Ex Parte Sahita et al

Board of Patent Appeals and Interferences

Jun 13, 2012

11170925 (B.P.A.I. Jun. 13, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
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.
11/170,925 06/30/2005 Ravi Sahita P21437 5856
94221 7590 06/13/2012
Buckley, Maschoff & Talwalkar LLC/
Intel Corporation
50 Locust Avenue
New Canaan, CT 06840
EXAMINER
RIAD, AMINE
ART UNIT PAPER NUMBER
2113
MAIL DATE DELIVERY MODE
06/13/2012 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte RAVI SAHITA and URI BLUMENTHAL
____________

Appeal 2009-015265
Application 11/170,925
Technology Center 2100
____________

Before KRISTEN L. DROESCH, KALYAN K. DESHPANDE and
TREVOR M. JEFFERSON, Administrative Patent Judges.

DROESCH, Administrative Patent Judge.
DECISION ON APPEAL

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STATEMENT OF THE CASE
Appellants seek review under 35 U.S.C. § 134(a) of a final rejection
of claims 1-25, all of the claims pending in the Application. We have
jurisdiction under 35 U.S.C. § 6(b). We AFFIRM.
BACKGROUND
Appellants’ disclosed invention relates to exposing a resource data
record associated with diagnostic code to manage a manageable resource
enabling the resource data record to be discovered. The diagnostic code may
be loaded from a host memory indicated by the resource data record and into
a management platform based on the resource data record. Abs.
Claim 1 is illustrative and is reproduced below (disputed limitations in
italics):
1. A medium storing program code comprising:
code to provide a device driver, the device driver comprising a
resource data record and instrumentation code for
exposing managed resource data associated with the
device driver; and
diagnostic code to access the managed resource data exposed
by the instrumentation code and to perform a diagnostic
function based on the accessed managed resource data,
wherein the resource data record indicates a memory location
of the diagnostic code, a data type of the managed resource
data, and a type of provider used to access the managed
resource data.

Claims 1-8 stand rejected under 35 U.S.C. § 101 as directed to non-
statutory subject matter.
Claims 1-25 stand rejected under 35 U.S.C. § 102(b) as anticipated by
IBM Tivoli Monitoring Version 5.1.1. Creating Resource Models and
Providers (“Tivoli”).

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ISSUES
Did the Examiner err in determining that claims 1-8 are directed to
computer software per se?
Did the Examiner err in finding that Tivoli describes “the resource
data record indicates a memory location of the diagnostic code, a data type
of the managed resource data, and a type of provider used to access the
managed resource data,” as recited in claim 1?
ANALYSIS
We have reviewed the Examiner’s rejection in light of Appellants’
arguments in the Appeal Brief presented in response to the Final Office
Action and Appellants’ arguments in the Reply Brief presented in response
to the Answer. We disagree with Appellants’ conclusions and highlight and
address specific findings and arguments for emphasis as follows.
Rejection of claims 1-8 under § 101
The Examiner determined that the recitation of “[a] medium storing
program code” raises a question as to whether the claims are directed to an
abstract idea that would not result in a practical application that would
produce a concrete, useful, and tangible result. Ans. 3. More particularly, the
Examiner determined that the claimed invention is directed to software per
se; it is merely a set of instructions capable of being executed by a computer.
Id. The Examiner explains that the computer program itself is not a statutory
process in that it does not include the computer-readable medium needed to
realize the functionality of the computer program. Ans. 3.
Appellants cite to In re Bilski, 545 F.3d 943 (Fed Cir. 2008) (en banc)
as holding that the “useful, concrete and tangible result” inquiry is improper

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and assert that therefore the rejection is also improper. App. Br. 5.
Appellants also direct attention to the Specification as disclosing that the
claimed medium “may comprise any medium for storing electronic data that
is or becomes known.” App. Br. 5 (citing ¶ 30 of Appellants’ Published
Application 2002/0011676, corresponding to Spec. p. 6, ll. 24-25).
Appellants argue that based on the Specification, claims 1-8 describe a
physical medium that can store electronic data, and therefore recites
statutory subject matter. App. Br. 5.
We are unpersuaded by Appellants arguments since Appellants do not
sufficiently explain nor provide evidence to illustrate why the claims are not
directed to software per se. In other words, Appellants do not explain why
the claims are not drawn to computer code, instructions or a set of data.
Appellants’ assertion that the claimed medium is physical, and therefore
statutory, is insufficient.
For these reasons, we sustain the rejection of claims 1-8 under
35 U.S.C. § 101 as directed to non-statutory subject matter.
Related to the Appellants’ argument that the Specification describes a
physical medium, we direct the Examiner’s attention to the Specification
which discloses non-exhaustive examples of a software medium “includes a
removable media storage medium such as a Compact Disc, a Digital Video
Disc, A Zip
TM
disk, a Universal Serial Bus drive, and an electromagnetic
signal encoding the data.” Spec. p. 6, ll. 24-26 (emphasis added). In the
event of further prosecution, we leave it to the Examiner to determine
whether the “medium storing program code” recited in claim 1, and those
claims dependent therefrom, is directed to non-statutory subject matter (i.e.,

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transitory propagating signals). In particular, when read in light of
Appellants’ Specification, the claimed “medium storing program code” can
be construed as encompassing both transitory, propagating signals and
recordable type media. Transitory, propagating signals are not patentable
subject matter under § 101. In re Nuitjen, 500 F.3d 1346, 1353-54 (Fed. Cir.
2007). See also U.S. Patent & Trademark Office, Interim Examination
Instructions for Evaluating Subject Matter Eligibility Under 35 U.S.C.
§ 101, Aug. 2009, at 2, available at http://www.uspto.gov/web/offices/
pac/dapp/opla/2009-08-25_ interim_101_instructions.pdf (“A claim that
covers both statutory and non-statutory embodiments . . . embraces subject
matter that is not eligible for patent protection and therefore is directed to
non-statutory subject matter.”)
Rejection of claims 1-25 under § 102(b)
Appellants argue that Tivoli does not disclose or suggest “a resource
data record that indicates a memory location of diagnostic code to perform a
diagnostic function, a data type of managed resource data, and a type of
provider used to access the managed resource code,” as recited in claim 1.
App. Br. 6-7; Reply Br. 1-2.
We turn our attention first to claim construction. Claim construction is
an issue of law subject to review de novo. Cordis Corp. v. Boston Scientific
Corp., 561 F.3d 1319, 1331 (Fed. Cir. 2009). The disputed claim limitations
merely describe the data or information (i.e., memory location, data type,
provider type) indicated by the resource data record. The memory location,
data type, or provider type indicated by the resource data record does not
affect the functionality of the claimed computer code. In other words, the

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computer code, even when executed by a computer, is not affected, altered,
or changed based on resource data code providing an indication of the
memory location, data type, or provider type. The indication of a memory
location, data type, or provider type represents no more than non-functional
descriptive material, which is not entitled to patentable weight in the
analysis of the claim with respect to the prior art. See Ex parte Nehls, 88
USPQ2d 1883, 1887-90 (BPAI 2008) (precedential); see also In re Ngai,
367 F.3d 1336, 1339 (Fed. Cir. 2004). For these reasons, we are
unpersuaded by Appellants’ arguments that the Examiner erred in finding
claims 1-25 anticipated by Tivoli.
Accordingly, we sustain the Examiner’s rejection of claims 1-25 as
anticipated by Tivoli.
DECISION
We AFFIRM the rejection of claims 1-8 under 35 U.S.C. § 101.
We AFFIRM the rejection of claims 1-25 under 35 U.S.C. § 102(b) as
anticipated by Tivoli.
TIME PERIOD
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

ELD