Ex Parte Owhadi et al

Board of Patent Appeals and Interferences

Apr 26, 2010

10652892 (B.P.A.I. Apr. 26, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte ERIC OWHADI and RAJPAL GILL
___________

Appeal 2009-003737
Application 10/652,892
Technology Center 2100
____________

Decided: April 26, 2010
____________

Before JOHN A. JEFFERY, JAMES D. THOMAS, and
ST. JOHN COURTENAY III, Administrative Patent Judges.

COURTENAY, Administrative Patent Judge.

DECISION ON APPEAL

This is a decision on appeal under 35 U.S.C. § 134(a) (2002) from the
Examiner’s rejection of claims 1-20. We have jurisdiction under 35 U.S.C.
§ 6(b).
We affirm.

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STATEMENT OF THE CASE
INVENTION
The invention on appeal relates to “technical support systems which
are used to provide users of electronic devices, data processing apparatus
and computer systems with post-sale technical support, whereby software,
hardware or other operational problems and difficulties may be resolved
without the need for the user to return the equipment to the point of sale or
to take the apparatus to a workshop or the like.” (Spec. 1, ll. 5-10).

ILLUSTRATIVE CLAIM
1. A method of obtaining technical support for a data-
processing device, comprising initiating a support session
during which device-specific data is conveyed from the device
to a support provider to assist the support provider in
responding to a support query, and polling the support provider
for a response to the query, on a repeated and automated basis,
until a response becomes available or the support session is
terminated.

PRIOR ART
The Examiner relies upon the following references as evidence:
Bereiter US 6,145,096 Nov. 7, 2000
Monica Pawlan et al., “Signed Applets, Browsers, and File Access”,
Sun Microsystems, pp. 1-5, Apr. 1998. (hereinafter “Pawlan”).
Indigo Rose Software Forums, “AutoPlay After Restart”, p. 1, Mar.
2001. (Hereinafter “Indigo”).

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THE REJECTIONS
1. The Examiner rejected claims 15-17 under 35 U.S.C. § 112,
first paragraph, for failing to comply with the written
description requirement.
2. The Examiner rejected claims 15-17 under 35 U.S.C. § 101 as
being directed to non-statutory subject matter.
3. The Examiner rejected claims 1, 2, 8, 9, and 12 under 35 U.S.C.
§ 102(b) as anticipated by Bereiter.
4. The Examiner rejected claims 10, 11, 13-18, and 20 under
35 U.S.C. § 103(a) as unpatentable over the combination of
Bereiter and Pawlan.
5. The Examiner rejected claims 3-7 and 19 under 35 U.S.C.
§ 103(a) as unpatentable over the combination of Bereiter,
Pawlan, and Indigo.

CLAIM GROUPING
Based upon Appellants’ arguments in the Brief, we select claim 1 and
as the representative claim for the anticipation rejection, and we select
claims 13 and 3 as representative claims for the first and second stated
obviousness rejections, respectively. See 37 C.F.R. § 41.37(c)(1)(vii).

ISSUES
Based upon our review of the administrative record, we have
determined that the following issues are dispositive in this appeal:

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Issue 1: Under the written description requirement of
§ 112, first paragraph, did the Examiner err by finding
that the subject matter of the “computer readable
medium” is not supported in the Specification as
originally filed? (Claim 15).

Issue 2: Under § 101, did the Examiner err in
concluding that claims 15-17 are directed to non-
statutory subject matter?

Issue 3: Under § 102, did the Examiner err by
finding that Bereiter discloses “polling the support
provider for a response to the query, on a repeated and
automated basis, until a response becomes available or
the support session is terminated?” (Claim 1).

PRINCIPLES OF LAW
112 first paragraph, Written Description
Recently, the Court of Appeals for the Federal Circuit decided en banc
the scope and purpose of the written description requirement within the first
paragraph of 35 U.S.C. § 112. The court reaffirmed that the written
description requirement found in the first paragraph of 35 U.S.C. § 112 is
separate and distinct from the enablement requirement of that provision.
Ariad Pharms., Inc. v. Eli Lilly and Co., --- F.3d ----, 2010 WL 1007369, at
*12 (Fed. Cir. 2010) (en banc) (citing Vas-Cath, Inc. v. Mahurkar, 935 F.2d
1555, 1562-63 (Fed. Cir. 1991)). Further, the purpose of the written
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description requirement in 35 U.S.C. § 112, first paragraph, is to “clearly
allow persons of ordinary skill in the art to recognize that [the inventor]
invented what is claimed.” Ariad, 2010 WL 1007369, at *12.
Accordingly, “the test for sufficiency is whether the disclosure of the
application relied upon reasonably conveys to those skilled in the art that the
inventor had possession of the claimed subject matter as of the filing date.”
Id. (citing Ralston Purina Co. v. FarMar-Co, Inc., 772 F.2d 1570, 1575
(Fed. Cir. 1985)). The hallmark of the written description is disclosure.
Ariad, 2010 WL 1007369, at *12. As such, not just possession, but
“‘possession as shown in the disclosure’ is a more complete formulation.”
Id. Thus, the test for whether the claims are adequately described “requires
an objective inquiry into the four corners of the specification from the
perspective of a person of ordinary skill in the art.” Id. “Based on that
inquiry, the specification must describe an invention understandable to that
skilled artisan and show that the inventor actually invented the invention
claimed.” Id. This inquiry is a question of fact. Id. (citing Ralston Purina,
772 F.2d at 1575). “[T]he level of detail required to satisfy the written
description requirement varies depending on the nature and scope of the
claims and on the complexity and predictability of the relevant technology.”
Ariad, 2010 WL 1007369, at *12 (citing Capon v. Eshhar, 418 F.3d 1349,
1357-58 (Fed. Cir. 2005)).

Anticipation under § 102
In rejecting claims under 35 U.S.C. § 102, “[a] single prior art
reference that discloses, either expressly or inherently, each limitation of a
claim invalidates that claim by anticipation.” Perricone v. Medicis Pharm.
Corp., 432 F.3d 1368, 1375 (Fed. Cir. 2005) (citing Minn. Mining & Mfg.
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Co. v. Johnson & Johnson Orthopaedics, Inc., 976 F.2d 1559, 1565 (Fed.
Cir. 1992)).
Anticipation of a patent claim requires a finding that the claim
at issue ‘reads on’ a prior art reference. In other words, if
granting patent protection on the disputed claim would allow
the patentee to exclude the public from practicing the prior art,
then that claim is anticipated, regardless of whether it also
covers subject matter not in the prior art.

Atlas Powder Co. v. IRECO, Inc., 190 F.3d 1342, 1346 (Fed. Cir. 1999)
(citations omitted).

FINDINGS OF FACT
In our analysis infra, we rely on the following findings of fact (FF)
that are supported by the record:
Appellants’ Specification
1. Independent claim 15 was amended on May 1, 2007 to recited “A
software element on a computer readable medium . . . .”

The Bereiter Reference
2. Bereiter discloses:
Generalizing, and with reference to FIG. 2, the
automated diagnostic method of the present invention may be
implemented in any remote distributed node "under test" 30
connectable to a diagnosis center operating at a server node 32.
A problem at the remote distributed node is diagnosed (and
preferably rectified) according to the invention using an
"iterative problem solving session" between the remote
distributed node 30 and the server node 32. An iterative
problem solving session refers to set of communications back
and forth between the node under test and the diagnostic center
by which a solution to a technical problem is reached. A session
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may involve only one "pass" or iteration although, more
typically, several iterations will be required to move toward a
corrective action to be implemented at the client node.

(Col. 4, l. 60  col. 5, l. 7, emphasis added).

3. Bereiter discloses:
A block diagram of the "client" piece of the present invention is
illustrated in FIG. 4. The client piece executes on the machine under
test (i.e. the machine on which the technical problem has arisen) to
perform an initial diagnosis in response to a given occurrence (e.g., a
PANIC), to submit the diagnosis to the diagnostic center, and to
collaborate with the server components in the center to perform
further tests in an iterative manner, and, if possible, to make repairs.
The major client components includes a session manager 50, a
diagnostic engine 52 and a graphical user interface (GUI) 54. The
session manager 50 takes the initial diagnosis (using a diagnostic
map), submits it to the server, tracks open problems, and coordinates
the flow of information between the client and the support center.

(Col. 6, ll. 9-22).

ANALYSIS
Issue 1
We decide the question of whether the Examiner erred in finding
under the written description requirement of § 112 that the subject matter of
the recited “computer readable medium” is not supported in the
Specification as originally filed.
In the principal Brief (7), Appellants restate the Examiner’s rejection
and submit the following arguments in opposition:
Appellants submit that this rejection elevates form over
function to heights bordering on the preposterous, as the
Examiner is in effect asserting that a person of skill in the
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art of computers would not understand, after reading
Appellants' disclosure, that the computer method disclosed
therein may be provided on a computer readable medium.
Appellants apologize for having to waste the Board's time with
a response to this assertion, and respectfully request the Board
to overturn this rejection on Appeal and, perhaps, educate the
Examiner as to why the disclosure of computer implemented
methods would imply to the skilled person the use of computer
readable media.

(App. Br. 7, emphasis added).
For the reasons discussed infra, we decline to accept Appellants’
invitation to “educate the Examiner.” (Id.).
Contrary to the Appellants’ strenuous contention that the Examiner’s
“rejection elevates form over function to heights bordering on the
preposterous” (id.), we find the evidence before us supports the Examiner’s
finding of fact.1 Based upon our review of the record, we find that
Appellants’ independent claim 15 was amended on May 1, 2007 to recite “A
software element on a computer readable medium . . . .” (FF 1, underline
added to emphasize new matter). As discussed infra, we find Appellants
have provided no evidence to demonstrate that the disputed “computer
readable medium” was present in the written description as originally filed.
(Claim 15).

1 The determination of whether a patent meets the written description
requirement is a “question of fact, judged from the perspective of one of
ordinary skill in the art as of the relevant filing date.” Falko-Gunter Falkner
v. Inglis, 448 F.3d 1357, 1363 (Fed. Cir. 2006) (citing Vas-Cath, 935 F.2d at
1563-64 (Fed. Cir. 1991).

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When a claimed limitation is not present in the written description, it
must be shown that a person of ordinary skill would have understood, at the
time the application was filed, that the description requires that limitation.
See Hyatt v. Boone, 146 F.3d 1348, 1353 (Fed. Cir. 1998).
Here, we note that Appellants’ arguments supra (App. Br. 7) fail to
point to any specific portion of the Specification that would have
purportedly conveyed with reasonable clarity to those skilled in the art that
Appellants were in possession of the disputed claim limitation (a computer
readable medium). See Purdue Pharma L.P., 230 F.3d at 1323. Thus, we
find Appellants have made no showing explaining why a person of ordinary
skill would have understood, at the time the application was filed, that the
description requires a computer readable medium.2
Moreover, prior to the amendment entered May 1, 2007, we agree
with the Examiner that Appellants’ claim 15 was directed to “[a] software
element,” i.e., software per se. (Ans. 3-4; see further discussion infra
regarding the Examiner’s § 101 rejection).
While Appellants urge the Board to “educate the Examiner as to why
the disclosure of computer implemented methods would imply to the skilled
person the use of computer readable media” (App. Br. 7), we note that the
question of written description support should not be confused with the

2 We note that mere attorney arguments and conclusory statements that are
unsupported by factual evidence are entitled to little probative value. In re
Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997); see also In re De Blauwe,
736 F.2d 699, 705 (Fed. Cir. 1984); 37 C.F.R. § 1.111(b); and Ex parte
Belinne, No. 2009-004693, slip op. at 7-8 (BPAI Aug. 10, 2009)
(informative), available at
http://www.uspto.gov/web/offices/dcom/bpai/its/fd09004693.pdf

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question of what would have been obvious (i.e., implied) to the artisan.
Whether one skilled in the art would find the instantly claimed invention
obvious in view of the disclosure is not an issue in the “written description”
inquiry. In re Barker, 559 F.2d 588, 593 (CCPA 1977). A description
which renders obvious the invention for which the benefit of an earlier date
is sought is not sufficient. Lockwood v. American Airlines, Inc., 107 F.3d
1565, 1572 (Fed. Cir. 1997).
This reasoning is applicable here. On this record, we find the
Examiner did not err in finding under the written description requirement of
§ 112 that the subject matter of the recited “computer readable medium” is
not supported in the Specification as originally filed.

Issue 2
35 U.S.C. § 101
We decide the question of whether the Examiner erred in concluding
that claims 15-17 are directed to non-statutory subject matter under § 101.
In the principal Brief (7-8), Appellants restate the Examiner’s
rejection and submit the following arguments in opposition:
Appellants note at the outset that in the space of one paragraph,
the Examiner has elevated the skilled person from being
confounded by a description that does not explicitly direct him
to use computer readable media to a state where he is able to
ignore the specific recitation of such computer readable media
and instead focus upon the software instructions contained
thereon, "per se." More to the point, Appellant note that this
pronouncement on the Examiner's part is completely senseless.
Whatever may "appear" to the Examiner aside, all words in a
claim must be considered in judging the patentability of that
claim against the prior art. In re Wilson, 424 F.2d 1382, 1385,
165 USPQ 494,496 (CCPA 1970)." (emphasis added) It is a
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well settled corollary of this doctrine that no word in a claim
can be ignored, as the Examiner attempts to do here. The mete
and bounds of Appellants' invention is defined by the claims,
and claim 15 very clearly recites a computer readable medium.
Appellants respectfully request the Board to overturn this
meritless rejection on Appeal as well, and pass this case to
issue.

(App. Br. 7-8, underline in original).

For the reasons discussed infra, we decline to accept Appellants’
invitation to “overturn this meritless rejection on Appeal . . . and pass this
case to issue.” (Id.).
At the outset, we note that the Board has no authority to issue
patents.3
Secondly, (as discussed supra) we agree with the Examiner that prior
to the amendment entered May 1, 2007, Appellants’ claim 15 was directed
to “[a] software element,” i.e., software per se. (Ans. 3-4). Thus, Appellants
ground their arguments urging reversal of this rejection on new matter added
by amendment. As previously discussed, we find the Examiner did not err in
finding under the written description requirement of § 112 that the subject
matter of the recited “computer readable medium” is not supported in
Appellants’ Specification as originally filed.

3 See 35 U.S.C. § 6(b) (“The Board of Patent Appeals and Interferences
shall, on written appeal of an applicant, review adverse decisions of
examiners upon applications for patents . . . .”).
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Thirdly, we conclude that the “software element” coupled with a
statement of intended use 4 of claims 15-17 is directed to an abstract idea. 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). Laws of nature, abstract ideas, and
natural phenomena are excluded from patent protection. Diamond v. Diehr,
450 U.S. 175, 185 (1981).
For at least these reasons, we find the Examiner did not err in
concluding that claims 15-17 are directed to non-statutory subject matter
under §101.

Issue 3
We decide the question of whether the Examiner erred in finding
under § 102 that Bereiter discloses “polling the support provider for a
response to the query, on a repeated and automated basis, until a response
becomes available or the support session is terminated.” (Claim 1).
Appellants contend that “[c]ontrary to the Examiner's assertion, the
client of Bereiter does not poll the support provider for a response; rather,
the support provider keeps polling the client (by repeatedly sending new

4 “An intended use or purpose usually will not limit the scope of the claim
because such statements usually do no more than define a context in which
the invention operates.” Boehringer Ingelheim Vetmedica, Inc. v. Schering-
Plough Corp., 320 F.3d 1339, 1345 (Fed. Cir. 2003). Although ''[s]uch
statements often . . . appear in the claim's preamble,'' In re Stencel, 828 F.2d
751, 754 (Fed. Cir. 1987), a statement of intended use or purpose can appear
elsewhere in a claim. Id.

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diagnostic maps to be solved by the client/on the client machine) until the
support provider is able to identify the problem and offer a solution.” (App.
Br. 4).
Appellants particularly urge reversal of the Examiner’s rejection for
the following reasons:
There are but two devices recited in claim 1, the data-
processing device and the support provider. Furthermore, the
claim clearly recites a method of obtaining technical support for
the data-processing device. Is the Examiner suggesting that it is
not the data-processing device that is conducting the polling of
the support provider? Does he suggest that a skilled person (or
anyone with a decent command of the English language, for
that matter) would interpret the claim as teaching that the
support provider polls itself! Or does he interpret the claim as
teaching that a third, unidentified, entity conducts this polling?
Of course, merely spending a few extra minutes actually
reading the specification would have eased all of these doubts
from the Examiner's mind, as he would have then
unequivocally learned that yes, it is indeed the client
that conducts the polling of the support provider.

(App. Br. 5, underline in original).

Regarding Appellants’ first contention, we begin our analysis by
observing that Appellants have not pointed to or argued a particular
definition or intended meaning for the claim term “polling.” Thus, we
conclude that the metes and bounds of the claimed “polling” are intended to
be broad. Therefore, we see no error in the Examiner’s finding that
“polling” broadly but reasonably reads on Bereiter’s iterative inquiries (from
the client to the server) to see whether the problem can be identified at the
server:

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Clearly, after the client sends a data set to the server, the client
is making a inquiry (e.g., polling) to the server asking to see
if the problem can be identified or asking the server to see if the
server needs any further information. If the problem can be
identified based on the information provided, the client is
provided with the solution and the client ends the inquiry. If the
problem cannot be identified, the client repeats the inquiry
with a new data set on an automated basis, until a response
becomes available or the support session is terminated.

(Ans. 13).
Moreover, we note that Bereiter discloses (with reference to FIG. 2),
an “automated diagnostic method [that] . . . may be implemented in any
remote distributed node [i.e., client] "under test" 30 connectable to a
diagnosis center operating at a server node 32. A problem at the remote
distributed node is diagnosed (and preferably rectified) according to the
invention using an "iterative problem solving session" between the remote
distributed node 30 and the server node 32.” (FF 2). Thus, we find Bereiter
discloses a method of obtaining technical support for a data-processing
device (client), within the meaning of Appellants’ claim. (Claim 1).
Because polling is iterative in nature, we find Bereiter’s “iterative
problem solving session [that] refers to set of communications back and
forth between the node under test [client] and the diagnostic center [server]
by which a solution to a technical problem is reached” necessarily involves
“polling” (i.e., iterative inquiries) by the client until a solution is provided by
the server. (FF 1). We particularly note that Bereiter discloses a session
manager 50 that is described as a major client component where “[t]he
session manager 50 takes the initial diagnosis (using a diagnostic map),
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submits it to the server, tracks open problems, and coordinates the flow of
information between the client and the support center [server].” (FF 3,
underlined added).
For at least the aforementioned reasons, we find the Examiner did not
err in determining under § 102 that Bereiter discloses “polling the support
provider for a response to the query, on a repeated and automated basis, until
a response becomes available or the support session is terminated.” (Claim
1). Therefore, we sustain the Examiner’s § 102 rejection of representative
claim 1, as well as associated dependent claims 2, 8, 9, and 12 which fall
therewith.

Limitations under § 103
Regarding the remaining independent claims 13, 14, 15, and 18,
Appellants essentially restate the previous argument that Bereiter does not
disclose polling by the client, but rather polling by the support provider or
server. (App. Br. 6).
Thus, for the same reasons discussed supra regarding claim 1, we do
not find Appellants’ arguments regarding the claimed polling to be
persuasive. Therefore, we affirm the Examiner’s rejection of representative
claim 13 as unpatentable under § 103 over the combination of Bereiter and
Pawlan. Claims 10, 11, 14-18, and 20 fall therewith. See 37 C.F.R.
§ 41.37(c)(1)(vii).

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Regarding claims 3-7 and 19 that the Examiner rejected under § 103
as unpatentable over the combination of Bereiter, Pawlan, and Indigo,
Appellants contend these claims are allowable by virtue of their dependency
from claims 1 and 18, respectively. (App. Br. 7). Thus, for the same reasons
discussed supra regarding claims 1 and 18, we do not find Appellants’
arguments to be persuasive. Accordingly, we affirm the Examiner’s
rejection of representative claim 3 as unpatentable under § 103 over the
combination of Bereiter, Pawlan, and Indigo. Claims 4-7 and 19 fall
therewith. See 37 C.F.R. § 41.37(c)(1)(vii).

CONCLUSIONS
Based on the findings of facts and analysis above:
The Examiner did not err in finding under the written description
requirement of § 112 that the subject matter of the recited “computer
readable medium” is not supported in the Specification as originally filed.
The Examiner did not err in concluding that claims 15-17 are directed
to non-statutory subject matter under §101.
The Examiner did not err in determining under § 102 that Bereiter
discloses “polling the support provider for a response to the query, on a
repeated and automated basis, until a response becomes available or the
support session is terminated.” (Claim 1; see commensurate limitations
argued regarding representative claim 13 rejected under § 103).

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ORDER
We affirm the Examiner’s rejection of claims 15-17 under 35 U.S.C.
§ 112, first paragraph.
We affirm the Examiner’s rejection of claims 15-17 under 35 U.S.C.
§ 101.
We affirm the Examiner’s rejection of claims 1, 2, 8, 9, and 12 under
35 U.S.C. § 102(b).
We affirm the Examiner’s rejection of claims 3-7, 10, 11, and 13-20
under 35 U.S.C. § 103(a).
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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