Ex Parte Copeland et al

Board of Patent Appeals and Interferences

Jul 11, 2012

11555452 (B.P.A.I. Jul. 11, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte MONTE KIM COPELAND and DAVID BRUCE KUMHYR
____________________

Appeal 2010-003607
Application 11/555,452
Technology Center 2100
____________________

Before ST. JOHN COURTENAY III, THU A. DANG, and
ANDREW J. DILLON, Administrative Patent Judges.

DANG, Administrative Patent Judge.

DECISION ON APPEAL

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I. STATEMENT OF THE CASE
Appellants appeal from the Examiner’s final rejection of claims 1-20
under 35 U.S.C. § 134(a) (2007). We have jurisdiction under 35 U.S.C.
§ 6(b) (2007).
We affirm.

A. INVENTION
According to Appellants, the invention relates to accessing stored data
stored in different repositories (Spec. 1, ¶ [0001]).

B. ILLUSTRATIVE CLAIM
Claim 1 is exemplary and is reproduced below:
1. A computer implemented method for accessing information
in repositories, the computer implemented method comprising:

responsive to receiving a request from a requestor for
information about an item, determining whether different
portions of the information are respectively stored in different
repositories of a plurality of repositories;

responsive to a determination that different portions of
the information are respectively stored in different repositories
of said plurality, selecting a single connector from a plurality of
connectors, wherein each connector in the plurality of
connectors comprises an object that includes a process and data
needed to access one or more of the repositories to obtain
information from each accessed repository;

using the selected single connector to retrieve the
information portions from all of said different repositories of
said pluralities, and to form results from the retrieved
information portions; and
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returning the results to the requestor.

C. REJECTION
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Stevenson US 2003/0014483 Al Jan. 16, 2003
Kung US 2005/0060572 Al Mar. 17, 2005
Kumbalimutt US 6,871,346 Bl Mar. 22, 2005
Mateescu US 2007/0002689 A1 Jan. 04, 2007
(filed Apr. 18, 2006)

Claims 1, 2, 8, 12, 18, and 19 stand rejected under 35 U.S.C. § 102(b)
as being anticipated by the teachings of Stevenson.
Claims 3, 9-11, 13, 14, and 20 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over the teachings of Stevenson in view of Mateescu.
Claims 4-6, and 15-17 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over the teachings of Stevenson in view of Kung.
Claim 7 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over the teachings of Stevenson in view of Kumbalimutt.
Claims 12-18 stand rejected under 35 U.S.C. § 101 as being directed
to non-statutory subject matter.

II. ISSUE
Has the Examiner erred in finding that Stevenson teaches “using the
selected single connector to retrieve the information portions from all of said
different repositories” (claim 1, emphasis added)?

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III. FINDINGS OF FACT
The following Findings of Fact (FF) are shown by a preponderance of
the evidence.
Appellants’ Invention
1) Appellants state that a “computer readable medium” as claimed
“can be an electronic, magnetic, optical, electromagnetic, infrared, or
semiconductor system (or apparatus or device) or a propagation
medium” (Spec. 31-32, ¶ [0095]).
Stevenson
2) Stevenson discloses a Content Exchange System 12 comprising
one or more of each of a Repository System 16, a Content Acquisition
System 18 and a Content Distribution System 20 that may each reside
in a different Network Site 22 and communicate through a Network
28 (p. 3, ¶ [0032]).
3) Repositories 38R may be remote from Repository System 16,
wherein the associated Repository Connectors 38R includes
mechanisms for communicating with remote Repositories 38R
through Network 28 (pp. 7-8, ¶ [0060]).
4) Repository System 16 and users of the Content Exchange System
12 communicate with Repositories 38R through Repository
Connectors 38C to perform typical repository operations, such as data
retrieval and storage (p. 8, ¶ [0061]).
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IV. ANALYSIS
35 U.S.C. § 102(b)
As to independent claim 1, Appellants contend that Stevenson does
not teach “using a single connector to retrieve information from a plurality
of repositories” since Stevenson “shows only a plurality of repositories 38R
and a plurality of connectors 38C” (App. Br. 16). In particular, Appellants
contend that “each connector in a plurality of connectors comprises an object
that includes a process and data needed to access one or more of the
repositories” and that Stevenson fails to disclose “a connector that is capable
of accessing more than one repository” (App. Br. 17).
The Examiner, however, finds that Stevenson discloses “a repository
connector connecting through a network 28 (i.e., single connector) to a
plurality of repositories 16 to retrieve contents 14 that are stored in the
pluralities of repositories 16 (i.e., a single connecting accessing pluralities of
repositories)” (Ans. 22).
To determine whether Stevenson discloses “using the selected single
connector to retrieve the information portions from all of said different
repositories” as required in claim 1, we give the claims their broadest
reasonable interpretation consistent with the Specification. See In re Morris,
127 F.3d 1048, 1054 (Fed. Cir. 1997). However, we will not read
limitations from the Specification into the claims. In re Van Geuns, 988
F.2d 1181, 1184 (Fed. Cir. 1993).
Claim 1 does not define what a “connector” is to mean, comprise or
represent other than each “connector” comprises “an object that includes a
process and data needed to access one or more of the repositories” and that it
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is used “to retrieve the information portions from all of said different
repositories.” Accordingly, we give “connector” its broadest but reasonable
definition as any object that includes a process and data to access and
retrieve information from different repositories.
Stevenson discloses a network through which the various systems of a
content exchange system communicates (FF 2), wherein a plurality of
repositories communicate through associated repository connectors through
the network (FF 3) and the repository system (and its users) communicate
with the repositories through the repository connectors to perform typical
repository operations, such as data retrieval and storage (FF 4). We find
Stevenson’s single network to include process and data to access and
retrieve information to different repositories. In view of our broad claim
interpretation above, we find Stevenson to disclose a “single connector” to
retrieve the information portions from “different repositories” as recited in
claim 1. That is, we find no error in the Examiner’s finding that Stevenson
discloses “a repository connector connecting through a network 28 (i.e.,
single connector) to a plurality of repositories” (Ans. 22).
Although Appellants argue that Stevenson shows “a plurality of
connectors 38C” (App. Br. 16), Appellants appear to argue that we must
consider the plurality of connectors 38C as the claimed “connector” of claim
1, when claim 1 merely requires that the “connector” be any single object,
such as Stevenson’s Network 28, that can access and retrieve information
from a plurality of repositories. Furthermore, we note that, though
Stevenson’s plurality of connectors 38C are shown as separate connectors in
the figures, claim 1 does not preclude the claimed “connector” from being a
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single connecting system comprising of a plurality of sub-connectors. That
is, we find Stevenson’s connectors 38C to also comprise a “single
connector.”
Thus, we find that Appellants have not shown that the Examiner erred
in rejecting representative claim 1 over Stevenson. As for claims 8, 12, 18,
and 19, Appellants do not provide arguments separate from those of claim 1
(App. Br. 18). Accordingly, claims 8, 12, 18, and 19 fall with claim 1.
As for claim 2, Appellants merely repeat the claim language and
assert that “[t]his feature is neither disclosed nor suggested by Stevenson or
any other of the cited references” (id.). However, a statement which merely
points out what a claim recites will not be considered an argument for
separate patentability of the claim. See 37 C.F.R. § 41.37(c)(vii). Moreover,
mere attorney arguments and conclusory statements that are unsupported by
factual evidence are entitled to little probative value. In re Geisler, 116 F.3d
1465, 1470 (Fed. Cir. 1997); see also In re De Blauwe, 736 F.2d 699, 705
(Fed. Cir. 1984) and Ex parte Belinne, No. 2009-004693, 2009 WL 2477843
at *3-4 (BPAI Aug. 10, 2009) (informative). Appellants’ arguments fail to
comply with 37 CFR 1.111(b) because they amount to a general allegation
that claim 2 defines a patentable invention without specifically pointing out
how the language of the claims patentably distinguishes them from the
reference.
35 U.S.C. § 103(a)
As for claims 3-7, 9-11, 13-17, and 20, Appellants do not provide
arguments separate from those of claims 1, 12, and 19 from which they
respectively depend (App. Br. 19). Accordingly, we find that Appellants
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also have not shown that the Examiner erred in rejecting claims 3, 9-11, 13,
14, and 20 over Stevenson and Mateesu; and in rejecting claims 4-6, and 15-
17 over Stevenson and Kung; and in rejecting claim 7 over Stevenson and
Kumbalimutt.
35 U.S.C. § 101
As for claims 12-18, the Examiner concludes that “computer readable
medium as described in the Appellant[s’] specification does not fall into [a]
statutory category” since “[t]he medium (i.e., computer usable medium) can
be an electromagnetic, infrared or a propagation medium” (Ans. 24).
However, Appellants contend that “no basis is present for holding a
computer usable medium claim non-statutory because the medium may be
allegedly ‘intangible’” (App. Br. 20).
Claims 12-18 do not define “computer readable medium” other than
comprising various program codes. Though we look to Appellants’
Specification to find a disclosed meaning of computer readable media, as the
Examiner points out, “[t]he medium (i.e., computer usable medium) can be
an electromagnetic, infrared or a propagation medium” (Ans. 24). In
particular, Appellants’ Specification states that a “computer readable
medium” as claimed “can be … [a] system (or apparatus or device) or a
propagation medium” (FF 1 emphasis added). That is, the Specification
merely lists the examples of what the medium “can” be.
We refer Appellants to the Feb. 23, 2010 “Subject Matter
Eligibility of Computer Readable Media” policy statement by PTO Director
David J. Kappos in the Official Gazette of the USPTO (reproduced in part
below):
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The United States Patent and Trademark Office (USPTO) is
obliged to give claims their broadest reasonable
interpretationconsistent with the specification during
proceedings before the
USPTO. See In re Zletz, 893 F.2d 319 (Fed. Cir. 1989) (during
patent examination the pending claims must be interpreted as
broadly as their terms reasonably allow). The broadest
reasonable interpretation of a claim drawn to a computer
readable medium (also called machine readable medium and
other such variations) 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. See MPEP
2111.01. 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. See In re
Nuijten, 500 F.3d 1346, 1356-57 (Fed. Cir. 2007) (transitory
embodiments are not directed to statutory subject matter) and
Interim Examination Instructions for Evaluating Subject Matter
Eligibility Under 35 U.S.C. § 101, Aug. 24, 2009; p. 2.

1351 Off. Gaz. Pat. Office 212 (Feb. 23, 2010), available at
http://www.uspto.gov/web/offices/com/sol/og/2010/week08/TOC.htm#ref20
This reasoning is applicable here. In particular, Appellants’
Specification states that a “computer readable medium” as claimed “can be
… [a] system (or apparatus or device) or a propagation medium” (FF 1).
That is, the medium may be a system (or apparatus or device) or a
“propagation medium” that is not a system (or apparatus or device). Thus,
we give the term “computer readable medium” comprising a “propagation
medium” its broadest reasonable interpretation to cover transitory
propagating signals per se.
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Our reviewing court has held that “[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). Specifically, signals are “unpatentable … as failing a tangibility
requirement to be ‘manufactures’” because they are not “tangible medi[a].”
Id. at 1366 (emphasis added).
Since the broadest reasonable interpretation of claims 12-18 covers a
signal per se, we see no error in the rejection of the claims 12-18 under 35
U.S.C. § 101 as covering non-statutory subject matter.

V. CONCLUSION AND DECISION
We affirm the Examiner’s rejection of claims 1, 2, 8, 12, 18, and 19
under 35 U.S.C. § 102(b); rejection of claims 3-7, 9-11, 13-17, and 20 under
35 U.S.C. § 103(a); and rejection of claims 12-18 under 35 U.S.C. § 101.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).

AFFIRMED

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