Ex Parte Kornegay et al

Patent Trial and Appeal Board

Nov 20, 2013

11425011 (P.T.A.B. Nov. 20, 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.
11/425,011 06/19/2006 Marcus L. Kornegay RPS920060016US1 8541
50594 7590 11/20/2013
CAREY, RODRIGUEZ, GREENBERG & O''''KEEFE, LLP
STEVEN M. GREENBERG
7900 Glades Road
SUITE 520
BOCA RATON, FL 33487
EXAMINER
RUTZ, JARED IAN
ART UNIT PAPER NUMBER
2187
MAIL DATE DELIVERY MODE
11/20/2013 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 MARCUS L. KORNEGAY, NGAN N. PHAM, and
BRIAN T. VANDERPOOL
____________

Appeal 2011-001145
Application 11/425,011
Technology Center 2100
____________

Before JOSEPH F. RUGGIERO, KRISTEN L. DROESCH, and JOHN G.
NEW, Administrative Patent Judges.

RUGGIERO, Administrative Patent Judge.

ON REQUEST FOR REHEARING
Appellants request that we reconsider our Decision of August 21,
2013, wherein we affirmed the Examiner’s 35 U.S.C. § 102(b) rejection of
claims 1 and 4-8, the 35 U.S.C. § 103(a) rejection of claims 9, 12, and 13,
and the 35 U.S.C. § 101 rejection of claims 9-13. Appellants’ request for
reconsideration is directed solely to our affirmance of the Examiner’s non-
statutory subject matter rejection of claims 9-13 under 35 U.S.C. § 101. We
have reconsidered our Decision of August 21, 2013, in light of Appellants’
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2
arguments in the Request for Rehearing, and we find no error therein. We,
therefore, decline to make any changes in the prior Decision for the reasons
which follow.
Appellants’ arguments in the Request for Rehearing focus on the
contention that our original Decision erred in not affording patentable
weight to the term “tangible” with respect to the claimed “computer usable
tangible medium.” Appellants’ arguments direct attention to the
precedential opinion of the Board in Ex parte Mewherter, 107 USPQ2d
1857, 1862, Appeal No. 2012-007692 (PTAB May 8, 2013). Request 3-4.
As correctly characterized by Appellants, the Board in Mewherter, because
the Specification was silent with respect to the terms “medium” or “media,”
turned to extrinsic evidence and concluded that an ordinarily skilled artisan
would have understood the term “machine-readable storage medium” to
include signals per se.
According to Appellants, however, the instant Specification is not
silent but, instead, defines “computer-usable or computer-readable medium”
as including both tangible and intangible forms (such as “propagation
medium”). Request 5 (citing Spec. ¶ [0022]). Appellants further contend
that the ordinarily skilled artisan would recognize the difference between an
intangible propagation medium (“e.g., light, electricity, EMF, etc.”) and a
tangible storage medium (“e.g., memory, hard disk, CD-ROM, etc.”). Id.
Accordingly, in Appellants view, the term “tangible” breathes life into
Appellants’ claim language and our original Decision erred in not giving
weight to the term.
We do not find Appellants’ arguments to be persuasive of any error in
our original Decision. While Appellants’ Specification sets forth various
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non-limiting examples of computer-usable media, the Specification does not
equate the terms of a “computer usable tangible medium” to the listed
examples. Spec. [0023]. The Specification merely states that the medium
“can be” any of the listed examples. Id. Aside from the fact that the
Specification has no indication as to which examples Appellants consider to
be computer usable tangible media, the use of the terminology “can be” is
permissive language that does not expressly limit the medium to “non-
transitory” applications.
Further, contrary to Appellants’ contention, the present issue is not
whether one of ordinary skill in art may or may not recognize certain media
as tangible but, instead, is whether the addition of the term tangible to
“computer usable medium” limits the claim to statutory non-transitory
embodiments. As stated in In re Nuitjen, 500 F.3d, 1346, 1357 (Fed. Cir.
2007), “[a] transitory, propagating signal like Nuitjen’s is not a ‘process,
machine, manufacture, or composition of matter,’” the four categories that
define the explicit scope and reach of patentable subject matter under
35 U.S.C. § 101. It is noteworthy that the Court in Nuitjen recognized the
real world tangible aspects of Nuitjen’s signals, but concluded that because
of their transitory nature, they were not a tangible article or commodity that
would make them statutory subject matter. See Nuitjen, at 1357.
Further, we also note that although not binding on the Board, recent
presentation guidelines to the examining patent corps indicate that while
“non-transitory” is a viable option for overcoming the presumption that the
media encompass signals or carrier waves, merely indicating that such media
are “physical” or “tangible” will not overcome such presumption. U.S.
Patent & Trademark Office, Evaluating Subject Matter Eligibility Under 35
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Application 11/425,011

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USC § 101: August 2012 Update (2012) (pp. 11-14), available at
http://www.uspto.gov/patents/law/exam/101_training_aug2012.pdf.

CONCLUSION
Based on the foregoing, we have granted Appellants’ request to the
extent that we have reconsidered our original Decision of August 21, 2013,
but we deny the request with respect to making any changes therein.
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).

REHEARING DENIED

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