Ex Parte Martin

Board of Patent Appeals and Interferences

Nov 15, 2010

10783031 (B.P.A.I. Nov. 15, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte CHRISTOPHER MARTIN
____________

Appeal 2009-004223
Application 10/ 783,031
Technology Center 2100
____________

Before JAMES D. THOMAS, JOSEPH L. DIXON, and
LANCE LEONARD BARRY, Administrative Patent Judges.

DIXON, Administrative Patent Judge.

DECISION ON APPEAL 1

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, begins to run from the decided date
shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Date (electronic delivery).

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Application 10/783,031

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I. STATEMENT OF THE CASE
A Patent Examiner rejected claims 22-27 and 29. The Appellant
appeals therefrom under 35 U.S.C. § 134(a). We have jurisdiction under 35
U.S.C. § 6(b). Claims 1-21, 28, and 30-36 are withdrawn from
consideration. Claims 22-27 and 29 remain on appeal for review. We
reverse and enter a new ground of rejection under 37 C.F.R. § 41.50(b).

A. INVENTION
The invention at issue on appeal relates to:

[0025] In accordance with one aspect of the invention an apparatus for
and method of breaking data to a tape storage medium comprises
temporarily storing the data, and selectively compressing the data
prior to temporarily storing the data, wherein the selective
compressing is a function of the amount of data being temporarily
stored. The temporarily stored data are read to the tape.

[0026] In one embodiment the rate at which temporarily stored data
are written to the tape is effectively varied, preferably as a function of
the rate at which the data is applied to an apparatus for performing the
selective compressing or as a function of the amount of temporarily
stored data.

(Spec. 6-7).
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B. ILLUSTRATIVE CLAIMS
Claims 22 and 29, which further illustrate the invention, follow:

22. A tape drive unit comprising:

a data compression engine configured to selectively
apply compression to an incoming data stream and output a
compressed data stream;

a buffer memory configured to store said compressed
data stream;

a monitoring element configured to monitor a data
occupancy level of said buffer memory configured to store said
compressed data stream; and

a control element configured to disable said data
compression engine based upon a predetermined level of the
data occupancy level of the buffer memory.

29. A memory storing program instructions for causing a
data processor to:

monitor a data occupancy level of a buffer memory
receiving a compressed data stream: and

disable a data compressor outputting the compressed data
stream in response to said data occupancy level of said buffer
memory being below a predetermined level.

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C. REFERENCES
The Examiner relies on the following references as evidence:
Appellant’s Admitted Prior Art (AAPA) embodiment represented in figure 4
hereinafter "AAPA4."

AAPA embodiment represented in figures 2 and 3 hereinafter "AAPA23".

D. REJECTION
The Examiner makes the following rejection:

Claims 22-27 and 29 remain rejected under 35 U.S.C. 103(a) as being
unpatentable over a first AAPA embodiment represented in figure 4
hereinafter "AAPA4" in view of a second AAPA embodiment represented in
figures 2 and 3 hereinafter "AAPA23".

II. ISSUE
Has the Examiner set forth a sufficient showing of obviousness based
upon the Appellant's admitted prior art?

III. PRINCIPLES OF LAW

The question of obviousness is "based on underlying factual
determinations including . . . what th[e] prior art teaches explicitly and
inherently . . . ." In re Zurko, 258 F.3d 1379, 1383 (Fed. Cir. 2001)
(citations omitted). "The Patent Office has the initial duty of supplying the
factual basis for its rejection. It may not . . . resort to speculation, unfounded
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assumptions or hindsight reconstruction to supply deficiencies in its factual
basis." In re Warner, 379 F.2d 1011, 1017 (CCPA 1967).
Obviousness requires that all limitations be taught or suggested by the
reference or references. 35 U.S.C. § 103(a).

Statutory Subject Matter
The subject matter of claims permitted within 35 U.S.C. § 101 must
be a machine, a manufacture, a process, or a composition of matter.
Moreover, our reviewing court has stated that “[t]he four categories [of
§ 101] together 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); accord In re Ferguson, 558 F.3d 1359 (Fed. Cir. 2009).
This latter case held that claims directed to a “paradigm” are nonstatutory
under 35 U.S.C. § 101 as representing an abstract idea. Thus, a “signal”
cannot be patentable subject matter because it is not within any of the four
categories. In re Nuijten, 500 F.3d at 1357. Laws of nature, abstract ideas,
and natural phenomena are excluded from patent protection. Diamond v.
Diehr, 450 U.S. at 185. A claim that recites no more than software, logic or
a data structure (i.e., an abstraction) does not fall within any statutory
category. In re Warmerdam, 33 F.3d 1354, 1361 (Fed. Cir. 1994).
Significantly, “[a]bstract software code is an idea without physical
embodiment.” Microsoft Corp. v. AT&T Corp., 550 U.S. 437, 449 (2007).
The unpatentability of abstract ideas was reaffirmed by the U.S. Supreme
Court in Bilski v. Kappos, 130 S.Ct. 3218 (2010).
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IV. FINDINGS OF FACT
We reproduce here pertinent portions of Appellant's specification as
filed:

[0055] The control elements 507 can be "firmware" modules
comprising a set of program instructions, stored in a non volatile
memory such as an EEPROM or software stored in a memory such as
a floppy or hard disk, a CD ROM or a DVD. Alternatively, the
functions performed by processor 506 and elements 507 and by
functions can be performed by a logic circuit, for example an
application specific integrated circuit (ASIC) or a programmable logic
array (PLA). Alternatively, any other convenient arrangement could
be used to provide the functions performed by processor 506 and
control elements 507.

(Spec. 13).

V. ANALYSIS
The Examiner sets forth the statement of rejection of the four separate
independent claims by addressing claims 22, 25, 27, and 29 altogether under
the same line of reasoning. (Answer 3-4).
Appellants argue in the Reply Brief at page 6:

Regarding AAPA4, although AAPA4 discloses data
compression, the Appellant's specification, at page 5, line 25 - page 6,
line 3, specifically states that compression is "only done on a once and
for all basis at the start of a data storage session and the compression
ratio is not changed during the entire back up ...."

Appellant respectfully submits that neither AAPA23 nor
AAPA4 suggests the desirability of combining such teachings. If the
teachings of AAPA23 and AAPA4 could be combined, it would only
be to allow the monitoring and control elements of AAPA23 to
control the speed by which data exits the buffer AAPA4 and the speed
of the tape drive. There is no basis for asserting that the monitoring
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and control elements of AAPA23 control the data compression engine
404 of AAPA4.

More specifically, Appellant respectfully submits that neither
AAPA4 nor AAPA23 suggest the desirability of a feedback
mechanism that monitors the level of compressed data in a buffer, and
based upon a predetermined level of data in that buffer, disables the
compression of data entering that buffer.

It is improper to use the claimed invention as an instruction
manual to piece together the teachings of the prior art so that the
claimed invention is rendered obvious. The Office Action appears to
use improper hindsight reconstruction to pick and choose among
isolated disclosures. Therefore, it is respectfully submitted that the
combination is improper. Accordingly, it is respectfully submitted that
the Appellant's data compression engine is patentable over the
combination of AAPA4 and AAPA23.

We agree with each of the above lines for reasoning set forth by
Appellant with regards to the Admitted Prior Art applied in the Examiner's
prior art rejection. Therefore, we cannot sustain the Examiner's rejection
based upon obviousness over the admitted prior art.

Statutory Subject Matter
With that said, we find that independent claim 29 is directed to a
program/software per se and we reject this claim under 35 U.S.C. § 101 as
directed to an abstract idea under our authority within 37 CFR 41.50(b).
The preamble of independent claims 29 recites "A memory storing
program instructions for causing a data processor to." This amounts to a
nominal recitation to a generic structure that performs no present tense
function in actuality. See Diamond v. Diehr, 450 U.S. 175, 191 (1981). See
also Ex parte Gutta, 93 USPQ2d 1025 (BPAI 2009) (precedential) (holding
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that system claim 14 was nonstatutory under § 101 despite reciting a
memory and processor). Independent claim 29 recites in its preamble,
assuming arguendo we interpret a memory to be a "medium" that contains
program instructions, and the body of this claim recites program instructions
“to” (in the future) perform specified functions as reflected in the body of
independent claim 29.
Additionally, claim 29 covers both nonstatutory subject matter and
statutory subject matter since it is broad enough to encompass both
transitory and non-transitory medium embodiments as noted above from
Appellant’s Specification which states that "Alternatively, any other
convenient arrangement could be used to provide the functions performed by
processor 506 and control elements 507". Note also the analysis provided
by Subject Matter of Eligibility of Computer Readable Media, 1351 Off.
Gaz. Pat. Office 212 (Feb. 23, 2010).
Therefore, we conclude that independent claim 29 is directed to an
abstract idea of software per se.

VI. CONCLUSION
For the aforementioned reasons, the Examiner has not set forth a
sufficient initial showing of obviousness of claims 22-27 and 29. We
conclude that independent claim 29 is directed to an abstract idea of
software per se.

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VII. ORDER
We reverse the obviousness rejection of claims 22-27 and 29. We
have entered a new grounds of rejection of independent claim 29, within the
provisions of 37 C.F.R. § 41.50(b).
A new ground of rejection is pursuant to 37 C.F.R. § 41.50(b).
Section 41.50(b) provides that, “[a] new ground of rejection pursuant to this
paragraph shall not be considered final for judicial review.”
Section 41.50(b) also provides that the Appellant, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new grounds of rejection to
avoid termination of proceedings as to the rejected claims:

(1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new evidence relating
to the claims so rejected, or both, and have the matter
reconsidered by the Examiner, in which event the proceeding
will be remanded to the Examiner. . . .

(2) Request rehearing. Request that the proceeding be
reheard under 37 C.F.R. § 41.52 by the Board upon the same
record. . . .

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)(v).

REVERSED; 37 C.F.R. § 41.50(b)
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