Ex Parte Dettori et al

Board of Patent Appeals and Interferences

Aug 29, 2012

11199653 (B.P.A.I. Aug. 29, 2012)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
11/199,653 08/09/2005 Paolo Dettori YOR920050204US1
(163-80)
3183
49267 7590 08/29/2012
TUTUNJIAN & BITETTO, P.C.
425 Broadhollow Road, Suite 302
Melville, NY 11747
EXAMINER
LY, ANH
ART UNIT PAPER NUMBER
2162
MAIL DATE DELIVERY MODE
08/29/2012 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 PAOLO DETTORI, JULIO NOGIMA,
FRANK A. SCHAFFA, and AUGUSTINE C. SCHILLING
____________

Appeal 2010-004853
Application 11/199,653
Technology Center 2100
____________

Before MAHSHID D. SAADAT, ERIC S. FRAHM,
and TREVOR M. JEFFERSON, Administrative Patent Judges.

SAADAT, Administrative Patent Judge.

DECISION ON APPEAL

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Appellants appeal under 35 U.S.C. § 134(a) from a final rejection of
claims 1-27, which are all the claims pending in this application. We have
jurisdiction under 35 U.S.C. § 6(b).
We affirm.

STATEMENT OF THE CASE
Introduction
Appellants’ invention relates to a system and method for
automatically processing media content for use in a target context which is
reactive to the media (see Spec. ¶¶ [0006] – [0007]).
Exemplary independent claim 1 and dependent claim 20 read as
follows:
1. A system for processing media content objects,
comprising:
a storage device for storing a media content object in
association with a first set of object rules and methods;
a processor comprising a context processing engine which
processes the first set of object rules and methods associated with the
media content object and compares the first set of object rules and
methods to a second set of context rules and methods associated with
a target context to decide which rules and methods are to be applied to
process media content of the media content object in a target
environment.

20. A computer readable program storage device that stores a
program of instructions that are readable and executable by the
computer to perform the method steps as recited in claim 16.
The Examiner’s Rejections
Claims 1-15, 20 and 27 stand rejected under 35 U.S.C. § 101 as being
non-statutory. (See Ans. 4-5, “NEW GROUND(S) OF REJECTION”).
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Claims 1-27 stand rejected under 35 U.S.C. § 103(a) as being obvious
over Tu (US 2005/0257169 A1) and Slemmer (US 2006/027030 A1).1 (See
Ans. 6-19).

ISSUES
1. Under 35 U.S.C. § 101, did the Examiner err in finding that
claims 1-15 are non-statutory because they are directed to software per se
and claims 20 and 27 are non-statutory because they recite signal per se?
2. Under 35 U.S.C. § 103(a), did the Examiner err in finding that
the cited combination of references would have taught or suggested
comparing “the first set of object rules and methods to a second set of
context rules and methods associated with a target context to decide which
rules and methods are to be applied to process media content of the media
content object in a target environment,” recited in claim 1 and similarly in
the other independent claims?

ANALYSIS
35 U.S.C. § 101 rejection
Claims 1-15
Appellants contend that the Examiner erred in rejecting claims 1-6
because the claims include a storage device and a processor having
functional features (Reply Br. 7). Appellants further argue that, as explained

1 The rejection of claims 1 and 7 under 35 U.S.C. § 112, second paragraph is
not repeated in the Answer and therefore withdrawn by the Examiner. Any
rejection not repeated and discussed in the answer may be taken by the
Board as having been withdrawn. Ex Parte Emm, 118 USPQ 180 (Bd. App.
1957).
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in paragraphs 18-19 of their Specification, the claimed system is directed to
hardware or machine components because the claim recites a storage device
and a processor having functional aspects drawn to processing performed in
particular machines (Reply Br. 8). Appellants further point out that the
storage device recited in claim 1 is drawn to a storage device for storing a
media content and not to the storage media (Reply Br. 8-9). Appellants
provide similar arguments for claims 7-15 (Reply Br. 10-11).
We recognize that “the Supreme Court has made clear that a patent
claim’s failure to satisfy the machine-or-transformation test is not dispositive
of the § 101 inquiry.” CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d
1366, 1371 (Fed. Cir. 2011) (citing Bilski, 130 S.Ct. at 3227). However, if
the “acts” of a claimed process manipulate only numbers, abstract concepts
or ideas, or signals representing any of the foregoing, the acts are not being
applied to appropriate subject matter. See Gottschalk v. Benson, 409 U.S.
63, 71-72 (1972).
Claim 1 recites a processor that processes the first set of rules and
compares the first set of rules to a second set of rules to decide which rules
are to be applied. However, the set of object rules are not physically
transformed into a different state or thing, i.e., rules are compared and the
result is still data. Even if the functional aspects of the claimed processor
are drawn to processing performed in particular machines (Reply Br. 8),
Appellants have not pointed out where their Specification indicates that the
claimed system is solely directed to hardware entities.
Further, by Appellants own admission (see Spec. ¶ [0019]), the
claimed invention may be an entirely software embodiment. Our reviewing
court has clearly stated that “[t]he four categories [of § 101] together
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describe the exclusive reach of patentable subject matter. If a claim covers
material not found in any of the four statutory categories, that claim falls
outside the plainly expressed scope of § 101 even if the subject matter is
otherwise new and useful.” In re Nuijten, 500 F.3d 1346, 1354 (Fed. Cir.
2007). Therefore, the Examiner reasonably construed that claim 1 may be
directed to software and, therefore, covers material outside of the four
statutory categories. Based on this record, we conclude that the Examiner
did not err in finding that claims 1-15 include non-statutory subject matter.2
Claims 20 and 27
Claims 20 and 27 recite “a computer readable program storage device
that stores a program of instructions that are readable and executable by the
computer ….” We find that the Specification states that “a computer-usable
or computer readable medium can be any apparatus that may include, store,
communicate, propagate, or transport the program ….” (Spec. ¶ [0020]).
Thus, while the Examiner is correct that the Specification clearly states that
the program can in the alternative be contained on a data carrier, the claims
recite a storage device that stores a program of instructions, which means
that they are non-transitory. See In re Nuijten, 500 F.3d at 1357, and
Subject Matter Eligibility of Computer Readable Media, 1351 OFFICIAL
GAZETTE U.S. PAT. & TRADEMARK OFF. 212 (Feb. 23, 2010).

2 In the event of further prosecution, we invite the Examiner to determine the
appropriateness of any further rejections under 35 U.S.C. § 112, first and
second paragraphs for claims 1-15. The specific details of hardware or
software that forms the claimed “context processing engine which proceses
… and compares [rules] … to decide which rules and methods are to be
applied to process media content ….” are not sufficiently described in the
Specification.
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We agree with Appellants (Reply Br. 11-14) that the recited language
in the claims excludes the possibility that the claimed computer readable
program storage device is an electrical carrier signal. Based on this record,
we conclude that the Examiner erred in finding that claims 20 and 27 include
non-statutory subject matter.
35 U.S.C. § 103 rejection
With respect to claims 1-6, we agree with the Examiner’s finding
(Ans. 20) that the processor disclosed in Tu processes the media content
object for determining the media type of the selected media content (Ans. 20
(citing Tu, Abstract and ¶¶ [0016] – [0017], [0020], and [0026] – [0027])).
We further agree with the Examiner’s analysis of paragraphs 12-14 and 77
of Slemmer with respect to comparing the content information received from
the first device with the content rules in the second device (Ans. 20).
With respect to Appellants’ challenge to the disclosure of Tu
regarding “comparing object rules associated with an object and context
rules associated with a context to decide which rules and methods are to be
applied” (App. Br. 11), we note that the Examiner relied on paragraphs
[0072] and [0076] – [0078] of Tu for considering the rules from the devices
within an environment (see Ans. 21). Therefore, consistent with Appellants’
disclosure (see Spec. ¶ [0027]), Slemmer’s comparison of the object rules
within the environment rules provides the disputed claim feature, as the
device environment determines the environment for processing the object or
the context.
Appellants argue the patentability of independent claims 7, 16, and
21, and their dependent claims, based on the same arguments presented for
claims 1-6 (see App. Br. 12-17), which we found to be unpersuasive.
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Therefore, for the same reasons stated above with respect to claims 1-6, we
conclude that the Examiner did not err in rejecting claims 1-27 under 35
U.S.C. § 103(a) as being obvious over Tu and Slemmer.

CONCLUSIONS
1. The Examiner has not erred in rejecting claims 1-15 under
35 U.S.C. § 101 as being non-statutory.
2. The Examiner erred in rejecting claims 20 and 27 under
35 U.S.C. § 101 as being non-statutory.
3. The Examiner has not erred in rejecting claims 1-27 under 35
U.S.C. § 103(a).
3. Claims 1-27 are not patentable.

DECISION
The Examiner’s decision rejecting claims 1-27 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)(1)(iv).

AFFIRMED

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