Ex Parte Roth

Board of Patent Appeals and Interferences

Jun 15, 2009

10440154 (B.P.A.I. Jun. 15, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE

__________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte STEVEN ROTH
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Appeal 2008-004148
Application 10/440,154
Technology Center 2100
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Decided1: June 17, 2009
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Before HOWARD B. BLANKENSHIP, ST. JOHN COURTENAY III, and
STEPHEN C. SIU, Administrative Patent Judges.

SIU, Administrative Patent Judge.

DECISION ON APPEAL

1 The two month time period for filing an appeal or commencing a civil
action, as recited in 37 CFR § 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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STATEMENT OF THE CASE
This is a decision on appeal under 35 U.S.C. § 134(a) from the
Examiner’s rejection of claims 1-6, 8-13, and 15-20. Claims 7 and 14 have
been cancelled. We have jurisdiction under 35 U.S.C. § 6(b). We affirm in
part.

The Invention
The disclosed invention relates generally to providing a list of services
in a module definition on which a module depends (Spec. 3).
Independent claim 1 is illustrative:
1. A computer-implemented method for updating an
operating system O/S by resolving interface dependencies in kernel
modules, comprising:
determining an O/S version for which each module is designed;
determining a version of the updated O/S;
determining which modules are compatible with the updated
O/S, comprising comparing the O/S version for which each module is
designed to the version of the updated O/S; and
using the determination of compatible modules, retaining the
compatible modules in the O/S and removing the non-compatible
modules.

The Rejections
1. The Examiner rejects claims 8-13 and 15-20 under 35 U.S.C. § 101 as
being directed to non-statutory subject matter.
2. The Examiner rejects claims 1-6, 8-13, and 15-20 under 35 U.S.C. §
112, 1st paragraph as failing to comply with the enablement
requirement.
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ISSUE #1
The Examiner finds that “[t]he instant specification appears to
describe such [computer-readable] media as including within their scope
carrier waves encoded with functional descriptive material” (Ans. 3) and the
computer-readable medium recited in claims 8-13 “do not fall within any of
the categories of patentable subject matter set forth in 35 U.S.C. § 101” (id.).
Appellant asserts that “[n]owhere does the specification state that the
computer readable medium 310 includes carrier waves” (Reply Br. 1).
Did Appellant demonstrate that the Examiner erred in finding that the
instant Specification discloses that the computer-readable medium recited in
claims 8-13 includes carrier waves?

ISSUE #2
The Examiner finds that “[t]he instant specification appears to suggest
that such a ‘mechanism’ and ‘receiving device’ [recited in claims 15-20] are
merely software, i.e., functional descriptive material, per se” (Ans. 5) and
that “[c]laims 15-20 do not define any structural and functional
interrelationships between the software elements and a computer” (id.).
Appellant asserts that “[t]he claimed mechanism is defined in the
specification as implemented on a computer” (Reply Br. 2) and that “[o]ne
means for implementing the mechanism of claim 15 is as part of a computer
readable medium” (id.).
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Did Appellant demonstrate that the Examiner erred in finding that the
mechanism and receiving device recited in claims 15-20 “are merely
software”?

ISSUE #3
The Examiner finds that “[t]he Specification . . . fails to correlate the
version of the module to the version of the updated operating system . . . to
arrive at ‘an O/S version for which each module is designed,’ such that a
direct comparison to determine compatibility would [not] be possible
without undue experimentation” (Ans. 6).
Appellant asserts that “the claimed comparison is between
dependencies associated with the updated O/S . . . and the . . . dependencies
of each of the kernel modules” (Reply Br. 3) and argues that “the subject
matter of claim 1 is enabled” (id.).
Did Appellant demonstrate that the Examiner erred in finding that
claims 1-6, 8-13, and 15-20 contain subject matter not described in the
Specification as to enable one skilled in the art to make and/or use the
invention?

ISSUE #4
Appellant asserts that a “previously provided . . . reference from 1993
. . . [shows] that use of kconfig modules was well known in the art” (Reply
Br. 4) and that “this reference specifically refers to kconfig as providing a
system for configuring, linking, and installing a new kernel” (id.).
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The Examiner finds that “the provided evidence fails to demonstrate
how the kconfig utility provides the recited claim elements, i.e., the kconfig
module providing an O/S interface on which each module of an updated O/S
depends. See UNIX, Sun Technical Bulletin-November 1993 at p. 5, first
paragraph” (Ans. 10) and that “undue experimentation would be required for
one of ordinary skill in the art to implement” a kconfig module as recited in
claim 5 (Ans. 7).
Did Appellant demonstrate that the Examiner erred in finding that
undue experimentation on the part of one of skill in the art would have been
required to utilize a kconfig module as recited in claim 5?

FINDINGS OF FACT
The following Findings of Facts (FF) are shown by a preponderance
of the evidence.
1. The Specification discloses that “a computer readable medium 310 is
provided with appropriate programming 320” (Spec. 5).
2. The Specification discloses that “[t]he computer readable medium . .
. may be any known medium, including optical discs, magnetic discs,
hard discs, and other storage devices” (Spec 5) and that
“[a]lternatively, the programming . . . may be provided using a
carrier wave” (id.).
3. The Specification discloses “appropriate programming 320,
including the receiving device 100, the OS module 120, and the O/S
update module 130 (shown in Figure 3)” (Spec. 5).
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4. UNIX, Sun Technical Bulletin, November 1993 discloses an
“INTERACTIVE UNIX System Kernel Configuration Link Kit,
kconfig, [that] provides a system for configuring, linking, and
installing a new kernel” (page 5) and “provides a menu option that
allows adding both pre-defined memory size-based tunable
parameters and individual tunable parameters to the current
configuration” (id.).

PRINCIPLES OF LAW
Statutory Subject Matter
Our reviewing court has recently held that transitory, propagating
signals, such as carrier waves, are not within any of the four statutory
categories (process, machine, manufacture or composition of matter).
Therefore, a claim directed to computer instructions embodied in a signal is
not statutory under 35 U.S.C. § 101. In re Nuijten, 500 F.3d 1346, 1357
(Fed. Cir. 2007), reh’g denied en banc, 515 F.3d 1361 (Fed. Cir. 2008), and
cert. denied, 129 S. Ct. 70 (2008).

35 U.S.C. § 112, first paragraph
Enablement
The first paragraph of 35 U.S.C. § 112 requires, among other things,
that the specification of a patent enable any person skilled in the art to which
it pertains to make and use the claimed invention. Although the statute does
not say so, enablement requires that the specification teach those in the art to
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make and use the invention without “undue experimentation.” In re Wands,
858 F.2d 731, 737 (Fed. Cir. 1988). Whether undue experimentation is
required is a conclusion reached by weighing several underlying factual
inquiries. Id.
The factors to be considered in determining whether a disclosure
would require undue experimentation include:
(1) the quantity of experimentation necessary, (2) the amount of
direction or guidance presented, (3) the presence or absence of
working examples, (4) the nature of the invention, (5) the state
of the prior art, (6) the relative skill of those in the art, (7) the
predictability or unpredictability of the art, and (8) the breadth
of the claims (footnotes omitted).
Id.
The Examiner bears the initial burden of setting forth a reasonable
explanation as to why the scope of protection provided by the claims is
thought to be not adequately enabled by the description of the invention
provided in the specification. If that burden is met, the burden then shifts to
the applicant to provide proof that the specification is indeed enabling. In re
Wright, 999 F.2d 1557, 1561-62 (Fed. Cir. 1993).

ANALYSIS

Issue #1
Appellant argues that “[n]owhere does the specification state that the
computer readable medium 310 includes carrier waves” (Reply Br. 1). We
agree. As described above, the Specification discloses that a computer
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readable medium (e.g., optical, magnetic, or hard discs) contains
programming (FF 1) and that the programming may, in the alternative, be
provided “using a carrier wave” (FF 2) (i.e., rather than provided via a
computer readable medium). However, we do not find, and the Examiner
has not demonstrated, that the Specification also discloses that the computer
readable medium itself may be a carrier wave.
Accordingly, we conclude that Appellant has met the burden of
showing that the Examiner erred in rejecting claim 8-13 with respect to issue
#1.

Issue #2
Based on Appellant’s arguments in the Appeal Brief, we will decide
the appeal with respect to the § 101 rejection of claims 15-20 on the basis of
claim 15 alone. See 37 C.F.R. § 41.37(c)(1)(vii).
As described above, the Specification discloses that programming on
a computer-readable medium “includ[es] the receiving device 110, the O/S
module 120, and the O/S update module 130” (FF 3). Because each element
of the mechanism recited in claim 15 (i.e., a receiving device and an O/S
update module) constitutes no more than “programming” (as disclosed in the
Specification) and “programming” includes computer code that executes
mathematical algorithms in the manipulation of ideas, we agree with the
Examiner that the mechanism of claim 15 is “merely software” that does no
more than manipulate basic mathematical constructs. Subject matter that
“describe[s] nothing more than the manipulation of basic mathematical
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constructs” are not patentable and “taking several abstract ideas and
manipulating them together adds nothing to the basic equation.” In re
Warmerdam, 33 F.3d 1354, 1360 (Fed. Cir. 1994) (holding that the
dispositive issue for assessing compliance with § 101 . . . is whether the
claim is for a process that goes beyond simply manipulating ‘abstract ideas’
or ‘natural phenomena’”). Thus, we also agree with the Examiner that claim
15 is directed to non-statutory subject matter.
For at least the aforementioned reasons, we conclude that Appellant
has not sustained the requisite burden on appeal in providing arguments or
evidence persuasive of error in the Examiner’s rejection of claims 15, and of
claims 16-20 which fall therewith with respect to issue #2.

Issue #3
While the Examiner finds that it would not have been possible for one
of ordinary skill in the art to have determined an O/S version for which a
module is designed or to have compared the O/S version with an updated
O/S version without engaging in undue experimentation, the Examiner has
not provided support for this finding.
“Whether undue experimentation is needed is not a single, simple
factual determination, but rather is a conclusion reached by weighing many
factual considerations.” In re Wands, 858 F.2d 731, 737 (Fed. Cir. 1988).
We find no indication that the Examiner has considered any such factors
including, for example, “(1) the quantity of experimentation necessary, (2)
the amount of direction or guidance presented, (3) the presence or absence of
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working examples, (4) the nature of the invention, (5) the state of the prior
art, (6) the relative skill of those in the art, (7) the predictability or
unpredictability of the art, and (8) the breadth of the claims.” Id.
Of course, “it is not necessary that a court review all the Wands
factors to find a disclosure enabling. They are illustrative, not mandatory.”
Amgen, Inc. v. Chugai Pharm. Co., 927 F.2d 1200, 1213 (Fed. Cir. 1991).
However, in the present case, we find that the statements that the Examiner
chose to make in lieu of a discussion of the Wands factors do not sufficiently
demonstrate that one of ordinary skill in the art, in order to determine an O/S
version for which a module is designed and comparing that O/S version to
an updated version of the O/S, would have needed to engage in undue
experimentation.
Accordingly, we conclude that Appellant has met the burden of
showing that the Examiner erred in rejecting claims 1-6, 8-13, and 15-20
with respect to issue #3.

Issue #4
Claim 5 recites kernel modules that depend on an O/S interface
provided by a kconfig module. Appellant argues that a “reference from
1993” (i.e., UNIX, Sun Technical Bulletin, November 1993 (“UNIX”))
discloses a “Kernel Configuration Link Kit” or “kconfig.” As described
above, UNIX discloses a kconfig module that configures “a new kernel.” (FF
4.)
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As above, while it is not necessary to review all the Wands factors to
determine if a disclosure is enabling, we find that the statements that the
Examiner chose to make in lieu of a Wands factors analysis insufficient to
demonstrate, given the level of skill in the art at the time of the invention,
that undue experimentation would have been required on the part of one of
ordinary skill in the art to have utilized a kconfig module to provide an O/S
interface. This is particularly the case given that UNIX discloses that it was
known in the art that a kconfig module configures kernels (i.e., kernel
modules) and that modules may depend on O/S interfaces (e.g., UNIX).
Accordingly, we conclude that Appellant has met the burden of
showing that the Examiner erred in rejecting claims 5, 10, and 18 with
respect to issue #4.

CONCLUSIONS
Based on the findings of facts and analysis above, we conclude that
Appellant has failed to demonstrate that the Examiner erred in finding that
the mechanism and receiving device recited in claims 15-20 “are merely
software.” (Issue #2.)
However, Appellant has demonstrated that the Examiner erred in
finding that the instant Specification discloses that the computer-readable
medium recited in claims 8-13 includes carrier waves (issue #1), that claims
1-6, 8-13, and 15-20 contain subject matter not described in the
Specification as to enable one skilled in the art to make and/or use the
invention (issue #3), and that undue experimentation on the part of one of
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skill in the art would have been required to utilize a kconfig module as
recited in claim 5 (issue #4).

DECISION
We affirm the Examiner’s decision rejecting claims 15-20 under
35 U.S.C. § 101. We reverse the Examiner’s decisions rejecting claims 8-13
under 35 U.S.C. § 101 and claims 1-6, 8-13, and 15-20 under
35 U.S.C. § 112, 1st paragraph.
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-IN-PART.

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