Ex Parte Chen et al

Patent Trial and Appeal Board

Sep 19, 2013

11398191 (P.T.A.B. Sep. 19, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte CHIAHONG CHEN and RADHA K. RAMACHANDRAN
1

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Appeal 2011-003149
Application 11/398,191
Technology Center 2100
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Before CARLA M. KRIVAK, JASON V. MORGAN, and
LARRY J. HUME, Administrative Patent Judges.

HUME, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a) of the Final
Rejection of claims 1-20. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1
The Real Party in Interest is International Business Machines Corporation.
App. Br. 2.
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2
STATEMENT OF THE CASE
2

The Invention
Appellants’ invention generally relates to computer programming and,
more particularly, to a method, system, and program storage device for
providing request trace data in a user mode device interface. Spec. 1:8-10
(“Field of the Invention”).
Exemplary Claims
Claims 1 and 15 are exemplary claims representing aspects of the
invention which we reproduce below (emphasis added to disputed
limitations):
1. A memory device storing a user mode device
interface located on a user mode side of a computing device
between a main user application located on the user mode side
and a client application located on the user mode side, the
memory device comprising:
a first memory on the user mode side, the first memory
storing a trace utility for generating a device open packet
including request trace data therein;
a second memory on the user mode side, the second
memory storing a trace facility within the main user
application; and
a third memory on the user mode side, the third memory
storing the client application, wherein the trace facility
UTILITY is configured to forward the device open packet to

2
Our decision refers to Appellants’ Appeal Brief (“App. Br.,” filed
Aug. 27, 2010); Reply Brief (“Reply Br.,” filed Nov. 29, 2010); Examiner’s
Answer (“Ans.,” mailed Oct. 1, 2010); Final Office Action (“FOA,” mailed
Apr. 14, 2010); and the original Specification (“Spec.,” filed Apr. 5, 2006).
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the second memory in response to receipt of a device interface
request from the third memory.

15. A physical computer-readable medium for a
computing device including a user mode side and a kernel
mode side, comprising:
program instructions executable by a processing device
to perform operations for providing a user mode device
interface for providing request trace data on the user mode side,
the operations comprising:
generating a device open packet including request
trace data therein in response to receipt of a device interface
request from a client application on the user mode side; and
forwarding the device open packet including
request trace data therein to a main user application trace
facility on the user mode side.
Prior Art
The Examiner does not rely upon any prior art in rejecting the claims
on appeal.
3

Rejections on Appeal
1. Claims 15-20 stand rejected under 35 U.S.C. § 101 as being
directed to non-statutory subject matter. Ans. 5.

3
In the Advisory Action mailed Jul. 15, 2010, the Examiner withdrew the
prior art rejection of claims 1, 6-8, and 13-15 under 35 U.S.C. § 102(b) as
being anticipated by Cantrill, as originally set forth in the Final Rejection.
Advisory Action 2.
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2. Claims 1-20 stand rejected under 35 U.S.C. § 112, first
paragraph, as failing to comply with the written description requirement.
Ans. 6.
4

ISSUES AND ANALYSIS
We have reviewed the Examiner’s rejections in light of Appellants’
arguments that the Examiner has erred. We disagree with Appellant’s
conclusions with respect to claims 1-20, and 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 and rebuttals set forth by the Examiner in
the Examiner’s Answer in response to Appellant’s Arguments. However,
we highlight and address specific findings and arguments regarding claims 1
and 15 for emphasis as follows.

4
We point out that ordinarily an objection to an amendment to the
Specification for containing new matter , such as that set forth by the
Examiner in this case, is reviewable by petition under 37 C.F.R. § 1.181,
whereas a rejection is appealable. However, when the issue of new matter
presented is the subject of both an objection and a rejection, the issue is
appealable. Manual of Patent Examining Procedure (MPEP) § 2163.06.II
Review of New Matter Objections and/or Rejections. See also MPEP
§ 608.04(c) (“where the alleged new matter is introduced into or affects the
claims, thus necessitating their rejection on this ground, the question
becomes an applicable one, and should not be considered on petition even
though that new matter has been introduced into the specification also.”).
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1. Non-Statutory Subject Matter Rejection of Claims 15-20
Issue 1
Appellants argue (App. Br. 10-11; Reply Br. 2) the Examiner’s non-
statutory subject matter rejection of claim 15 under 35 U.S.C. § 101 is in
error. These contentions present us with the following issue:
Did the Examiner err in finding the recitation in claim 15 of a
“physical computer-readable medium” can reasonably be construed to
encompass transitory propagating signals and, as such, claim 15 is drawn to
non-statutory subject matter?
Analysis
Appellants contend “Appellants’ specification recites that: ‘examples
of a computer-readable medium’ include a semiconductor or solid-state
memory, magnetic tape, a removable computer diskette, a random access
memory (RAM), a read-only memory (ROM), a rigid magnetic disk and an
optical disk,’ each of which is a ‘physical’ computer-readable medium.”
App. Br. 10 (citing Spec 14:12-15).
However, Appellants fail to acknowledge the immediately preceding
sentence of their Specification, which states:
For the purposes of this description, a computer-usable or
computer readable medium 868 can be any apparatus that can
contain, store, communicate, propagate, or transport the
program for use by or in connection with the instruction
execution system, apparatus, or device. The medium 868 may
be an electronic, magnetic, optical, electromagnetic, infrared, or
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semiconductor system (or apparatus or device) or a
propagation medium.
Spec. 14:7-12 (emphasis added). Therefore, Appellants’ disclosed computer
readable medium does not exclude embodiments directed to propagating
signals.
We therefore agree with the Examiner’s findings and conclusions that
claim 15 is drawn to non-statutory subject matter. Ans. 9-10. We agree
because signals are unpatentable under § 101. In re Nuijten, 500 F.3d 1346,
1355 (Fed. Cir. 2007). According to U.S. Patent & Trademark Office
(USPTO) guidelines:
The broadest reasonable interpretation of a claim drawn to a
computer readable medium . . . typically covers forms of non-
transitory tangible media and transitory propagating signals per
se in view of the ordinary and customary meaning of computer
readable media, particularly when the specification is silent.
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.
David J. Kappos, Subject Matter Eligibility of Computer Readable Media,
1351 Off. Gaz. Pat. Office 212 (Feb. 23, 2010) (“OG Notice”) (citation
omitted), available at
http://www.uspto.gov/web/offices/com/sol/og/2010/week08/TOC.htm#ref20
Accordingly, Appellants have not provided sufficient evidence or
argument to persuade us of any reversible error in the Examiner’s claim
construction. Therefore, we sustain the Examiner’s non-statutory subject
matter rejection of independent claim 15. As Appellants have not provided
separate arguments with respect to dependent claims 16-20, which inherit
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the same defect as claim 15, we similarly sustain the Examiner’s rejection of
these claims under 35 U.S.C. § 101.
2. Written Description Rejection of Claims 1-20
Issue 2
Appellants argue (App. Br. 11; Reply Br. 3) the Examiner’s written
description rejection of claims 1-20 under 35 U.S.C. § 112, first paragraph,
is in error. These contentions present us with the following issue:
Did the Examiner err in finding the disputed limitations of claim 1,
i.e., “a main user application located on the user mode side” (in the
preamble), “a first memory on the user mode side,” “a second memory on
the user mode side,” and “a third memory on the user mode side,” all lack
support in the originally-filed Specification?
Analysis
“'‘[T]o fulfill the written description requirement, the patent
specification must describe an invention in sufficient detail that one skilled
in the art can clearly conclude that the inventor invented what is claimed.’”
Kao Corp. v. Unilever U.S., Inc., 441 F.3d 963, 967–968 (Fed. Cir. 2006)
(quoting Cordis Corp. v. Medtronic AVE, Inc., 339 F.3d 1352, 1364 (Fed.
Cir. 2003)).
Put another way, “the applicant must . . . convey with reasonable
clarity to those skilled in the art that, as of the filing date sought, he or she
was in possession of the invention.” Vas-Cath, Inc. v. Mahurkar, 935 F.2d
1555, 1563-64 (Fed. Cir. 1991). Further, “compliance with the written
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description requirement is a question of fact.” Hyatt v. Boone, 146 F.3d
1348, 1352 (Fed. Cir. 1998) (citing Vas-Cath, Inc. v. Mahurkar, 935 F.2d
1555, 1563 (Fed. Cir. 1991)).
Appellants admit that the original disclosure in the Specification of “a
main user application 420 running on the server side 470 in privilege mode”
was a mistake. Reply Br. 3 (citing Spec. 10:9-10), and see App. Br. 11.
However, Appellants contend a person skilled in the art would recognize the
admittedly incorrect original disclosure cited above “would be immediately
recognized by the skilled artisan as a mistake because the naming
convention in this art would dictate the recitation of, ‘a main user application
420 running on the server side 470 in user mode.’” Reply Br. 3 (emphasis
in original).
Appellants conclude by contending, since they “recognized the
obvious mistake and properly corrected the mistake using the proper terms
in accordance with the naming convention in this art and in accordance with
MPEP § 2163,” the amendment to the Specification does not add new matter
such that the Specification complies with the written description requirement
of 35 U.S.C. § 112, first paragraph. Id.
Lacking any corroborating evidence in the record before us
concerning the purported knowledge of a person of ordinary skill in the art at
the time of the invention with respect to naming conventions in the art, or
the alleged recognition by a person of ordinary skill in the art of Appellants’
admitted drafting mistake, we are not persuaded by Appellants’ arguments.
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We remain unpersuaded by Appellants’ contentions regarding both
the objection to the amendment to the Specification and the written
description rejection of the claims on appeal because attorney argument is
not evidence. Appellants’ assertions amount to unsupported attorney
argument, and therefore we give them little weight. See In re Geisler, 116
F.3d 1465, 1470 (Fed. Cir. 1997); see also In re Huang, 100 F.3d 135, 139-
140 (Fed. Cir. 1996). Therefore, we do not find error in the Examiner’s
conclusion that the limitations in dispute lack support in the originally-filed
Specification, and that the amendment to the Specification contained new
matter.
Additionally we find Appellants did not provide any arguments
regarding the first, second, and third memories recited in claim 1.
Accordingly, Appellants have not provided sufficient evidence or
argument to persuade us of any reversible error in the Examiner’s
characterization of the original disclosure and related claim construction.
Therefore, we sustain the Examiner’s written description rejection of
independent claim 1. As Appellants have not provided separate arguments
with respect to independent claims 8 and 15, or dependent claims 2-7, 9-14,
and 16-20, rejected on the same basis as claim 1, we similarly sustain the
Examiner’s rejection of these claims under 35 U.S.C. § 112, first paragraph.
CONCLUSIONS
(1) The Examiner did not err with respect to the non-statutory
subject matter rejection of claims 15-20 under 35 U.S.C. § 101, and the
rejection is sustained.
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(2) The Examiner did not err with respect to the written description
rejection of claims 1-20 under 35 U.S.C. § 112, first paragraph, and the
rejection is sustained.
DECISION
The decision of the Examiner to reject claims 1-20 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) (2011).
AFFIRMED

ELD