory under 35 U.S.C. § 101 by following the
guidance provided in this OG Notice.

DECISION
The rejection of claims 1-18 and 20 under 35 U.S.C. § 102(b) is
reversed.
In the new ground of rejection, we have rejected claims 15-18 and 20
under 35 U.S.C. § 101.
This decision contains a new ground of rejection pursuant to
37 C.F.R. § 41.50(b). 37 C.F.R. § 41.50(b) provides that “[a] new ground of
rejection pursuant to this paragraph shall not be considered final for judicial
review.”
37 C.F.R. § 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
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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 . . . .

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 41.50(f).

REVERSED
37 C.F.R. § 41.50(b)

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