Ex Parte Hunt et al

Patent Trial and Appeal Board

Sep 9, 2013

12259217 (P.T.A.B. Sep. 9, 2013)

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.
12/259,217 10/27/2008 Christian Lee Hunt RSW920050178US2
(378DIV)
1567
46320 7590 09/09/2013
CAREY, RODRIGUEZ, GREENBERG & O''''KEEFE, LLP
STEVEN M. GREENBERG
7900 Glades Road
SUITE 520
BOCA RATON, FL 33434
EXAMINER
MULLEN, THOMAS J
ART UNIT PAPER NUMBER
2685
MAIL DATE DELIVERY MODE
09/09/2013 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 PATENT TRIAL AND APPEAL BOARD
____________

Ex parte CHRISTIAN LEE HUNT, VINCENT MITCHEL PADUA,
ROBIN RADEZ, WILLIAM ALEXANDER REICHERT III, GREGORY
COVERT SMITH, and ORIANA JEANNETTE WILLIAMS
____________

Appeal 2011-003413
Application 12/259,2171
Technology Center 2600
____________

Before CAROLYN D. THOMAS, ELENI MANTIS MERCADER, and
LARRY J. HUME, Administrative Patent Judges.

THOMAS, Administrative Patent Judge.

DECISION ON APPEAL

1 The real party in interest is IBM Corporation.
Appeal 2011-003413
Application 12/259,217

2
STATEMENT OF THE CASE
Appellants seek our review under 35 U.S.C. § 134(a) of the
Examiner’s final decision rejecting claims 10-27, which are all the claims
remaining in the application. Claims 1-9 are cancelled. We have
jurisdiction over the appeal under 35 U.S.C. § 6(b).
We AFFIRM.
The present invention relates generally to inventory management.
See Spec., ¶ [0002].
Claim 19 is illustrative:

19. A computer program product for locating a device in a
given state, said computer program product comprising a computer
readable storage medium having computer readable program code
tangibly embodied therein, said computer readable program code
comprising:
computer readable program code configured to locate a
device using an RFID tag reader and a first RFID tag associated with
the device that responds to queries from an RFID tag reader
independently of the state of the device; and
computer readable program code configured to determine
the state of the device using an RFID tag reader and a second RFID
tag associated with the device that responds to queries from an RFID
tag reader selectively in dependence upon the state of the device.

Appellants appeal the following rejections:

R1. Claims 10-27 are rejected on the ground of nonstatutory
obviousness-type double patenting as being unpatentable over claims 1-9 of
U.S. Patent No. 7,463,153; and
R2. Claims 19-27 are rejected under 35 U.S.C. § 101 because the
Appeal 2011-003413
Application 12/259,217

3
specification at paragraph 0018 defines “computer readable medium” as
encompassing “transmission media.”

ANALYSIS
Obviousness-Type Double Patenting Rejection
Appellants do not contest the rejection and merely state that they
intend to file a Terminal Disclaimer to overcome this rejection (see App. Br.
3). We note that arguments not made are considered waived.2 See 37 C.F.R.
§ 41.37(c)(1)(iv). Therefore, we pro forma sustain the Examiner’s
obviousness-type double patenting rejection of claims 10-27.

Rejection under 35 U.S.C. § 101
Issue: Did the Examiner err in rejecting the claims for encompassing
a non-statutory “signal”?

Appellants contend that “[c]laim 19 recites a computer readable
storage medium, which is not identical to a computer readable medium”
(App. Br. 4).
The Examiner found that “[w]hen claim 19 is read in light of the
specification, it is considered that ‘computer readable storage medium’ of
claim 19 is equivalent . . . [to] the ‘computer-readable medium’ discussed in
para. 0018 of the specification” (Ans. 4).

2 See Hyatt v. Dudas, 551 F.3d 1307, 1314 (Fed. Cir 2008) (“When the
appellant fails to contest a ground of rejection to the Board, section
1.192(c)(7) [(now section 41.37(c)(1)(vii))] imposes no burden on the Board
to consider the merits of that ground of rejection. . . . [T]he Board may treat
any argument with respect to that ground of rejection as waived.”).
Appeal 2011-003413
Application 12/259,217

4
We agree with the Examiner that the scope of the recited “computer
readable storage medium” encompasses transitory media (Ans. 4-6; claim
19), such as signals or carrier waves, where, as here, the Specification does
not limit the computer readable storage to non-transitory forms. Accord Ex
parte Mewherter, No. 2012-007692 (PTAB May 8, 2013) (expanded panel)
(holding recited machine-readable storage medium ineligible under § 101
since it encompasses transitory media). Here, the recited “computer
readable storage medium” is not claimed as non-transitory, and the
disclosure does not expressly and unambiguously limit that medium to
solely non-transitory forms via a definition or similar limiting language.
Therefore, the medium encompasses transitory forms and is therefore
ineligible under § 101.
Therefore, we sustain the Examiner’s rejection of representative claim
19, and associated dependent claims 20-27 under § 101. (Ans. 4-6).

DECISION
We affirm the Examiner’s § 101 and obviousness-type double
patenting rejections.
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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