Ex Parte DeLuca

Patent Trial and Appeal Board

Jul 29, 2016

12816234 (P.T.A.B. Jul. 29, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/816,234 06/15/2010
75949 7590
IBM CORPORATION
C/O: Fabian Vancott
215 South State Street
Suite 1200
Salt Lake City, UT 84111
08/02/2016
FIRST NAMED INVENTOR
Lisa Seacat DeLuca
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.
RSW920100036US 1 2889
EXAMINER
HUR,ECE
ART UNIT PAPER NUMBER
2172
NOTIFICATION DATE DELIVERY MODE
08/02/2016 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):
patents@fabianvancott.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte LISA SEACAT DeLUCA
Appeal2015-002164
Application 12/816,234
Technology Center 2100
Before MAHSHID D. SAADAT, JOHNNY A. KUMAR, and
JON M. JURGOV AN, Administrative Patent Judges.
SAADAT, Administrative Patent Judge.
DECISION ON APPEAL
Appellant 1 appeals under 35 U.S.C. § 134(a) from a final rejection of
claims 1-25, which are all the claims pending in this application. We have
jurisdiction under 35 U.S.C. § 6(b ).
We affirm.
1 According to Appellant, the real party in interest is International Business
Machines Corp. (App. Br. 2).
Appeal2015-002164
Application 12/816,234
STATEMENT OF THE CASE
Appellant's invention relates to accessing elements in an operating
system (Spec. Title). Claim 1 is illustrative of the invention and reads as
follows:
1. A method of providing access to an element executed by a
processor, said method comprising:
with said processor, tracking behavior of a user with
respect to a plurality of elements managed by an operating
system;
generating a tag cloud comprising a plurality of objects,
each of said objects representing one of said plurality of elements
managed by said operating system and comprising a size based
on said tracked behavior of said user with respect to said one of
said plurality of elements managed by said operating system;
and allowing, with said processor, said user to access at
least one of said plurality of elements using said tag cloud.
Claim 25 stands rejected under 35 U.S.C. § 101 as being directed to
non-statutory subject matter (see Final Act. 6).
Claims 1--4, 6, 8, 10-14, 17, and 19-25 stand rejected under 35 U.S.C.
§ 102(b) as anticipated by Blanchard et al. (US 2008/0072145 Al; Mar. 20,
2008) (see Final Act. 7-13).
Claims 5, 7, and 15 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Blanchard and Forney (US 2007/0129977 Al; June 7,
2007) (see Final Act. 13-15).
Claims 9 and 18 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Blanchard and Karmarkar et al. (US 8,275,399 B2; Sept.
25, 2012) (see Final Act. 16).
2
Appeal2015-002164
Application 12/816,234
Claim 16 stands rejected under 35 U.S.C. § 103(a) as unpatentable
over Blanchard and Randall (US 2010/0064007 Al; Mar. 11, 2010) (see
Final Act. 17).
ANALYSIS
We have reviewed the Examiner's rejections in light of Appellant's
contentions that the Examiner erred. We disagree with Appellant's
conclusions.
35 US.C. § 101 Rejection of Claim 25
The broadest reasonable interpretation of claims drawn to computer
readable media generally includes transitory propagating signals. See David
J. Kappos, Subject Matter Eligibility of Computer Readable Media, 1351
Off. Gaz. Pat. Office 212 (Feb. 23, 2010). Under such interpretation,
although claim 25 recites the word "storage," this claim includes transitory
propagating signais and encompasses non-statutory subject matter. See In re
Nuijten, 500 F.3d 1346, 1356-57 (Fed. Cir. 2007); Ex parte Mewherter, 107
USPQ.2d 1857, 1860-63 (PTAB 2013) (precedential). Further, although
Appellant's Specification describes "computer readable storage medium"
(Spec. i-f 21) and "computer readable signal medium" (Spec. i-f 22),
Appellant's description of "computer readable storage medium" does not
unambiguously disclaim transitory forms, rather it explicitly encompasses a
medium for transitorily carrying a signal (e.g., "an electrical connection
having one or more wires" (Spec. i-f 21)). Because Appellant has not offered
a persuasive reason to depart from the usual presumptions regarding claims
drawn to computer readable media, we agree with the Examiner that claim
3
Appeal2015-002164
Application 12/816,234
25 is directed to non-statutory subject matter (see Ans. 2) and sustain the
Examiner's rejection of this claim under 35 U.S.C. § 101.
35 USC§ 102 Rejection over Blanchard
Claim 1
Appellant contends Blanchard does not disclose the claimed
"elements" that are "executed by a processor" and "managed by an operating
system," as recited in independent claim 1 (App. Br. 15-19; Reply Br. 6-
10). Appellant argues Blanchard's tags are not analogous to the claimed
elements, because the tags are merely data and are not executable computer
programs or files (App. Br. 16; Reply Br. 6-7). Appellant further contends
claim 1 requires tracking the use of executable files and presenting the
executables in a tag cloud based on that use, and Blanchard's tag cloud does
not disclose such tracking of executable files (App. Br. 18; Reply Br. 8-9).
Appellant's contentions do not persuade us of Examiner error in the
rejection. Under the broadest reasonabie interpretation consistent with
Appellant's disclosure, we agree with the Examiner's finding that "elements
executed by a processor" include computer files that are indirectly executed
by a processor through a computer program associated with the file (Ans. 3-
4) (See In re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997)). The
Examiner's interpretation of the claim term "elements" is consistent with
Appellant's Specification (see Spec. i-f 47) and claims (see Claim 3), which
do not limit "elements" to executable files, but also encompass documents or
files that require an associated computer program to be launched. Thus, we
agree with the Examiner's finding that Blanchard's files, which include web
pages, computer files, electronic documents, or audio/video files, disclose
4
Appeal2015-002164
Application 12/816,234
the claimed "elements" executed by a processor and managed by an
operating system (Ans. 3--4 (citing Blanchard i-f 22)).
Further regarding claim 1, Appellant contends the Examiner relies on
Blanchard's tags or their underlying data to disclose both the claimed
"elements" and "objects," and argues it is improper to use a single structure
in the cited reference to disclose two separate claimed elements (App. Br.
16-17; Reply Br. 7-8). We are not persuaded of error by Appellant's
contention, and agree with the Examiner's finding that Blanchard's tags
within the tag cloud are the objects representing an element (Ans. 3--4 (citing
Blanchard i-fi-121-22)), and Blanchard's computer files that are linked to the
tags disclose the claimed "elements," as discussed supra.
Accordingly, we sustain the 35 U.S.C. § 102(b) rejection of
independent claim 1, independent claims 22 and 25 which are argued on a
similar basis as claim 1 (App. Br. 20-22), and dependent claims 3, 4, 6, 8, 9,
11, and 24 which are not argued separateiy.
Claims 2, 12, 13, 21, and 23
Appellant contends no application is executed or launched by
selecting a tag in Blanchard's tag cloud, thus Blanchard does not disclose
elements comprising executable computer programs that are launched by
selecting an object in the tag cloud (App. Br. 19-20, 22, and 24--25; Reply
Br. 10-11, 13-16). Appellant's argument is not persuasive of error. We
specifically agree with the Examiner's finding that, under the broadest
reasonable interpretation of the claims, Blanchard's web pages, electronic
documents, or audio/video files linked to the tag cloud comprise elements
that represent an underlying computer program associated with the file and
are indirectly executed by launching the associated computer program (Ans.
5
Appeal2015-002164
Application 12/816,234
4--5 (citing Blanchard i-f 3: selecting a tag leads a user to a web page or other
item associated with that tag) (see In re Morris, supra). A skilled artisan
would recognize leading a user to an item associated with a tag would
require launching a computer program allowing the user to access the file
(e.g., view the electronic document, watch the video file, etc.).
Thus, we sustain the 35 U.S.C. § 102(b) rejection of claims 2, 12, 13,
21, and 23, as well as dependent claims 14, 17, 18, and 20 which are not
argued separately.
Claims 10 and 19
Appellant contends Blanchard's tag cloud is displayed in a computer
program such as a web browser, but is not incorporated into "the menu of an
operating system," as recited in claims 10 and 19 (App. Br. 23; Reply Br.
14--15). Appellant's contention does not persuade us of error, as the
broadest reasonable interpretation of "menu of an operating system" does
not preclude a menu within a program that is running via the operating
system (see In re Morris, supra). Thus, we agree with the Examiner's
finding that the tag cloud menu within the web browser, which is running on
a computer operating system, teaches the claimed menu (Ans. 5 (citing
Blanchard i-fi-115, 21)).
Accordingly, we sustain the 35 U.S.C. § 102(b) rejection of claims 10
and 19.
35 US.C. § 103 Rejection over Blanchard and Forney
With respect to claims 5, 7, and 15, Appellant contends the
combination of Blanchard and Forney does not teach "tracking contextual
data pertaining to access" of an element by a user, and more specifically
"tracking a length of time for which said user accesses each said element"
6
Appeal2015-002164
Application 12/816,234
(App. Br. 25-27; Reply Br. 16-17). Appellant argues Forney merely
teaches tracking data interactions, data relationships, and people
relationships, and fails to teach tracking the time a user accesses an element
or other contextual data pertaining to such access (id.). Appellant's
contention is not persuasive of Examiner error. We specifically agree with
the Examiner's finding that the combination of Blanchard and Forney
teaches tracking contextual data pertaining to user access of computer files
(Ans. 6 (citing Blanchard i-f 19: e.g., attributes tracked include last update of
item or most recently accessed item)) and, specifically, tracking the length of
time for which a user accesses a file (Ans. 6 (citing Forney i-f 97; see also
i-f 110, length of time a document is viewed is tracked).
Thus, we sustain the 35 U.S.C. § 103(a) rejection of claims 5, 7, and
15.
DECISION
We affirm the decision of the Examiner to reject claims 1-25.
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
7