Ex Parte Pudipeddi et al

Board of Patent Appeals and Interferences

Apr 27, 2010

10700729 (B.P.A.I. Apr. 27, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte RAVISANKAR V. PUDIPEDDI and BRIAN K. DEWEY
____________________

Appeal 2009-001875
Application 10/700,7291
Technology Center 2100
____________________

Decided: April 27, 2010
____________________

Before JAY P. LUCAS, THU A. DANG, and STEPHEN C. SIU,
Administrative Patent Judges.

LUCAS, Administrative Patent Judge.

DECISION ON APPEAL

1 Application filed November 4, 2003. The real party in interest is Microsoft
Corporation.
Appeal 2009-001875
Application 10/700,729

STATEMENT OF THE CASE
Appellants appeal from a final rejection of claims 1 and 3 to 34 under
authority of 35 U.S.C. § 134(a). The Board of Patent Appeals and
Interferences (BPAI) has jurisdiction under 35 U.S.C. § 6(b). Claim 2 is
cancelled.

We affirm.

The file system filter drivers of a computer are organized in a
formation commonly known as a “driver stack.” (See Spec. 2, ll. 7-17.)
When the computer boots up, its software drivers perform their operations
(e.g., scanning file data for viruses, enforcing disk usage quotas, and
encrypting data) in a given order corresponding to the stack (id.).
Appellants’ invention relates to mapping a number (i.e., “an altitude”)
to each filter driver loaded in a computer system. (See Spec. 5, ll. 4-6.)
When new drivers (i.e., “minifilters”) are added to a stack of legacy system
drivers, the method establishes an optimal order for loading all of the
drivers. (See Spec. 10, ll. 10-14; but see also Spec. 4, ll. 5-7.) In the words
of Appellants:
This invention permits the filter manager to insert
newer “minifilters” between other filters to create
a new framework. Working within a legacy filter
framework, minifilters can be moved as desired.
… Thus, [the] present invention advantageously
enhances the ability of a filter manager to sort
incoming requests.
(Spec. 4, l. 28 to 5, l. 2.)
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Claims 1 and 13 are exemplary, and are reproduced below:
1. A computer system that facilitates management of a file
system filter, comprising:

at least one minifilter that has an integer altitude value
associated therewith; and

a filter manager that maps altitudes of the at least one
minifilter to legacy filter order groups.

13. A computer implemented method for managing a file
system filter, comprising:

loading at least one minifilter to a file system; and

determining an integer altitude value associated with the
at least one minifilter.

The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Golds US 2001/0020245 A1 Sep. 06, 2001

REJECTIONS
The Examiner rejects the claims as follows:

R1: Claims 1 and 3 to 34 stand rejected under 35 U.S.C. § 101 for being
directed to non-statutory subject matter.
R2: Claims 1 and 3 to 34 stand rejected under 35 U.S.C. § 102(e) for
being anticipated by Golds.
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First, Appellants contend that the claimed subject matter is statutory
because the Examiner’s determination that the claims be “limited to a
practical application within the technological arts lacks support from either
35 U.S.C. § 101 or the Federal Courts’ precedential interpretation.” (App.
Br. 6, middle). Second, Appellants argue that the claimed subject matter is
not anticipated by Golds because the reference fails to teach “an integer
altitude value,” as recited in exemplary claim 1 (App. Br. 8, top). The
Examiner contends that each of the claims is properly rejected (Ans. 15,
top).
The rejections will be reviewed in the order argued by Appellants.
The claims are grouped as per Appellants’ Briefs. Only those arguments
actually made by Appellants have been considered in this opinion.
Arguments that Appellants could have made but chose not to make in the
Briefs have not been considered and are deemed to be waived. See
37 C.F.R. § 41.37(c)(1)(vii).

ISSUES
The issues involve whether Appellants have shown that the Examiner
erred in rejecting the claims under 35 U.S.C. §§ 101 and 102(e). The first
and second of the three issues turn on whether the claimed subject matter is
statutory. Specifically, the first issue is whether claim 13 meets the machine-
or-transformation test set forth in In re Bilski, cited below. The second issue
is whether independent claim 1 has a “real-world use” in accordance with
the Board’s recent precedential opinion, Ex parte Gutta, cited below. The
third issue specifically turns on whether the Golds reference teaches
Appellants’ claimed “integer altitude value” of claim 1.
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FINDINGS OF FACT
The record supports the following findings of fact (FF) by a
preponderance of the evidence.
Disclosure
1. Appellants have invented a method and system of mapping integer values
associated with minifilters to legacy filter order groups (claim 1).
Appellants’ method involves calculating a number called an “altitude.”
(See claim 1; Spec. 5, ll. 4-6.)
Golds
2. The Golds reference teaches mapping whole numbers associated with
new filter drivers to groups of legacy system filter drivers. (See Figs. 2
and 3; ¶¶ [0030], [0033], [0036], [0038], [0041].)

PRINCIPLES OF LAW
Appellants have the opportunity on appeal to the Board to
demonstrate error in the Examiner’s position. See In re Kahn, 441 F.3d 977,
985-86 (Fed. Cir. 2006).

The Court of Appeals for the Federal Circuit (CAFC) has recently
clarified the law regarding patent eligible subject matter for process claims.
In re Bilski, 545 F.3d 943 (Fed. Cir. 2008) (en banc). The en banc court in
Bilski held that “the machine-or-transformation test, properly applied, is the
governing test for determining patent eligibility of a process under § 101.”
Id. at 956. The court in Bilski further held that “the ‘useful, concrete and
tangible result’ inquiry is inadequate [to determine whether a claim is patent-
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eligible under § 101.]” Id. at 959-960. The court explained the machine-or-
transformation test as follows:
The machine-or-transformation test is a two-branched inquiry;
an applicant may show that a process claim satisfies § 101 either by
showing that his claim is tied to a particular machine, or by showing
that his claim transforms an article. See [Gottschalk v.] Benson, 409
U.S. [63, 70 (CCPA 1972)]. Certain considerations are applicable to
analysis under either branch. First, as illustrated by Benson and
discussed below, the use of a specific machine or transformation of an
article must impose meaningful limits on the claim's scope to impart
patent-eligibility. See Benson, 409 U.S. at 71-72. Second, the
involvement of the machine or transformation in the claimed process
must not merely be insignificant extra-solution activity. See [Parker
v.] Flook, 437 U.S. [584, 590 (1978)]

Id. at 961-62.

Laws of nature, physical phenomena and abstract ideas are excluded
from patent protection. Diamond v. Diehr, 450 U.S. 175, 185 (1981).

“[L]imitations are not to be read into the claims from the
specification.” In re Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993)
(citing In re Zletz, 893 F.2d 319, 321 (Fed. Cir. 1989)).

“[W]e conclude that [the] claim … fails to recite any tangible
practical application in which the mathematical algorithm is applied that
results in a real-world use.” Ex parte Gutta, No. 2008-4366, 2009 WL
2563524, at *9 (BPAI 2009) (precedential).

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ANALYSIS
From our review of the administrative record, we find that the
Examiner presents his conclusions of unpatentability on pages 3 to 10 of the
Examiner’s Answer. In opposition, Appellants present a number of
arguments.

Argument with respect to the rejection
of claims 1 and 3 to 34
under 35 U.S.C. § 101 [R1]

Appellants’ argument addresses the issue of statutory subject matter
under 35 U.S.C. § 101.
Appellants argue: “[The] Examiner’s contention that the … claims
must be limited to a practical application within the technological arts lacks
support from either 35 U.S.C. 101 or the Federal Courts’ precedential
interpretation.” (App. Br. 6, middle).
We begin the analysis by noting that the “useful, concrete, and
tangible result” test (see State St. Bank & Trust Co. v. Signature Fin. Group,
Inc., 149 F.3d 1368, 1373 (Fed. Cir. 1998)) relied upon by the Examiner in
the Answer was later clarified by the decision in In re Bilski, cited above.
Notwithstanding this observation, we agree with the Examiner.
In light of the CAFC’s guidance on statutory subject matter in Bilski,
cited above, we analyze exemplary independent method claim 13 based
upon the machine-or-transformation test. Regarding the machine prong of
the Bilski test, we interpret the claimed “file system filter” and “minifilter”
as reading on software, which is consistent with the disclosure (Spec. 7, ll.
12-14 and 20-21). Further, we broadly construe Appellants’ claimed “file
system” as reading on any system containing files. This Board places no
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further limitation on what “file system” means, represents, or includes, since
Appellants chose not to specifically limit the claimed “file system” in any
way. Thus, Appellants’ “file system” (claim 13) is tied to no particular
machine. Since Appellants’ claimed “filed system” is not tied to a particular
machine, claim 13 fails to meet the first prong of Bilski.
Regarding Bilski’s transformation prong, claim 13 merely recites
“determining an integer altitude value.” “[D]etermining an integer altitude
value” is synonymous with the calculation of a number, where the number
represents a ranking or ordering of the filter drivers. We thus find that
Appellants have claimed a method of calculating a number (FF#1). Since
Appellants’ claimed “determining” step is merely the calculation of a
number (i.e., a mathematical abstraction) (FF#1), we conclude that claim 13
fails to meet the transformation prong of Bilski, cited above. (See also
Diamond v. Diehr, cited above.) Accordingly, we find that “determining an
integer altitude value” is not a data transformation (i.e., no “article” is
transformed) that meets the second prong of In re Bilski. In light of our
findings that claim 13 meets neither the machine nor the transformation
prong of Bilski, cited above, we find no error in the Examiner’s rejection
[R1] under 35 U.S.C. § 101 of claim 13.
Next, we consider independent claim 1, which recites a “system.”
The claim includes “a filter manager,” “altitudes,” and “at least one
minifilter.”
“[W]e conclude that [the] claim … fails to recite any tangible
practical application in which the mathematical algorithm is applied that
result[s] in a real-world use.” Ex parte Gutta, cited above.
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We find that that the algorithms resulting in “at least one minifilter
that has an integer altitude value associated therewith” and “a filter manager
that maps altitudes of the at least one minifilter” are abstract ideas having no
“real-world use” in accordance with the teachings of Ex parte Gutta, cited
above. That is, where Appellants’ claim merely “maps altitudes,” such
activity is merely the assignment of a number (FF#1). We note that no use,
in the claim language, is made of this number (i.e., the claimed “integer
altitude value”). In light of Gutta, Appellants’ claimed “filter manager that
maps” fails to meet the statutory subject matter test under 35 U.S.C. § 101
since number assignment alone (i.e., absent any application of the mapping
in a useful manner) has no claimed “real-world” value. Further, we treat
Appellants’ addition of recited structure (i.e., the claimed “filter manager,”
“altitudes,” and “at least one minifilter” of claim 1) to the underlying method
of mapping an “altitude” (i.e., a number) (see FF#1) as merely a pro forma
claims drafting technique. These recitations fail to produce any
demonstrable real-world effect. To the extent (if any) these recitations
represent structural elements, a “filter manager,” “altitudes,” and “at least
one minifilter” are merely “insignificant extra-solution activity” or “field-of-
use limitations” as described in the Bilski decision. Bilski, 545 F.3d at 957.
In other words, claim 1 is simply a method claim dressed in the form of a
system claim. Accordingly, we find no error in the rejection [R1] of claim 1.

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Arguments with respect to the rejection
of claims 1 and 3 to 34
under 35 U.S.C. § 102(e) [R2]

Next, Appellants contend that the claims “[employ] and [assign]
integer values to facilitate ordering of file systems and file system filters,”
whereas the Golds reference assigns “floating point values to software
modules.” (App. Br. 8, top).
We find unconvincing Appellants’ argument that assigning “floating
point values to software modules” is not the same as “at least one minifilter
that has an integer altitude value associated therewith,” as recited in
exemplary claim 1, for the following reasons. We find that Appellants have
claimed a method and system of mapping integer values associated with
minifilters to legacy filter order groups (FF#1). In comparison, the Golds
reference teaches mapping whole numbers associated with new filter drivers
(Appellants’ claimed “minifilters”) to groups (Appellants’ claimed “legacy
filter order groups”) of legacy system filter drivers (FF#2). Besides
“floating point values” being assigned in Golds, the patent a few lines later
also says: “[A]ny system can be used, as long as there are relative values
within the system that can be used to determine an order. Note that it is also
feasible to implement a scheme wherein whole numbers are used.”
(¶ [0036]). Thus, the reference teaches employing and assigning whole
numbers (and not just floating point values) to facilitate ordering of file
systems and file system filters. A person of ordinary skill in the art would
have recognized Golds’s teaching of a whole-number scheme of ordering
filter drivers (FF#2) as being no different from the use of an “integer altitude
value” for “[mapping] altitudes,” as claimed. Thus, we are not persuaded by
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Appellants’ argument concerning “floating point values.” Accordingly, we
find no error in the rejection under 35 U.S.C. § 102(e).

CONCLUSION OF LAW
Based on the findings of facts and analysis above, we conclude that
the Examiner did not err in rejecting claims 1 and 3 to 34 under 35 U.S.C.
§§ 101 and 102(e).

DECISION
The Examiner’s rejections [R1, R2] of claims 1 and 3 to 34 are
affirmed.

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

peb

WOLF GREENFIELD (MICROSOFT CORPORATION)
C/O WOLF, GREENFIELD & SACKS P.C.
600 ATLANTIC AVENUE
BOSTON, MA 02210-2206
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