Ex Parte CLOHESSY et al

Patent Trial and Appeal Board

Mar 22, 2016

13187601 (P.T.A.B. Mar. 22, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/187,601 07 /21/2011 KIM CLOHESSY
52023 7590 03/24/2016
Cuenot, Forsythe & Kim, LLC
20283 State Road 7
Ste. 300
Boca Raton, FL 33498
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.
RSW920010069US3
8152-0128
CONFIRMATION NO.
6550
EXAMINER
TRUONG, CAMQUY
ART UNIT PAPER NUMBER
2193
NOTIFICATION DATE DELIVERY MODE
03/24/2016 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):
ibmptomail@iplawpro.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte KIM CLOHESSY, JOHN DUIMOVICH,
TRENT GRAY-DONALD, BERTHOLD LEBERT,
RYAN SCIAMPACONE, and PETER DUNCAN SHIPTON1
Appeal2014-004224
Application 13/187, 601
Technology Center 2100
Before MICHAEL J. STRAUSS, DANIEL N. FISHMAN, and
JAMES W. DEJMEK, Administrative Patent Judges.
FISHMAN, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from a rejection of claims
26-33, 35, 37, and 39-43.2 Claims 1-25 have been canceled (App. Br. 2)
and claims 34, 36, and 38 are indicated as allowable if rewritten in
1 Appellants identify IBM Corporation as the real party in interest. App.
Br. 1.
2 In this Decision, we refer to Appellants' Appeal Brief ("App. Br.," filed
July 30, 2013); the Reply Brief ("Reply Br.," filed January 21, 2014); the
Final Office Action ("Final Act.," mailed April 29, 2013); the Examiner's
Answer ("Ans.," mailed on November 26, 2013); and the original
Specification ("Spec.," filed July 21, 2011 ).
Appeal2014-004224
Application 13/187,601
independent form (Final Act. 13). We have jurisdiction over the pending
claims under 35 U.S.C. § 6(b).
We affirm.
THE INVENTION
Appellants' invention is directed to "managing resources available to
application components in a portable device." Spec. Abstract. The
availability of sufficient runtime resources is insured for running a new
application component in the portable device. Spec. 2-7.
Independent claim 26, reproduced below, is illustrative:
26. A method, executed by a portable computing device,
compnsmg:
identifying, for a new application component scheduled
to be stored within the portable computing device, maximum
required runtime resources for the new application component;
calculating, for all of a plurality of application
components currently stored within the portable computing
device, a combined maximum required runtime resources for
the plurality of application components; and
prohibiting the new application component from being
stored within the portable computing device upon a total of the
maximum required runtime resources for the new application
component and the combined maximum required runtime
resources for the plurality of application components being
greater than a predetermined amount.
THE REJECTIONS
Claims 39--43 stand rejected under 35 U.S.C. § 101 as being directed
to non-statutory subject matter. Final Act. 2-3.
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Application 13/187,601
Claims 26-33 and 39-43 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Graham, Jr. et al. (US 6,402,028 B 1; June 11, 2002)
("Graham"), and Eilert et al. (US 5,925,102; July 20, 1999) ("Eilert"). Final
Act. 3-8.
Claim 35 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Graham, Eilert, and Robsman (US 6,477,561 Bl; Nov. 5,
2002). Final Act. 8-10.
Claim 37 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Graham, Eilert, and Koved (US 5,915,085; June 22,
1999). Final Act. 10-11.
ISSUES
Based on Appellants' arguments in the Appeal Brief (App. Br. 5-34),
the issues presented are:
1. Has the Examiner erred in concluding the computer usable storage
medium of claim 39 includes transitory signals and, therefore, subject matter
excluded from patentability under 35 U.S.C. § 101?
2. Has the Examiner erred by finding the combination of Graham and
Eilert teaches or reasonably suggests all features of claim 26 under 3 5
U.S.C. § 103(a)?
ANALYSIS
Only those arguments actually made by Appellants have been
considered in this Decision. Arguments that Appellants did not make in the
Briefs are deemed to be waived. See 37 C.F.R. § 41.37(c)(l)(iv).
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Application 13/187,601
We are not persuaded by Appellants' contentions of Examiner error.
We adopt as our own the findings and reasons set forth by the Examiner in
the action from which this appeal is taken (Final Act. 2-13) and as set forth
in the Examiner's Answer (Ans. 3-8). However, we highlight and address
specific arguments and findings for emphasis as follows.
SECTION 101 REJECTION
The Examiner rejects claims 39-43 because the broadest reasonable
interpretation of "computer usable storage medium," lacking any limiting
definition in the Specification to the contrary, "will reasonably interpret as
any type of media including signals" - i.e., non-statutory subject matter.
Final Act. 2-3. Appellants argue the Examiner erred by finding the
"computer usable storage medium" of claim 39 is directed to non-statutory
subject matter. App. Br. 5-20.
The Board has found "those of ordinary skill in the art would
understand the claim term 'machine-readable storage medium' would
include signals per se." Ex parte Mewherter, Appeal 2012-007692, 2013
WL 4477509, at *7 (PTAB May 8, 2013) (precedential). The Mewherter
panel (an expanded panel) explained, "a signal with embedded data [is a
storage medium] ... for data can be copied and held by a transitory
recording medium, albeit temporarily, for future recovery of the embedded
data." Id. at *6.
We are not persuaded by Appellants' arguments. Appellants'
Specification is silent regarding "computer usable storage medium." We
conclude nothing in the Specification or the claims precludes "computer
usable storage medium" from encompassing a transitory signal.
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Application 13/187,601
Accordingly, giving the phrase its broadest reasonable interpretation in light
of the Specification (see In re Morris, 127 F.3d 1048, 1054 (Fed. Cir.
1997) ), we construe the recited "computer usable storage medium" as
encompassing a transitory signal, which is non-statutory subject matter. We,
therefore, sustain the rejection of claim 39 and claims 40-43, which depend
therefrom, as directed to non-statutory subject matter under 35 U.S.C. § 101.
SECTION 103 REJECTIONS
Claims 26-33 and 39-43
"Runtime Resources"
In rejecting claim 1, the Examiner finds Graham teaches identifying
required "runtime resources" for a new application component scheduled to
be stored within a portable computing device, as recited in claim 26. Final
Act. 3--4, 12 (citing Graham 6:9--14, 6:24--40, 11 :46-52). Appellants
contend the Examiner erred by finding the identified memory capacity
needed to store an application on Graham's smart-card teaches or suggests
"runtime resources" as claimed. App. Br. 25-27. In particular, Appellants
argue "[ t ]he amount of memory needed to store an application is not the
same memory needed to execute (i.e., during runtime) an application." App.
Br. 26 (citing Spec. i-f 24) (footnote omitted).
We are not persuaded the Examiner erred. Initially, we note
Appellants' argument is apparently premised on a narrow construction of
"runtime" that requires the resource be used in execution of an application.
However, we find no definition in Appellants' Specification that
distinguishes "runtime" from Graham's required memory capacity to store
an application component. Appellants' Specification provides examples of
"runtime resources." Spec. 1: 12-13, 7:8-12, 8:6, 10: 1-2, 12:4--10. These
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Appeal2014-004224
Application 13/187,601
examples provide no limiting definition of "runtime" resources. "Though
understanding the claim language may be aided by the explanations
contained in the written description, it is important not to import into a claim
limitations that are not a part of the claim." SuperGuide Corp. v. DirecTV
Enters., Inc., 358 F.3d 870, 875 (Fed. Cir. 2004). At best, we find the
disputed required "runtime resources" are resources "that are used when
application components are running." Spec. 1: 13. Graham does not limit the
memory to be the amount of memory necessary to store the application.
Rather, Graham teaches an application profile that includes the resource
requirements of an application such as memory. See Graham, 6:6-9. This
memory may include the amount of memory necessary to execute the
application. Furthermore, the Examiner finds the initialization of
applications stored on a smart-card, as taught by Graham, may be interpreted
as the execution (or running) of the application. Ans. 5 (citing Graham 7:58-
64, 8:34--38, 14:58---64). The Examiner further finds such initialization uses
memory and, thus, determining whether the amount of memory on the
smart-card is adequate for the application is a determination of a runtime
resource. Id. (citing Graham 6:9-14, 6:24--40, 14:52-57). Appellants
respond arguing initialization "is not the same as executing or running the
application." Reply Br. 2 (citing two dictionary definitions). We remain
unpersuaded of Examiner error noting that the second definition provided by
Appellants ("initialization is the assignment of an initial value for a data
object or variable" (id. at 2 n.1 )) supports the Examiner's interpretation that
initialization is reasonably understood to include execution or running of a
program. Thus, under a broad but reasonable interpretation of "runtime
resources" consistent with the Specification, we find Graham's required
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Application 13/187,601
memory capacity to store a new application teaches or suggests the claimed
"runtime resources" for a new application.
"Currently Stored"
Appellants further contend the Examiner erred by finding Graham
teaches or suggests calculating required runtime resources for a plurality of
application components "currently stored" within a portable computing
device, as recited in claim 1. App. Br. 27-29; Reply Br. 3--4. In particular,
Appellants argue "the memory that is available once the applications are
stored is not necessarily (i.e., inherently) the amount of memory needed
during runtime since applications use more memory during runtime than
when they are simply being stored (or initialized)." Reply Br. 3--4 (citing
Graham 6:53-55, 21 :42-52).
We are unpersuaded of Examiner error. Graham teaches:
The memory available on the card after the applications have
been loaded is then determined (step 1210). Memory available
may refer to any type of memory on the card that is remaining
after a particular set of applications have been loaded. In one
embodiment, the EEPROM memory available on the card after
any number of applications are loaded is calculated.
Graham 21 :42-52 (emphases added). The Examiner explains, and we
agree, Graham teaches "the memory usage of all applications are
currently on the card is calculated then the available remaining
memory on the card is calculated." Ans. 6 (citing Graham 6:53-55,
21 :42-52). Thus, we find Graham calculates memory requirements
(the claimed "required runtime resources") for the plurality of
applications (the claimed "application components") "currently
stored" within a smart-card.
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Application 13/187,601
"Prohibiting ... From being Stored;;
Appellants further contend the Examiner erred by finding Graham
teaches or suggests "prohibiting the new application component from being
stored within the portable computing device," as claimed. App. Br. 30-31.
In particular, Appellants argue "Graham teaching selecting another card
profile or a new version of the card profile does not correspond to these
limitations." App. Br. 30 (citing Graham 10:44--46, 14:52-57, 17:52-54,
21:14---67); see also Reply Br. 5.
We are not persuaded the Examiner erred. The Examiner finds
Graham teaches or suggests prohibiting a new application from being stored
within a smart-card. Final Act. 4 (citing, inter alia, Graham 14:52-57,
21 :42--48); see also Ans. 6-7 (citing, inter alia, Graham 21: 14---67). We
agree. In particular, Graham discloses:
After a card profile is selected (step 518) and the conflict
determination table read, it is determined whether the memory
available on the card to be processed is adequate for the
selected applications (step 520). If the card does not have
enough memory, then another card profile or a new version of
the card profile is selected (step 518).
Graham 14:43-57. Further, Graham teaches that the "card profile ...
describes ... any applications already on place on the card." Graham 6:2---6.
Thus, Graham discloses an application will not be loaded onto the presently
selected card profile if there is insufficient memory available to load the
desired application - i.e., the application is "prohibited" from being loaded
onto the smart-card having based on the memory capacity of the presently
selected card profile. Graham further discloses updating a card profile to
add more applications and, in doing so, determining the amount of memory
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Application 13/187,601
available on the card after addition of the new applications. See Graham
21 :43-50.
The Examiner finds, and we agree, Graham teaches or suggests
"prohibiting" a new application from being stored when another card profile
or a new version of card profile is selected. Ans. 6-7. In other words, a new
application is "prohibited" from loading on one card, based on the memory
(resources) available in that card's profile, even if the application(s) can be
loaded on another card. We disagree with Appellants that the "'prohibiting'
of a card profile does not necessary [sic] prevent a particular application
from being loaded." Reply Br. 5 (citing Graham 36:28-33). The application
is prohibited from being loaded on one card (based on the available memory
on the card) and the claim does not require that the application be prohibited
from being loaded on any card/device.
No Motivation to Combine
Appellants further contend the Examiner's rationale to combine
Graham and Eilert "provides no benefits to one skilled in the art practicing
the teachings of Graham" because "Graham has nothing to do with a 'real-
time data stream."' App. Br. 31 (citing Final Act. 4 ). Therefore, Appellants
contend "the Examiner has failed to articulate a reasoning with some
rationale underpinning to support the Examiner's conclusion of
obviousness." App. Br. 31.
In response, the Examiner finds Graham teaches the application code
is "any suitable code" and may include real-time data streams (e.g., music,
games, and videos). See Ans. 7 (citing Graham 23: 15-20 (emphasis
added)).
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We are not persuaded by Appellants' argument because we find the
Examiner has set forth an articulated reasoning with some rational
underpinning to combine the references, i.e., "ensuring that a real-time
stream is guaranteed a certain amount of resources." Ans. 7; see also KSR
Int'! Co. v. Teleflex, Inc., 550 U.S. 398, 418 (2007) (citing In re Kahn, 441
F.3d 977, 978 (Fed. Cir. 2006)).
Conclusion
In view of the above discussion, we are not persuaded the Examiner
erred by finding the combination of Graham and Eilert teaches or suggests
the disputed limitations of independent claim 26, and claim 39 argued
together with claim 26 (App. Br. 25). Appellants present similar arguments
regarding independent claim 31 (App. Br. 32) and for the same reasons as
claim 26, we are not persuaded of Examiner error. Thus, we sustain the
rejection of: (a) independent claim 26; (b) the rejection of independent
claims 31 and 39 for essentially the same reasons as claim 26; and ( c) the
rejection of dependent claims 27-30, 32, 33, and 40-43, not separately
argued (App. Br. 25, 33-34).
Claim 35
Appellants do not separately argue with particularity the rejection of
claim 3 5 (dependent from claim 31) and, thus, we sustain the rejection of
claim 35. App. Br. 33.
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Claim 37
Appellants do not separately argue with particularity the rejection of
claim 3 7 (dependent from claim 31) and, thus, we sustain the rejection of
claim 37. App. Br. 33-34.
DECISION
For the above reasons, the Examiner's decision rejecting claims 26-
33, 35, 37, and 39--43 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)(l )(iv).
AFFIRMED
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