Ex Parte Sonkin et al

Board of Patent Appeals and Interferences

Apr 28, 2010

10872633 (B.P.A.I. Apr. 28, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte DMITRY SONKIN, ALEXANDER G. BALIKOV, and
VIATCHESLAV KRASSOVSKY
__________

Appeal 2009-006045
Application 10/872,633
Technology Center 2100
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Decided: April 28, 2010
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Before JOHN A. JEFFERY, JOSEPH L. DIXON, and STEPHEN C. SIU,
Administrative Patent Judges.

Opinion for the Board filed by SIU, Administrative Patent Judge.

Opinion Concurring filed by JEFFERY, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
This is a decision on appeal under 35 U.S.C. § 134(a) from the
Examiner’s rejection of claims 1-12 and 37-56. Claims 57-68 have been
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withdrawn and claims 13-36 have been cancelled.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 retrieval and replay of
trace data from a database (Spec. ¶ [0002]).
Independent claim 1 is illustrative:
1. A system for supporting programmatic retrieval and
replay of database trace data, comprising:
computer readable instructions for a first functional element
comprising a plurality of executable instructions for retrieving
database trace data;
computer readable instructions for a first exposed function call
whereby custom computer processes can programmatically initiate the
operation of said first functional element;
computer readable instructions for a second functional element
comprising a plurality of executable instructions for storing database
trace data;
computer readable instructions for a third functional element
comprising a plurality of executable instructions for replaying
database trace data; and
computer readable instructions for a third exposed function call
whereby custom computer processes can programmatically initiate the
operation of said third functional element.

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The Reference
The Examiner relies upon the following reference as evidence in
support of the rejections:
Albert US 2005/0198081 A1 Sep. 08, 2005
(filed Feb. 08, 2005)
The Rejections
1. The Examiner rejects claims 1-12 under 35 U.S.C. § 112, second
paragraph as indefinite.
2. The Examiner rejects claims 1-12 and 37-56 under 35 U.S.C. § 101 as
being directed to non-statutory subject matter.
3. The Examiner rejects claims 1-12 and 37-56 under 35 U.S.C. § 102(e)
as being anticipated by Albert.

ISSUE 1
The Examiner finds that claims 1-12 are indefinite because the “terms
‘readable and executable’ . . . are relative terms” (Ans. 4).
Did the Examiner err in finding that claims 1-12 are indefinite?

ISSUE 2
The Examiner finds that claims 1-12 and 37-56 are directed to non-
statutory subject matter because, according to the Examiner, the claims are
“directed to program per se” (Ans. 4).
Did the Examiner err in finding that claims 1-12 and 37-56 are
directed to non-statutory subject matter?
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ISSUE 3
The Examiner finds that claims 1-12 and 37-56 are anticipated by the
Albert reference (Ans. 5).
Did the Examiner err in finding that claims 1-12 and 37-56 are
anticipated by the Albert reference?

FINDINGS OF FACT
The following Findings of Facts (FF) are shown by a preponderance
of the evidence.
1. The present application has a filing date of June 21, 2004.
2. The Albert reference has a filing date in the United States of
February 8, 2005.

PRINCIPLES OF LAW
35 U.S.C. § 101
“A transitory, propagating signal like Nuijten’s is not a ‘process,
machine, manufacture, or composition of matter.’ Those four categories
define the explicit scope and reach of subject matter patentable under 35
U.S.C. § 101; thus, such a signal cannot be patentable subject matter.” In re
Nuijten, 500 F.3d 1346, 1357 (Fed. Cir. 2007).

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35 U.S.C. 112, second paragraph
The legal standard for definiteness is whether a claim reasonably
apprises those of skill in the art of its scope. In re Warmerdam, 33 F.3d
1354, 1361 (Fed. Cir. 1994).

35 U.S.C. § 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) (citation omitted).

ANALYSIS
Issue 1
Claim 1 recites computer readable instructions and computer
executable instructions. The Examiner finds that “readable” and
“executable” are “relative terms which renders the claims indefinite” (Ans.
4). Based on the plain meaning of these terms, we find that one of skill in
the art would have understood the term “readable” to indicate that the
computer instructions were capable of being read by a computer. Likewise,
we find that one of skill in the art would have understood the term
“executable” to indicate that the computer instructions were capable of being
executed by a computer. Therefore, we disagree with the Examiner that one
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of skill in the art “would not be reasonably apprised of the scope of the
invention” (Ans. 4).
Accordingly, we conclude that the Examiner erred in rejecting
independent claim 1, and claims 2-12 which depend therefrom, with respect
to issue 1.

Issue 2
Claim 1 recites a system comprising computer readable instructions.
The Examiner finds that claim 1 is “claiming a computer program per se”
(Ans. 4). However, claim 1 is directed to system that includes computer
readable instructions that retrieves, stores, and replays trace data. Because
claim 1 recites a system that performs data processing functions rather than a
mere computer program per se, as the Examiner alleges, we disagree with
the Examiner’s findings with respect to claim 1.
The Examiner also finds claim 37 to be directed to non-statutory
subject matter. Claim 37 recites a computer-readable medium comprising
instructions. The Specification discloses that a computer-readable medium
includes “communication media” which “embodies computer readable
instructions, data structures, program modules or other data in a modulated
data signal such as a carrier wave” (¶ [0086]). Since a claim directed to
computer instructions embodied in a signal is not statutory under 35 U.S.C.
§ 101 (Nuijten, 500 F.3d at 1357), we agree with the Examiner that claim 37
is directed to non-statutory subject matter.
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Accordingly, we conclude that the Examiner erred in rejecting
independent claim 1, and claims 2-12, which depend therefrom, with respect
to issue 2. However, we conclude that the Examiner did not err in rejecting
independent claim 37, and claims 38-56, which fall therewith, with respect
to issue 2.

Issue 3
As set forth above, the Albert reference cited by the Examiner has a
U.S. filing date (February 8, 2005) that occurs after the filing date of the
present application (June 21, 2004). In a rejection under 35 U.S.C. § 102(e),
a reference must be filed by another in the United States “before the
invention by the applicant for patent.” Since the cited reference was filed in
the United States after, rather than before, the Appellants’ filing date, we
agree with Appellants that the Albert reference “does not qualify as prior
art” (Reply Br. 4) under 35 U.S.C. § 102(e).
Accordingly, we conclude that the Examiner erred in rejecting claims
1-12 and 37-56 with respect to issue 3.

CONCLUSION OF LAW
Based on the findings of facts and analysis above, we conclude that
the Examiner did not err in finding that claims 37-56 are directed to non-
statutory subject matter. However, we also conclude that the Examiner erred
in finding that claims 1-12 are indefinite, that claims 1-12 are directed to
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non-statutory subject matter, and that the Albert reference constitutes prior
art under 35 U.S.C. 102(e).

DECISION
We affirm the Examiner’s rejection of claims 37-56 under 35
U.S.C. § 101. We reverse the Examiner’s rejection of claims 1-12 under
35 U.S.C. § 101 and 35 U.S.C. § 112, second paragraph and the Examiner’s
rejection of claims 1-12 and 37-56 under 35 U.S.C. § 102(e).
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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JEFFERY, Administrative Patent Judge, CONCURRING:
I join the majority’s affirming the Examiner’s rejection in part, but I
write separately to emphasize that our reversal of the Examiner’s
anticipation rejection is based on an argument that was presented for the first
time in the Reply Brief. Compare App. Br. 7 (arguing that cited reference to
Albert does not disclose various recited limitations) with Reply Br. 3-4
(adding that Albert does not qualify as prior art). This clear shift in
argumentation begs the question: why was this untimely argument
regarding Albert’s not qualifying as prior art not raised earlier?
As another panel of this Board aptly noted in an Informative Opinion,
the Reply Brief is hardly the appropriate vehicle to raise new arguments that
could have been made previously. Ex parte Borden, 93 USPQ2d 1473, 1474
(BPAI 2010) (informative) (“[The reply brief [is not] an opportunity to make
arguments that could have been made in the principal brief on appeal to
rebut the Examiner's rejections, but were not.”). Indeed, these arguments are
technically waived. Id.
While I agree with the majority that Albert does not qualify as prior
art, I am frankly troubled by the fact that this argument was not presented to
the Examiner until the Reply Brief. As Borden indicates, this piecemeal
approach imposes costs on the Agency (particularly on the Examiner, the
Technology Center Directors, and the Board), which in turn imposes costs
on the public. Id. at 1477. This cost is borne not only by other applicants
who must wait longer for consideration of their applications and appeals, but
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also by the general public which must wait longer for the benefits provided
by a healthy and vigorous patent system. Id.
Although Appellants’ untimely argument is technically waived under
Borden, for us to not consider such a blatant error on the part of the
Examiner in relying on a disqualified reference would, in my view,
jeopardize any deference we would receive upon appellate review, were we
to affirm this rejection on the merits. Not only would such an affirmance
lack the requisite substantial evidence to support our findings,1 but it would
also impose costs on the Agency and the public in terms of postponing the
inevitable discovery of this error later in another proceeding and the
resulting costs imposed by that discovery.
That said, the harshness of our result is tempered somewhat by the
fact that the Examiner at least considered the Reply Brief. See Office
Communication Noting the Reply Brief, mailed Oct. 17, 2008 (noting that
the Reply Brief was entered and considered) (emphasis added). I can
therefore only presume that, despite Appellants’ arguments to the contrary,
the Examiner nonetheless remained of the belief that the Albert reference
qualified as prior art—despite remaining silent in this regard. See id.
But as the majority indicates, this was erroneous. I therefore join my
colleagues in reversing this rejection.

1 See In re Gartside, 203 F.3d 1305, 1315-16 (Fed. Cir. 2000).
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