Ex Parte Day et al

Patent Trial and Appeal Board

Dec 14, 2015

12566526 (P.T.A.B. Dec. 14, 2015)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/566,526 0912412009
80330 7590
Kunzler Law Group/ ARC
50 Broadway
10th Floor
Salt Lake City, UT 84101
12/16/2015
FIRST NAMED INVENTOR
John C. Day
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. CONFIRMATION NO.
ARC920080075US 1 2558
EXAMINER
FAN, HUA
ART UNIT PAPER NUMBER
2449
NOTIFICATION DATE DELIVERY MODE
12/16/2015 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):
jeff@kunzlerlaw.com
lauren@kunzlerlaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JOHN C. DAY, JEFFREY A. KUSNITZ,
BRYANS. LANGSTON, and JOHN T. TIMM
Appeal2013-005692
Application 12/566,526
Technology Center 2400
Before DEBRA K. STEPHENS, BETH Z. SHAW, and
CHRISTA P. ZADO, Administrative Patent Judges.
SHAW, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a) of the rejection
of claims 1-12, 19, and 20. Claims 13-18 are withdrawn. App. Br. 3. We
have jurisdiction under 35 U.S.C. § 6(b ).
We AFFIRM.
INVENTION
The invention is for a computer-implemented method for configuring
an operating system to associate a peripheral. Abstract. Claim 1, which is
representative, reads as follows:
Appeal2013-005692
Application 12/566,526
1. A computer program product compnsmg a
computer useable storage medium to store a computer readable
program, wherein the computer readable program, when
executed on a computer, causes the computer to perform
operations comprising:
determining an identifier to identify a client computer,
the client computer to receive an operating system image, the
operating system image to load an operating system on the
client computer;
retrieving peripheral information to identify an external
peripheral to be associated with the client computer; and
writing a configuration setting of the client computer to a
storage medium based on the peripheral information, the
configuration setting to associate the peripheral with the client
computer within the operating system.
REJECTIONS
The Examiner has rejected claims 1-7 under 35 U.S.C. § 101 as
directed to non-statutory subject matter. Final Act. 4.
The Examiner has rejected claims 1-12, 19, and 20 under 35 U.S.C.
§ 112, second paragraph, as being indefinite. Final Act. 5.
The Examiner has rejected claims 1-5 and 7-10 under 35 U.S.C.
§ 102(b) as being anticipated by Pike (US 7 ,266,818 B2; issued Sept. 4,
2007). Final Act. 5-8.
The Examiner has rejected claims 6, 11, and 12 under 35 U.S.C.
§ 103(a) as being unpatentable over Pike and Official Notice. Final Act. 9-
10.
ISSUES
Appellants argue that the Examiner's rejections are in error. App. Br.
5-11. The dispositive issues presented by these arguments are:
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1. Does the "computer readable storage medium" recited in
claim 1 encompass a non-statutory transitory signal?
2. Is the term "external" in claim 1 indefinite?
3. Did the Examiner err in finding Pike discloses "retrieving
peripheral information to identify an external peripheral to be
associated with the client computer," as recited in independent
claim 1?
4. Did the Examiner err in finding Pike discloses the peripheral
comprises a telephone, as recited in dependent claim 5?
ANALYSIS
Rejection under 35 USC§ 101
Claim 1 is directed to "a computer program product comprising a
computer useable storage medium to store a computer readable
program .... " The Examiner concludes that the "broadest reasonable
interpretation" of the term computer usable storage medium "comprises both
non-transitory and transitory medium," and non-transitory is non-statutory
subject matter (Ans. 10-11.) We agree with the Examiner.
Appellants contend that the term "computer usable storage medium"
precludes claim 1 from embracing non-statutory subject matter. (See App.
Br. 5---6.) We are unpersuaded. "[T]those of ordinary skill in the art would
understand the claim term 'machine-readable storage medium' would
include signals per se." Ex parte Mewherter, 107 USPQ2d 1857, 1862
(PTAB 2013) (precedential-in-part) (machine-readable storage medium non-
statutory where Specification silent as to meaning). The Mewherter panel
explained, "a signal with embedded data [is a storage medium] ... for data
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can be copied and held by a transitory recording medium, albeit temporarily,
for future recovery of the embedded data." (Id.) Appellants' citations to the
non-precedential Hu 1 case (App. Br. 5---6) is unavailing. See Mewherter, 107
USPQ2d at 1862.
Appellants do not identify written description in the Specification that
limits a "computer usable storage medium" to a non-transitory medium.
(Reply Br. 4 n.4.) As noted above, propagation media (i.e., a transitory
recording medium) can store data (i.e., copy and hold data). Ex parte
Mewherter, 107 USPQ2d at 1862. 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 program product comprising a computer useable storage medium
to store a computer readable program" to encompass a transitory signal,
which is non-statutory subject matter. Therefore, we sustain the rejection of
claims 1-12, 19, and 20 as directed to non-statutory subject matter under 35
U.S.C. § 101.
Rejection under 35 US.C. § 112, Second Paragraph
Appellants argue the Examiner erred in finding the term "external" as
recited in claim 1 to be indefinite. App. Br. 6-8; Reply Br. 6-7. In
particular, Appellants argue:
A "peripheral" device that is already connected inside of
a client computer would not, at that point need to be
"associated" with the client computer. The internal connections
would already have established that association ....
1 Exparte Hu, No. 2010-000151(BPAI2012).
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Additionally, each of Figures 1, 5, and 6 illustrate
peripheral devices that are physically separate from and
external to the client computer( s). Thus, the claim language
itself, and the contextual understanding provided by the
description and figures of the present application, clearly
indicate that the "external" characteristics of the recited
peripheral device refer to the fact that the peripheral device is
physically outside of, and otherwise not previously associated
with, the client computer.
App. Br. 8.
The Examiner finds that there are two computers recited in claim 1 : "a
computer" and "a client computer," which are both recited before "external
peripheral" is recited. Ans. 11. The Examiner finds that because the claim
does not indicate what entity the "external" is relative to, there are multiple
reasonable interpretations, such as external to the "computer," external to the
"client computer," or even external to other entities. Id. We find the
Examiner's broad but reasonable interpretation of "external" is not
inconsistent with the Specification. As the Examiner explains; as "all the
functions are performed by 'a computer' ... it [could be] 'a computer' [that]
associate[ s] the peripheral information with a client computer" and
therefore, "it is a reasonable possibility that the claimed 'external' is relative
to a 'computer' rather than 'a client computer,' when the claim does not
indicate otherwise." Id. at 12. Therefore, we sustain the rejection of claims
1-12, 19, and 20 as indefinite under 35 U.S.C. § 112, second paragraph.
Rejection under 35 USC§ 102
Although we sustain the Examiner's rejection of claims 1-12, 19, and
20 as indefinite, to aid in compact prosecution, we address the Examiner's
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findings under the two separate constructions set forth for the rejections
under§ 102(b) and under§ 103(a).
Appellants argue the Examiner erred in finding Pike discloses
"retrieving peripheral information to identify an external peripheral to be
associated with the client computer," as recited in claim 1. App. Br. 9-10.
As an initial matter, the Examiner finds, as we discussed above, "the
claimed limitation does not specify which entity this external peripheral is
'external' to, i.e., the claimed limitation does not require that the external
peripheral is external to the client computer." Ans. 13-14. The Examiner
finds, under an interpretation in which the "external peripheral" is external
to "a computer" that "any peripheral, even those inside of the client device,
as long as being external to 'a computer,' reads on the claimed 'external
peripheral."' Id. Under this interpretation, we agree with the Examiner's
finding that the NIC (network interface card) as disclosed by Pike reads on
the disputed limitation. See id. (citing Pike 3:47---67; 6:43-52).
The Examiner also finds, under an interpretation in which the
"external peripheral" is external to "the client computer," Pike teaches this
limitation. Ans. 14. Although Appellants argue that the Examiner
improperly attempts to combine disparate teachings of separate
embodiments (Reply Br. 9) of Pike, we are unpersuaded. Rather, Pike's
description in column 24, lines 30 to 41 relates to network interface cards
(NI Cs) in general, and not to a separate or "disparate" embodiment.
Appellants provide insufficient evidence to persuade us the Specification or
claims limit "external" in a way that, under a broad but reasonable
interpretation, is not encompassed by Pike's teachings of the NIC card---or
its "external" equivalent circuitry. See Pike, 24:30-41; Ans. 14.
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With respect to dependent claim 5, the Examiner finds that Pike
discloses that the computing device 102 can be a cellular telephone, personal
digital assistant, or combinations thereof. Ans. 16 (citing Pike, 3 :20-25).
Thus, the Examiner concludes, a "telephone can be considered a peripheral
in a PDA and [cell phone] combination." Id. Appellants argue that Pike
does not describe a "peripheral" that includes a telephone, but merely
describes that the computing device itself can be a cellular telephone. App.
Br. 11. We are not persuaded by Appellants' arguments because the
Specification indicates that a peripheral 114 may be a telephone extension
associated with the client computer 112 in a call center. Spec. i-fi-127, 80.
Therefore, taking a broad but reasonable interpretation of peripheral, in light
of Appellants' Specification, we agree with the Examiner's findings.
Appellants have not persuaded us that Pike's teaching of a cellular phone,
PDA, or combinations thereof do not encompass "the peripheral comprises a
telephone," as recited in dependent claim 5. Accordingly, we sustain the
Examiner's rejection of dependent claim 5.
Because Appellants have not presented separate patentability
arguments or have reiterated substantially the same arguments as those
previously discussed for patentability of claim 1, claims 2--4, 7-12, 19, and
20 fall therewith. See 37 C.F.R. § 41.37(c)(l)(iv).
CONCLUSION
The decision of the Examiner to reject claims 1-7 under 35 U.S.C. §
10 1 is affirmed.
The decision of the Examiner to reject claims 1-12, 19, and 20 under
35 U.S.C. § 112 is affirmed.
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The decision of the Examiner to reject claims 1-5 and 7-10 under 35
U.S.C. § 102(b) is affirmed.
The decision of the Examiner to reject claims 6, 11 and 12 under 35
U.S.C. § 103(a) is affirmed.
DECISION
The decision of the Examiner to reject claims 1-12, 19, and 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)(l )(iv).
AFFIRMED
Klh
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