Ex Parte Wang et alDownload PDFPatent Trial and Appeal BoardOct 9, 201211350942 (P.T.A.B. Oct. 9, 2012) Copy Citation 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. 11/350,942 02/10/2006 James Wang 184607-370836 2572 27155 7590 10/09/2012 McCarthy Tetrault LLP Box 48 Suite #4700 Toronto Dominion Bank Tower TORONTO, ON M5K 1E6 CANADA EXAMINER SERRAO, RANODHI N ART UNIT PAPER NUMBER 2444 MAIL DATE DELIVERY MODE 10/09/2012 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 PATENT TRIAL AND APPEAL BOARD ____________________ Ex parte JAMES WANG and RUDY RAWLINS ____________________ Appeal 2010-0046841 Application 11/350,942 Technology Center 2400 ____________________ Before JEAN R. HOMERE, ST. JOHN COURTENAY, III, and CARL W. WHITEHEAD, JR., Administrative Patent Judges. HOMERE, Administrative Patent Judge. DECISION ON APPEAL 1 The real party in interest is Research in Motion Ltd. (App. Br. 3.) Appeal 2010-004684 Application 11/350,942 2 STATEMENT OF THE CASE Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s Final Rejection of claims 1-42. (App. Br. 2.) We have jurisdiction under 35 U.S.C. § 6(b). We affirm-in-part. Appellants’ Invention Appellants invented a method and system for conserving battery power in a wireless device (210) operating in a local area network (LAN) (430) wherein the wireless device (210) is coupled via an access point (410) to a server (100), which is in turn coupled to at least a client device (440) on the LAN. (Spec. ¶ [0001], Fig. 4.) In particular, upon receiving from the wireless device (210) a message including the hardware address associated therewith indicating that the wireless device desires to join the network, the server (100) updates the list of hardware addresses (470) for all devices on the network, and sends the updated address list to all the devices thereby making it unnecessary for said devices to send request messages for information contained in the updated list. (Spec., ¶ [0055].) Illustrative Claim Independent claim 1 further illustrates the invention as follows: 1. A method for conserving battery power in a wireless device coupled through an access point to a server in a network, the server being coupled to at least one client in the network, each of the wireless device, the at least one client, and the access point having a respective hardware address, the method comprising: Appeal 2010-004684 Application 11/350,942 3 receiving at the server through the access point a message indicative of the wireless device joining the network and providing the hardware address of the wireless device; updating a list of hardware addresses for clients in the network to include the hardware address of the wireless device, the list including a respective Internet Protocol ("IP") address for each hardware address; and, sending from the server to at least one of the wireless device, the at least one client, and the access point, the updated list of hardware addresses to thereby reduce a number of request messages broadcast on the network for information that is contained in the updated list that the wireless device need leave a sleep mode to process. Prior Art Relied Upon The Examiner relies on the following prior art as evidence of unpatentability: CHARI US 2004/0264435 A1 Dec. 30, 2004 MEIER US 2005/0254444 A1 Nov. 17, 2005 Rejections on Appeal The Examiner rejects the claims on appeal as follows: 1. Claims 29-42 stand rejected under 35 U.S.C. § 101 as being directed to non-statutory subject matter. 2. Claims 1-4, 6-8, 11, 12, 14-18, 20-22, 25, 26, 28-32, 34-36, 39, 40, and 42 stand rejected under 35 U.S.C. § 102(e) as being anticipated by Meier. Appeal 2010-004684 Application 11/350,942 4 3. Claims 5, 9, 10, 13, 19, 23, 24, 27, 33, 37, 38, and 41 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over the combination of Meier and Chari. ANALYSIS We consider Appellants’ arguments seriatim as they are presented in the principal Brief, pages 12-26 and the Reply Brief, pages 12-29. Non-statutory Subject Matter Rejection Dispositive Issue 1: Have Appellants shown that the Examiner erred in concluding that claims 29-42 are directed to non-statutory subject matter? Appellants argue that because claims 29-42 recite a computer program product that contains computer executable code for directing the computer to conserve battery power, the claims are directed to statutory subject matter consistent with Ex parte Bo Li, Appeal 2008-001213 (BPAI 2008).2 (App. Br. 25, Reply Br. 29.) In response, the Examiner finds that because the claims do not recite that the computer codes are physically stored on a computer medium/ program product or that are they actually executed by the computer, the codes do not cause functional changes to the computer medium. Therefore, the instructions are not structurally and functionally interrelated to the medium in order to constitute an article of manufacture within the meaning of 101. (Ans. 22-23.) 2 The cited appeal is not precedential and therefore is not binding upon the Patent Trial and Appeal Board. Appeal 2010-004684 Application 11/350,942 5 On the record before us, we agree with the Examiner’s conclusion that the cited claims are directed to non-statutory subject matter. First, we note that the claims recite a computer-program product having a computer executable code that is merely comprised of a set of codes. That is, the claims indicate the codes constitute the computer product as opposed to the codes being embedded on the computer medium, and that the codes are capable of being executed by the computer. In other words, the recited computer program product is merely a set of instructions that may be executed at some unspecified time in the future. We therefore conclude the recitation computer executable code for directing a system to be a statement of intended use,3 which cannot be properly relied upon to impart actual functionality to the cited claims. Further, while Appellants’ Specification indicates that the program instructions may be embodied in software modules residing in a computer memory (Spec. ¶ [0025]), the claims are not so limiting. The claims do not require that the instructions be stored on any of the storage media recited in the Specification. Simply put, the claims are directed to a data structure per se, which is not tangibly embodied in a storage medium. Further, we note that the recited description of the details 3 See In re Schreiber, 128 F.3d 1473, 1477 (Fed. Cir. 1997). We also note that “[a]n 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.” See 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,” a statement of intended use or purpose can appear elsewhere in a claim. In re Stencel, 828 F.2d 751, 754 (Fed. Cir. 1987). Appeal 2010-004684 Application 11/350,942 6 of the data structure solely in terms of the information (i.e., data) contained therein is insufficient to impart functionality thereto. That is, assuming arguendo that the data is capable of being executed by an unclaimed computer having an underlying computer program to perform the desired functionalities, these functionalities would still need to be recited in the claim. Therefore, because the claims do not require that the set of instructions, upon execution, cause the computer to perform certain functions to thereby establish the requisite structural and functional interrelationships between the computer and the stored instructions to permit the computer’s functionality to be realized, the computer would not become a special purpose computer (i.e., a new machine) once it receives the data.4 Consequently, we conclude that because the claimed computer program product is directed to a mere set of instructions to be executed at some future time, it is not directed to any of the four statutory classes of 35 U.S.C. § 101. It follows that Appellants have not shown that the Examiner erred in concluding that claims 29-42 are directed to non-statutory subject matter. Prior Art Rejections Dispositive Issue 2: Have Appellants shown that the Examiner erred in finding that Meier describes a server sending an updated list of hardware addresses for clients in a network to a wireless device, a client, and an access point, as recited claim 1? 4 See In re Lowry, 32 F.3d 1579, 1583-84 (Fed. Cir 1994). See also MPEP 2106.1. Appeal 2010-004684 Application 11/350,942 7 Appellants argue that the Examiner erred in finding that Meir’s disclosure describes the disputed limitations emphasized above. In particular, Appellants argue that Meier discloses a partial list of multicast addresses of stations for which an access point has buffered frames. (Reply Br. 24.) However, Appellants argue that disclosed list does not contain the address of each client in the network, and that the disclosed multicast addresses do not describe the claimed hardware addresses. (Id.) Further, Appellants argue that while Meier discloses a proxy server that manages the addresses, the proxy server does not send the list of addresses to the clients because the proxy server acts as a proxy for the client, and needs not send the message thereto. (Id. at 25-27.) Rather, the client receives its messages from the access point, and not the server, as claimed. (Id. at 21.) In response, the Examiner finds that the claim does not require a list of hardware addresses for each client on the network. Rather, the claim requires a list of hardware addresses for clients (two or more) on the network. (Ans. 23-24.) Consequently, the Examiner finds that Meier’s disclosure of an MTM list of multicast addresses for which multicast frames are buffered in the access point describes the list of addresses for the clients. (Id. at 24.) Further, the Examiner finds that because Meier discloses the multicast addresses as MAC addresses for the stations, they qualify as hardware addresses. (Id.) Additionally, the Examiner finds that because the ARP server is with the access point, and provides replies on behalf of the client, the client’s response to an address resolution request teaches sending Appeal 2010-004684 Application 11/350,942 8 the client list. (Id. at 26.) Therefore, the Examiner finds that Meier’s proxy server teaches the disputed limitations. (Id.) On the record before us, we find error in the Examiner’s findings and ultimate determination of anticipation. Meier discloses a power save method whereupon receiving an IP multicast stream from a remote location, an access point reviews a list of IP hardware addresses in its ARP cache to determine whether the IP address already exists in the cache. If the access point finds a match in the address list stored in the cache, the access point does not disturb the client stations. However, if the IP address is not found in address list stored in the cache, the access point broadcasts a message to client stations to check for a match therewith, and subsequently updates the address list stored in the cache. (Abstr., ¶¶ [0014], [0018], [0070].) Further, Meier discloses a proxy server that, after authenticating the wireless client stations, responds on behalf of the client stations to IP address inquiries received from the access point. (¶¶ [0049], [0050].) We find that Meier discloses, at best, an access point updating a list of hardware client addresses stored in a network, and a proxy server for reducing the number of messages a sleeping client station receives. However, we find that Meier’s disclosure does not teach sending the updated list to the client stations. Rather, the list is permanently located in the access point, wherein the list is updated. Therefore, even if the server were located within the access point as proposed by the Examiner, we find that the updated list of hardware addresses is never circulated to other devices within the network. We thus agree with Appellants that the server does not maintain the address list nor Appeal 2010-004684 Application 11/350,942 9 does it send the list to the clients the wireless device, and the access point as required by the disputed limitations. Because Appellants have shown at least one error in the Examiner’s rejection of claim 1, we need not address Appellants’ other arguments. It follows that Appellants have shown error in the Examiner’s rejection of claim 1. Claims 1-4, 6-8, 11, 12, 14-18, 20-22, 25, 26, 28-32, 34-36, 39, 40, and 42 also recite the disputed limitations of claim 1 above. Similarly, claims 5, 9, 10, 13, 19, 23, 24, 27, 33, 37, 38, and 41 recite the limitations of claim 1, and the secondary reference relied upon by the Examiner does not cure the aforementioned deficiencies. Accordingly, Appellants have similarly shown error in the Examiner’s rejection of claims 2-42 for the same reasons set forth above. DECISION We affirm the Examiner’s rejection of claims 29-42 under 35 U.S.C. § 101 as being directed to non-statutory subject matter. We reverse the Examiner’s rejection of claims 1-4, 6-8, 11, 12, 14-18, 20-22, 25, 26, 28-32, 34-36, 39, 40, and 42 under 35 U.S.C. § 102(e) as being anticipated by Meier. We reverse the Examiner’s rejection of claims 5, 9, 10, 13, 19, 23, 24, 27, 33, 37, 38, and 41 under 35 U.S.C. § 103(a) as being unpatentable over the combination of Meier and Chari. Appeal 2010-004684 Application 11/350,942 10 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)(2012). AFFIRMED-IN-PART ke Copy with citationCopy as parenthetical citation