Ex Parte Chandler et al

Patent Trial and Appeal Board

Dec 22, 2015

13407727 (P.T.A.B. Dec. 22, 2015)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/407,727 02/28/2012
46320 7590 12/24/2015
CRGOLAW
STEVEN M. GREENBERG
7900 Glades Road
SUITE 520
BOCA RATON, FL 33434
FIRST NAMED INVENTOR
Allan T. Chandler
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
AU920090007US2
(015DIV)
9759
EXAMINER
KRAFT, SHIH-WEI
ART UNIT PAPER NUMBER
2194
NOTIFICATION DATE DELIVERY MODE
12/24/2015 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address( es):
docketing@crgolaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ALLAN T. CHANDLER and BRET W. DIXON
Appeal2014-000069
Application 13/407,727
Technology Center 2100
Before JOSEPH L. DIXON, JAMES R. HUGHES, and ERIC S. FRAHM,
Administrative Patent Judges.
DIXON, Administrative Patent Judge.
DECISION ON APPEAL
Appeal2014-000069
Application 13/407,727
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134 from a rejection of claims 1,
2, and 4. We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.
The invention relates "to the programmatic association of logically
associated messages in a message queue" (Spec. i-f 1 ). Claim 1, reproduced
below, is illustrative of the claimed subject matter:
1. A method for message merging in a messaging queue,
the method comprising:
receiving a request to add a new message to a message
queue in a message queue manager executing in memory by a
processor of a host computing platform;
identifying an association key assocrntmg the new
message with an existing message in the message queue;
locating an associated message in the message queue
corresponding to the identified association key; and,
merging the new message with the located associated
message in the message queue by loading a merge rule for the
new message and the located associated message, applying the
merge rule the merge rule to data in each of the new message
and the located associated message to produce merged data, and
updating the located associated message in the message queue
with the merged data while discarding the new message,
wherein the merge rule is a separately executable
computer program that has been programmed to merge data in
each of the new message and the located associated message.
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REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Atsumi
Callaway
US 2008/0155043 Al Jun. 26, 2008
US 2009/0063360 Al Mar. 5, 2009
REJECTIONS
The Examiner made the following rejections:
Claims 1, 2, and 4 stand rejected under 35 U.S.C § 101 as being
directed to non-statutory subject matter.
Claims 1, 2, and 4 stand rejected under 35 U.S.C § 112, first
paragraph, as failing to comply with the written description requirement.
Claims 1, 2, and 4 stand rejected under 35 U.S.C § 112, second
paragraph, as being indefinite.
Claims 1, 2, and 4 stand rejected under 35 U.S.C § 103(a) as being
unpatentable over Atsumi and Callaway.
Claims 1, 2, and 4 stand provisionally rejected under the non-statutory
doctrine of obviousness-type double patenting over US Application
12/630,391.
ANALYSIS
The Non-Statutory Subject Matter Rejection
The Examiner finds claim 1 is directed to non-statutory subject matter
because the claimed steps of "receiving," "identifying," "locating," and
"merging" are not tied to a particular machine and do not transform a
particular article to a different state or thing (Final Act. 1 6). Appellants
1 The Final Action dated December 31, 2012.
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Application 13/407,727
contend claim 1 is not directed an abstract idea but contains "a real world
application-message merging in a message queue by a message queue
manager executing in memory by a processor of a host computing platform"
(App. Br. 9). We agree with Appellants.
The Examiner based the non-statutory subject matter rejection on the
machine-or-transformation test (see Final Act. 6-9), which is "a useful and
important clue, an investigative tool," but is not "the sole test for deciding
whether an invention is a patent-eligible 'process."' Bilski v. Kappas, 130
S.Ct. 3218, 3227 (2008). Since the Examiner's final rejection, the Supreme
Court in Alice Corp. Pty. Ltd. v. CLS Bank Int 'l articulated a framework for
determining whether a claim is patent eligible. 134 S.Ct. 2347 (2014).
Under this framework, which we follow here, we must first determine
whether the claim is directed to a patent-ineligible law of nature, natural
phenomenon, or abstract idea. If so, we then consider the individual
elements of the claim and the claim as a whole to determine whether the
claim amounts to significantly more than the patent-ineligible concept itself.
See id. at 2355.
With respect the first step in the framework, it is self-evident that
claim 1 is not directed to a law of nature or natural phenomenon. We are
thus left to determine whether claim 1 is a patent-eligible application of an
abstract idea. The Examiner did not identify an abstract idea in claim 1.
However, even if claim 1 were reduced to a statement of an underlying
abstract idea, we find the claimed invention amounts to more than merely
instructing a practitioner to use a generic computer to perform "'well-
understood, routine, conventional activit[ies]' previously known to the
industry," under the second step of the framework. Id. at 2359. Rather, the
claimed invention solves the problem of how to efficiently process computer
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Application 13/407,727
application messages in a message queue by identifying an existing message
in a message queue associated with a new message and merging the two
messages (see Spec. i-fi-f l-7). Accordingly, the claimed invention is unlike
the claims in Alice which did not "purport to improve the functioning of the
computer itself," (134 S.Ct. at 2359), and is more like the patent-eligible
claims in DDR Holdings, LLC v. Hotels.com, where "the claimed solution
[was] necessarily rooted in computer technology in order to overcome a
problem specifically arising in the realm of computer networks." 773 F.3d
1245, 1257 (Fed. Cir. 2014).
Therefore, we find the Examiner erred in finding independent claim 1,
and dependent claims 2 and 4 for similar reasons, to be directed to non-
statutory subject matter.
The Written Description Rejection
The Examiner finds there is no support in the originally filed
application for the limitation in claim l of "wherein the merge rule is a
separately executable computer program that has been programmed to merge
the data in each of the new message and the located associated message"
(Final Act. 3-5). Appellants contend the Specification provides support for
this limitation as originally filed (App. Br. 3-5). We agree with Appellants.
The Specification provides: "As another example, the merge rule can
be an executable script or program to perform the physical merger of the
data of both messages into a single message" (Spec. i123). One of ordinary
skill in the art would have understood this passage as introducing an
embodiment where the merge rule is a distinct script or program. Thus, the
claim language "a separately executable computer program" does not recite
new subject matter. Rather, the original application "reasonably conveys to
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those skilled in the art that the inventor had possession of the claimed
subject matter as of the filing date." Ariad Pharm., Inc. v. Eli Lilly and Co.,
598 F.3d 1336, 1351 (Fed. Cir. 2010).
We thus find the Examiner erred in rejecting independent claim 1, and
dependent claims 2 and 4 for similar reasons, as failing to satisfy the written
description requirement.
The Indefiniteness Rejection
The Examiner finds the term "separately" in claim 1 renders the claim
indefinite because "'separately' is not defined by the claim, the specification
does not provide a standard for ascertaining the requisite degree, and one of
ordinary skill in the art would not be reasonably apprised of the scope of the
invention" (Final Act. 6). Appellants contend the term "separately" is not a
relative term with ambiguity (App. Br. 6).
We agree with Appellants that "separately" defines the merge rule as
a distinct computer program, without ambiguity (see App. Br. 6). Therefore,
claim 1, read in light of the specification, informs those skilled in the art
with reasonable certainty about the scope of the invention. Nautilus, Inc. v.
Biosig Instruments, Inc., 134 S.Ct. 2120, 2124 (2014).
We thus find the Examiner erred in rejecting independent claim 1, and
dependent claims 2 and 4 for similar reasons, as being indefinite.
The Obviousness Rejection
The Examiner finds the combination of Atsumi and Callaway
discloses all the limitations of claim 1, including that Callaway discloses
"updating the located associated message in the message queue with the
merged data while discarding the new message" (Final Act. 13-15).
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Appellants contend "Callaway does not teach updating the located
associated message in the message queue with the merged data while
discarding the new message. Rather, Callaway describes replacing an old
book update message with a new one. Clearly, Callaway does not discard
the new message as required by Appellants' claim language." (App. Br.
12). "In fact, Callaway describes that the new message and the updated
message may be placed in the message queue, not that the new message
is discarded, as required by Appellants' claim language" (Reply Br. 7).
We agree with Appellants.
In response to Appellants' arguments, the Examiner finds "the
aggregating process of Callaway discloses that only the updated message is
sent to the message queue (i.e., 'discarding the new message' as recited in
the claim)" (Ans. 18). However, Callaway discloses the following:
If the information is to be aggregated, the message with the old
information is removed 518 from the message queue 404 and
an updated message is created 420 utilizing information from
the new message and the old message that was in the message
queue 404. The updated message is then sent to the message
queue 404. The new message 416 and the updated message
may be placed in the message queue 404 at the location of the
old data or at the location of the newer or more recent data.
(Callaway, i-f 51) (emphasis added). The Examiner does not address this
teaching in Callaway that the new message may be placed in the message
queue, rather than discarded, contrary to the claim 1 limitation "discarding
the new message." The Examiner has not shown that Callaway teaches
discarding the new message, or that this feature would have been obvious
based on the knowledge of one of ordinary skill in the art.
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We are, therefore, constrained by the record to find the Examiner
erred in rejecting independent claim 1, and dependent claims 2 and 4 for
similar reasons, as obvious over Atsumi and Callaway.
The Provisional Double Patenting Rejection
As discussed above, we reverse all the other rejections of claims 1, 2,
and 4, leaving the provisional double patenting rejection over earlier-filed
US Application 12/630,391 as the only outstanding rejection. In such case,
where "the ODP rejection is the only rejection remaining in the later-filed
application, while the earlier-filed application is rejectable on other grounds,
a terminal disclaimer must be required in the later-filed application before
the rejection can be withdrawn." MPEP § 804.I.B.1. We thus do not reach
the merits of the provisional double patenting rejection, but leave it to the
Examiner to decide whether to withdraw the rejection in the event that a
terminal disclaimer is filed.
CONCLUSIONS
Under 35 U.S.C. § 101, the Examiner erred in rejecting claims 1, 2,
and4.
Under 35 U.S.C. § 112, first paragraph, the Examiner erred in
rejecting claims 1, 2, and 4.
Under 35 U.S.C. § 112, second paragraph, the Examiner erred in
rejecting claims 1, 2, and 4.
Under 35 U.S.C. § 103(a), the Examiner erred in rejecting claims 1, 2,
and4.
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DECISION
For the above reasons, the Examiner's decision rejecting claims 1, 2,
and 4 is reversed.
REVERSED
JRG
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