Ex Parte Chen et al

Board of Patent Appeals and Interferences

Apr 26, 2010

10612542 (B.P.A.I. Apr. 26, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte YEN-KUANG CHEN, WILLIAM W. MACY JR.,
MATTHEW HOLLIMAN, ERIC L. DEBES,
and MINERVA M. YOUNG
____________________

Appeal 2009-004091
Application 10/612,5421
Technology Center 2100
____________________

Decided: April 27, 2010
____________________

Before LEE E. BARRETT, ST. JOHN COURTENAY III, and
JAMES R. HUGHES, Administrative Patent Judges.

HUGHES, Administrative Patent Judge.

DECISION ON APPEAL

1 Application filed July 1, 2003. The real party in interest is Intel Corp. (Br.
3.)
Appeal 2009-004091
Application 10/612,542

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STATEMENT OF THE CASE
The Appellants appeal the Examiner’s rejection of claims 24-29 under
authority of 35 U.S.C. § 134(a). The Board of Patent Appeals and
Interferences (BPAI) has jurisdiction under 35 U.S.C. § 6(b).
We reverse.

Appellants’ Invention
Appellants invented a method for bitstream buffer manipulation
utilizing an SIMD (single instruction multiple data) merge instruction, the
method embodied in a machine-readable medium. (Spec. ¶¶ [0004], [0025],
[0029].)2

Representative Claim
Independent claim 24 further illustrates the invention. It reads as
follows:
24. An article comprising a tangible machine readable
medium that stores a program, said program being executable
by a machine to perform a method comprising:
determining whether any unprocessed data bits for a
partial variable length symbol exist in a first data block; and
performing a shift merge operation responsive to a shift
merge instruction specifying the first data block, a second data
block and a shift count, the shift merge operation to merge said
unprocessed data bits from said first data block with said
second data block, wherein a merged data block is formed.

2 We refer to Appellants’ Specification (“Spec.”) and Appeal Brief (“Br.”)
filed September 11, 2007. We also refer to the Examiner’s Answer (“Ans.”)
mailed October 12, 2007.
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Rejection on Appeal
The Examiner rejects claims 24-29 under 35 U.S.C. § 101 as being
directed to non-statutory subject matter.3

ISSUE
Based on Appellants’ contentions, as well as the findings and
conclusions of the Examiner, the pivotal issue before us is as follows.
Does the Examiner err in rejecting claims 24-29 under 35 U.S.C.
§ 101? The issue turns on whether the claimed subject matter is statutory
subject matter.

3 We note some confusion as to the actual rejection(s) on appeal. The
Examiner initially rejected claims 1-39 under 35 U.S.C. § 102(e), claims 1-
29 under 35 U.S.C. § 101, and claims 6-8, 10, 12-14, 22, 23, 28, and 36-39
under 35 U.S.C. § 112 (second paragraph). (Office Action mailed August
16, 2006 at pages 2-4.) The Examiner renewed the rejection of claims 1-29
under 35 U.S.C. § 101, but did not renew or withdraw the other rejections
(under 35 U.S.C. §§ 102(e) and 112) in the Final Rejection. (Office Action
mailed March 26, 2007 (“Final Rejection”) at page 2.) Appellants assert that
they appeal claims 1-29 that stand rejected under 35 U.S.C. § 101, and that
claims 30-39 are allowed. (Br. 3.) The Examiner agrees with Appellants’
asserted grounds of rejection for review, withdraws the rejection of claims 1-
23 under 35 U.S.C. § 101, and states that claims 1-23 and 30-39 are allowed.
(Ans. 2.) Thus, it appears the Appellants and Examiner agree that claims
24-29 are rejected under 35 U.S.C. § 101, and that claims 1-23 and 30-39 are
in condition for allowance. Accordingly, we treat claims 24-29 as the claims
under review, and treat the Examiner’s failure to properly notice the
withdrawn rejections and allowable claims as harmless error.
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Application 10/612,542

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FINDINGS OF FACT (FF)
Appellants’ Specification
1. Appellants’ Specification defines a machine-readable
(computer-readable) medium:
[A] machine-readable medium may include any mechanism for
storing or transmitting information in a form readable by a
machine (e.g., a computer), but is not limited to, . . . a
transmission over the Internet, electrical, optical, acoustical or
other forms of propagated signals (e.g., carrier waves, infrared
signals, digital signals, etc.) or the like. Accordingly, 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). Moreover, the
present invention may also be downloaded as a computer
program product. As such, the program may be transferred
from a remote computer (e.g., a server) to a requesting
computer (e.g., a client). The transfer of the 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 (e.g., a modem, network
connection or the like).

(Spec. ¶ [0029].)

PRINCIPLES OF LAW
Burden on Appeal
The allocation of burden requires that the United States Patent and
Trademark Office (USPTO) produce the factual basis for any rejection in
order to provide an applicant with notice of the reasons why the applicant is
not entitled to a patent on the claim scope sought. In re Oetiker, 977 F.2d
1443, 1445 (Fed. Cir. 1992); In re Piasecki, 745 F.2d 1468, 1472 (Fed. Cir.
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1984); Ex Parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (Precedential).
An appellant has the opportunity on appeal to the Board to demonstrate error
in the Examiner’s position. See In re Kahn, 441 F.3d 977, 985-86 (Fed. Cir.
2006) (“On appeal to the Board, an applicant can overcome a rejection by
showing insufficient evidence of prima facie obviousness or by rebutting the
prima facie case with evidence of secondary indicia of nonobviousness.”)
(quoting In re Rouffet, 149 F.3d 1350, 1355 (Fed. Cir. 1998), overruled in
part on other grounds, KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 422
(2007)); Ex Parte Frye, 94 USPQ2d at 1075.

Statutory Subject Matter
Our reviewing court has recently held that transitory, propagating
signals, such as carrier waves, are not within any of the four statutory
categories (process, machine, manufacture or composition of matter).
Therefore, a claim directed to computer instructions embodied in a signal is
not statutory under 35 U.S.C. § 101. In re Nuijten, 500 F.3d 1346, 1357
(Fed. Cir. 2007).

ANALYSIS
Appellants contend that independent claim 24 and dependent claims
25-29 are directed to statutory subject matter (Br. 7-11); and specifically,
that the claims constitute “statutory . . . articles and apparatus” that are “new
and useful” (Br. 9). The Examiner finds that Appellants’ claims 24-29 recite
a “machine readable medium,” defined in Appellants’ Specification (at
paragraphs [0028]-[0030]), as “including a transmission medium which may
be a carrier wave.” (Ans. 3.) The Examiner also finds that the term
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“tangible” is not defined by Appellants’ Specification, and means “capable
of being perceived especially by the sense of touch.” (Ans. 3.) Thus, the
Examiner finds that a “carrier wave is clearly capable of being perceived,”
and that Appellants’ claims “read on a transmission medium which may be
carrier waves,” and “fail[] to fall within any of the statutory categories.”
(Ans. 3, 4; see Final Rejection 2.) Accordingly, we decide the question of
whether the claimed subject matter is statutory.
Appellants’ independent claim 24 (and dependent claims 25-29)
recites a “tangible machine readable medium that stores a program.” We
agree with the Appellants that their tangible machine readable medium, as
disclosed by their Specification, does not include non-statutory subject
matter – i.e., signals. Appellants’ Specification distinguishes between
storing and transmitting or transferring the program information. (FF 1.)
Although Appellants’ Specification describes machine readable media as
including “propagated signals (e.g., carrier waves, infrared signals, digital
signals, etc.) or the like” (FF 1); Appellants claim a “tangible machine
readable medium that stores a program.” We do not view a signal as a
tangible medium capable of storing (as opposed to transmitting) a program.
Thus, we find that Appellants’ claimed tangible machine readable media
does not implicate a non-statutory carrier wave or a signal modulated by a
carrier over a transmission medium. See In re Nuijten, 500 F.3d at 1357;
Subject Matter Eligibility of Computer Readable Media, 1351 Off. Gaz. Pat.
Office 212 (Feb. 23, 2010). Appellants’ claims 24-29 do not encompass the
use of a transitory, propagating computer data signal embodied in a carrier
wave to transfer information. It follows that claims 24-29 are directed to
statutory subject matter. Accordingly, Appellants have persuaded us to find
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error in the Examiner’s 35 U.S.C. § 101 rejection of Appellants’ claims 24-
29, and we reverse the Examiner’s § 101 rejection of these claims.

CONCLUSION OF LAW
On the record before us, we find the Examiner erred in rejecting
claims 24-29 under 35 U.S.C. § 101 as being directed to non-statutory
subject matter.

DECISION
We reverse the Examiner’s rejection of claims 24-29 under
35 U.S.C. § 101.

REVERSED

rwk

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