Ex Parte Cumpson et al

Board of Patent Appeals and Interferences

Sep 27, 2010

10513940 (B.P.A.I. Sep. 27, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
10/513,940 11/09/2004 Stephen Rodney Cumpson NL 020361 2025
24737 7590 09/27/2010
PHILIPS INTELLECTUAL PROPERTY & STANDARDS
P.O. BOX 3001
BRIARCLIFF MANOR, NY 10510
EXAMINER
HAFIZ, TARIQ R
ART UNIT PAPER NUMBER
2182
MAIL DATE DELIVERY MODE
09/27/2010 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte STEPHEN RODNEY CUMPSON
and OZCAN MESUT
____________

Appeal 2009-005308
Application 10/513,940
Technology Center 2100
____________

Before JOSEPH L. DIXON, JAY P. LUCAS, and ST. JOHN
COURTENAY III, Administrative Patent Judges.

DIXON, Administrative Patent Judge.

DECISION ON APPEAL1

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.

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Application 10/513,940

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The Appellants appeal under 35 U.S.C. § 134(a) from the Final
Rejection of claims 1-20. Claim 21 has been canceled. We have jurisdiction
under 35 U.S.C. § 6(b).
We Affirm.

I. STATEMENT OF THE CASE
The Invention
The invention at issue on appeal relates to a method and system for
processing data streams (Spec. 1).

The Illustrative Claim
Claim 1, an illustrative claim, reads as follows:
1. Method of processing data of at least one data stream, the
method comprising the steps of:
indicating a type of data stream with regard to requirements of
real- time data processing,
providing and/or handling a set of stream IDs comprising a
number of logical stream IDs,
wherein a logical stream ID is assignable to a physical stream
ID and wherein the number of logical stream IDs exceeds a
number of physical stream IDs,
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issuing a logical stream ID to the data stream dependent on the
type of data stream.

The References
The Examiner relies on the following references as evidence:
Ruberg US 6,466,982 B1 Oct. 15, 2002
Thodiyil US 6,956,818 B1 Oct. 18, 2005
Applicant’s Admitted Prior Art (Spec. 1) (hereinafter “AAPA”)

The Rejections
The following rejections are before us for review:
Claim 19 stand rejected under 35 U.S.C. § 101 as being directed
to non-statutory subject matter.
Claims 1-4, 6-16, and 19-20 stand rejected under 35 U.S.C. § 102(e)
as being as being anticipated by Thodiyil.
Claim 5 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Thodiyil and Ruberg.
Claims 17-18 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Thodiyil and AAPA.
Only those arguments actually made by the Appellants have been
considered in this decision. Arguments which the Appellants could have
made but chose not to make in the Briefs have not been considered and are
deemed to be waived. See 37 C.F.R. § 41.37 (c)(1)(vii) (2008).
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II. ISSUES
Has the Examiner erred in finding that a computer program product
recited in claim 19 is non-statutory subject matter under 35 U.S.C. § 1012?
Has the Examiner erred in finding that Thodiyil discloses “issuing a
logical stream ID to the data stream dependent on the type of data stream”,
as recited in claim 1?

III. PRINCIPLES OF LAW
Scope of Claim
During prosecution before the USPTO, claims are to be given their
broadest reasonable interpretation, and the scope of a claim cannot be
narrowed by reading disclosed limitations into the claim. See In re Morris,
127 F.3d 1048, 1054 (Fed. Cir. 1997). The Office must apply the broadest
reasonable meaning to the claim language, taking into account any
definitions presented in the specification. In re Am. Acad. of Sci. Tech Ctr.,
367 F.3d 1359, 1364 (Fed. Cir. 2004) (citing In re Bass, 314 F.3d 575, 577
(Fed. Cir. 2002)).
“Giving claims their broadest reasonable construction ‘serves the
public interest by reducing the possibility that claims, finally allowed, will
be given broader scope than is justified.’” Id. (quoting In re Yamamoto, 740
F.2d 1569, 1571 (Fed. Cir. 1984)). “Construing claims broadly during

2 The rejection of claims 11-18, and 20 under 35 U.S.C. § 101 has been
expressly withdrawn by the Examiner (Ans. 4).
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prosecution is not unfair to the applicant . . . because the applicant has the
opportunity to amend the claims to obtain more precise claim coverage.” Id.
“The PTO's construction here, though certainly broad, is unreasonably
broad. The broadest construction rubric coupled with the term “comprising”
does not give the PTO an unfettered license to interpret claims to embrace
anything remotely related to the claimed invention. Rather, claims should
always be read in light of the specification and teachings in the underlying
patent. See Schriber-Schroth Co. v. Cleveland Trust Co., 311 U.S. 211, 217,
61 S.Ct. 235, 85 L.Ed. 132 (1940).” (In re Suitco Surface, Inc., No. 2009-
1418, 2010 WL 1462294, at *4 (Fed. Cir. 2010).)

35 U.S.C. § 101
Whoever invents or discovers any new and useful process,
machine, manufacture, or composition of matter, or any new
and useful improvement thereof, may obtain a patent therefor,
subject to the conditions and requirements of this title.

35 U.S.C. § 101.

Anticipation
"[A]nticipation of a claim under § 102 can be found only if the prior
art reference discloses every element of the claim . . . ." In re King, 801
F.2d 1324, 1326 (Fed. Cir. 1986) (citing Lindemann Maschinenfabrik
GMBH v. American Hoist & Derrick Co., 730 F.2d 1452, 1457 (Fed. Cir.
1984)). "[A]bsence from the reference of any claimed element negates
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anticipation." Kloster Speedsteel AB v. Crucible, Inc., 793 F.2d 1565, 1571
(Fed. Cir. 1986).
Analysis of whether a claim is patentable over the prior art under 35
U.S.C. § 102 begins with a determination of the scope of the claim. We
determine the scope of the claims in patent applications not solely on the
basis of the claim language, but upon giving claims their broadest reasonable
construction in light of the Specification as it would be interpreted by one of
ordinary skill in the art. In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d at 1364.
The properly interpreted claim must then be compared with the prior art.

Obviousness
“Obviousness is a question of law based on underlying findings of
fact.” In re Kubin, 561 F.3d 1351, 1355 (Fed. Cir. 2009). The underlying
factual inquiries are: (1) the scope and content of the prior art, (2) the
differences between the prior art and the claims at issue, (3) the level of
ordinary skill in the pertinent art, and (4) secondary considerations of
nonobviousness. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007)
(citation omitted).
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IV. FINDINGS OF FACT
The following findings of fact (FFs) are supported by a preponderance
of the evidence.
Thodiyil
1. Thodiyil discloses “each descriptor identifies a packet or a
portion of a packet stored in host memory. When a descriptor is received at
the apparatus, it is placed into a cache corresponding to the priority assigned
to the associated packet.” (col. 2 ll. 43-47, emphases added).

V. ANALYSIS
The Appellants have the opportunity on appeal to the Board of Patent
Appeals and Interferences (BPAI) to demonstrate error in the Examiner’s
position. See In re Kahn, 441 F.3d 977, 985-86 (Fed. Cir. 2006) (citing In re
Rouffet, 149 F.3d 1350, 1355 (Fed. Cir. 1998)).
The Examiner sets forth a detailed explanation of a reasoned
conclusion of unpatentability in the Examiner’s Answer. Therefore, we look
to the Appellants’ Brief to show error in the proffered reasoned conclusion.
Id.

Grouping of Claims

The Appellants have elected to argue claims 1-4, 6-16, and 19-20
together as a group (App. Br. 9). Therefore, we select independent claim 1
as the representative claim for this group, and we will address the
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Appellants’ arguments with respect thereto. 37 C.F.R. § 41.37 (c)(1)(vii).
See In re Nielson, 816 F.2d 1567, 1572 (Fed. Cir. 1987).
35 U.S.C. § 101 Rejection
With respect to claim 19, the Appellants contend that claim 19 claims
statutory subject matter because the claimed computer program product is
specifically claimed to cause a computer system to execute the acts of claim
1, which is a new and useful function (App. Br. 6).
We disagree with the Appellants’ contention. Claim 19 recites
“[c]omputer program product storable on a medium readable out by a
computer system, comprising a software code section which includes the
computer system to execute the method as claimed in claim 1, when the
product is executed on the computer system” (Emphases added). While
claim 19 appears nominally directed to a "manufacture" under § 101 (as a
computer program product), we agree with the Examiner that the express
language of the claim does not preclude a reading of the recited “computer
program product” on a disembodied computer program per se (which could
be transmitted as a wireless signal), coupled with a statement regarding
“storable on a medium readable out” (Preamble, claim 19). We particularly
note that no storage element is positively recited in the body of claim 19 to
support the preamble. Cf. Eaton Corp. v. Rockwell Int'l Corp., 323 F.3d
1332, 1339 (Fed. Cir. 2003) (When the limitations in the body of the claim
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“rely upon and derive antecedent basis from the preamble, then the preamble
may act as a necessary component of the claimed invention.”).
Thus, we conclude the argued limitation “storable on a medium
readable out” is a statement that does not limit the recited “computer
program product” to actually being stored on a computer readable medium,
nor does it affect the scope of the body of the claim which appears directed
to steps of conducting the program. Therefore, we conclude that claim 19,
although claiming “a computer program product,” broadly encompasses a
computer program per se or a disembodied piece of software.
Software in itself, with no structural tie to an article of manufacture,
machine, process or composition of matter, is not patentable subject matter.
(See In re Nuijten, 500 F.3d at 1357 (A claim directed to computer
instructions embodied in a signal is not statutory under 35 U.S.C. § 101).
Software (a computer program) alone does not belong to one of those
categories). “Abstract software code is an idea without physical
embodiment.” Microsoft Corp. v. AT&T Corp., 550 U.S. 437, 449 (2007).
This reasoning is applicable here. Therefore, we agree with the
Examiner’s interpretation of claim 19 as encompassing a computer program
per se that is non-statutory under § 101.
Accordingly, we sustain the Examiner’s rejection of claim 19 under
35 U.S.C. § 101.

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35 U.S.C. § 102 Rejection

With respect to claim 1, the Appellants contend that Thodiyil fails to
teach the disputed limitations because Thodiyil’s applications are the source
to create data streams. It is illogical to issue an application to the data stream
which depends on the type of the data stream that the application created
(App. Br. 8). The Appellants further contend that claim 1 is allowable
because “Thodiyil’s descriptor, per se, is not a ‘stream ID’. . . The descriptor
may include an element that can be used to identify the data stream, which
would conform to the conventional definition of a stream ID, but the multi-
element descriptor itself does not conform the conventional definition of a
stream ID.” (Reply Br. 3)
We disagree with the Appellants’ contentions. We start our analysis
with claim construction. We broadly yet reasonably construe the claim
limitation “identifier or ID” as any symbol that identifies, indicates, or
names a body of data3 because there is no limitation such as single element
symbol in the claim language to prevent us from reading the language
broadly. Thodiyil teaches that each descriptor identifies a data packet
(data stream) based on the priority (type) assigned to the data packet (FF 1).
As such, we find that under our claim construction the disputed claim
limitation reads on the teachings of Thodiyil.

3 See WEBSTER’S II New Riverside University Dictionary (1984 ed.), at
607 (“identifier”).
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Accordingly, we sustain the Examiner’s rejection of representative
claim 1 as being anticipated by Thodiyil under 35 U.S.C. § 102.
Independent claims 11 and 20 contain similar limitations, and the Appellants
present similar arguments thereto. Therefore, we also sustain the
Examiner’s anticipation rejection of independent claims 11, and 20.
We also sustain the Examiner’s anticipation rejection of dependent
claims 2-4, 6-10, 12-16, and 19, which have not been separately argued, and
fall with their respective base claims. See 37 C.F.R. § 41.37
(c)(1)(vii)(2008). In re Nielson, 816 F.2d 1567, 1572 (Fed. Cir. 1987).
35 U.S.C. § 103(a) rejections
With respect of claim 5, and 17-18, we also sustain the Examiner’s
obviousness rejections of dependent claims 5, and 17-18, which are not
separately argued, and fall with their respective base claims. 37 C.F.R. §
41.37 (c)(1)(vii). See In re Nielson, 816 F.2d 1567, 1572 (Fed. Cir. 1987).
VI. CONCLUSION
The Examiner did not err in concluding that the “[c]omputer program
product storable on a medium” recited in claim 19 is non-statutory subject
matter under 35 U.S.C. § 101.
The Examiner did not err in finding that Thodiyil discloses “issuing a
logical stream ID to the data stream dependent on the type of data stream”,
as recited in claim 1.
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VII. ORDER
We affirm the rejection of claim 19 under 35 U.S.C. § 101.
We also affirm the anticipation rejection of claims 1-4, 6-16, and 19-
20 under 35 U.S.C. § 102(e).
We also affirm the obviousness rejections of claims 5 and 17-18 under
35 U.S.C. § 103(a).
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136 (a). See 37 C.F.R.
§ 1.136(a)(1)(iv).
AFFIRMED

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PHILIPS INTELLECTUAL PROPERTY & STANDARDS
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BRIARCLIFF MANOR, NY 10510