10873549 (B.P.A.I. Mar. 21, 2012)

Ex Parte Kim

Board of Patent Appeals and InterferencesMar 21, 2012

10873549 (B.P.A.I. Mar. 21, 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. 10/873,549 06/22/2004 Steven Paul Kim RSW920040075US1 (323) 6205 46320 7590 03/22/2012 CAREY, RODRIGUEZ, GREENBERG & O''KEEFE, LLP STEVEN M. GREENBERG 950 PENINSULA CORPORATE CIRCLE SUITE 2022 BOCA RATON, FL 33487 EXAMINER LO, WEILUN ART UNIT PAPER NUMBER 2179 MAIL DATE DELIVERY MODE 03/22/2012 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 STEVEN PAUL KIM ____________ Appeal 2009-013964 Application 10/873,549 Technology Center 2100 ____________ Before GREGORY J. GONSALVES, JEFFREY S. SMITH, and MICHAEL R. ZECHER, Administrative Patent Judges. SMITH, Administrative Patent Judge. DECISION ON APPEAL Appeal 2009-013964 Application 10/873,549 2 STATEMENT OF THE CASE This is an appeal under 35 U.S.C. § 134(a) from the Examiner’s final rejection of claims 1, 3-10, 12-21, 23-30, 32-39, 41-50, 52-59, 61-68, and 70-76, which are all the claims remaining in the application. We have jurisdiction under 35 U.S.C. § 6(b). We affirm-in-part. Invention Appellant’s invention relates to a portlet that queries the category attribute of other portlets on a portal page. The portlet takes a position adjacent to other portlets having the same category attribute. The portlet adjusts its size, or one or more of the other portlets adjust their size, so that the portlets are aligned with one another. Abstract. Representative Claim 1. A method of manipulating a portlet on a portal page, the method comprising: comparing a category attribute of a first portlet and at least one other portlet; and positioning the first portlet adjacent to the at least one other portlet on the portal page and adjusting the size of the first portlet based upon the category attribute of the first portlet being the same as the category attribute of the at least one other portlet. Prior Art Poulsen US 7,062,511 B1 June 13, 2006 (filed Dec. 31, 2001) Appeal 2009-013964 Application 10/873,549 3 Examiner’s Rejections Claims 30, 32-39, 41-50, and 52-58 stand rejected under 35 U.S.C. § 101 as being directed to non-statutory subject matter. Claims 1, 3-10, 12-21, 23-30, 32-39, 41-50, 52-59, 61-68, and 70-76 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Poulsen. ISSUES Did the Examiner err in finding that the computer readable medium recited in claim 30 encompasses non-statutory subject matter? Did the Examiner err in finding that Poulsen teaches or suggests “adjusting the size of the first portlet based upon the category attribute of the first portlet being the same as the category attribute of the at least one other portlet” as recited in claim 1? ANALYSIS Section 101 rejection of claims 30, 32-39, 41-50, and 52-58 The Examiner finds that the term “computer readable medium” recited in claim 30, when read in light of paragraph 13 of the Specification, encompasses signals and other wireless transmissions. Ans. 3. Appellant has not provided evidence or persuasive argument to rebut the Examiner’s finding. Claim 30 recites a computer readable medium having computer program code. Claim 30 does not limit the computer readable medium to non-transitory, tangible media. Appeal 2009-013964 Application 10/873,549 4 The broadest reasonable interpretation of a claim drawn to a computer readable medium (also called machine readable medium and other such variations) typically covers forms of non-transitory tangible media and transitory propagating signals per se in view of the ordinary and customary meaning of computer readable media, particularly when the specification is silent. See MPEP 2111.01. When the broadest reasonable interpretation of a claim covers a signal per se, the claim must be rejected under 35 U.S.C. § 101 as covering non-statutory subject matter. See In re Nuijten, 500 F.3d 1346, 1356-57 (Fed. Cir. 2007) (transitory embodiments are not directed to statutory subject matter) and Interim Examination Instructions for Evaluating Subject Matter Eligibility Under 35 U.S.C. § 101, Aug. 24, 2009; p. 2. 1351 Off. Gaz. Pat. Off. 212 (2010). The computer readable medium recited in claim 30 encompasses a transitory, propagating signal, which is not a process, machine, manufacture, or composition of matter. Nuijten, 500 F.3d at 1357. The claim “covers material not found in any of the four statutory categories [and thus] falls outside the plainly expressed scope of § 101.” Id. at 1354. We sustain the § 101 rejection of claims 30, 32-39, 41-50, and 52-58. Section 103 rejection of claims 1, 3-10, 12-21, 23-30, 32-39, 41-50, 52-59, 61-68, and 70-76 Appellant contends that Poulsen does not teach adjusting a size of a first portlet. App. Br. 11. The Examiner finds that it appears that the sizes of the portlets are adjusted depending on how many are added to the portal page as suggested by Poulsen. Ans. 21. According to the Examiner, even if Poulsen does not in fact resize the portlets on the portal page, it would have Appeal 2009-013964 Application 10/873,549 5 been obvious to one of ordinary skill in the art to resize portlets on a page so that a user could see them all at once. Id. We agree with Appellant. The Examiner’s findings rely on speculation and assumption, rather than the teachings or suggestions of Poulsen. The Examiner has failed to present evidence to show that the prior art teaches or suggests “adjusting the size of the first portlet based upon the category attribute of the first portlet being the same as the category attribute of the at least one other portlet” as recited in claim 1. We do not sustain the rejection of claims 1, 3-10, 12-21, 23-30, 32-39, 41-50, 52-59, 61-68, and 70-76 under 35 U.S.C. § 103. CONCLUSIONS The Examiner did not err in finding that the computer readable medium recited in claim 30 encompasses non-statutory subject matter. The Examiner erred in finding that Poulsen teaches or suggests “adjusting the size of the first portlet based upon the category attribute of the first portlet being the same as the category attribute of the at least one other portlet” as recited in claim 1. DECISION The rejection of claims 30, 32-39, 41-50, and 52-58 under 35 U.S.C. § 101 as being directed to non-statutory subject matter is affirmed. The rejection of claims 1, 3-10, 12-21, 23-30, 32-39, 41-50, 52-59, 61-68, and 70-76 under 35 U.S.C. § 103(a) as being unpatentable over Poulsen is reversed. Appeal 2009-013964 Application 10/873,549 6 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. § 41.50(f). AFFIRMED-IN-PART tj