Ex Parte Kornegay et al

Patent Trial and Appeal BoardNov 20, 2013

11425011 (P.T.A.B. Nov. 20, 2013)

UNITED STATES PATENT AND TRADEMARKOFFICE 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. 11/425,011 06/19/2006 Marcus L. Kornegay RPS920060016US1 8541 50594 7590 11/20/2013 CAREY, RODRIGUEZ, GREENBERG & O''''KEEFE, LLP STEVEN M. GREENBERG 7900 Glades Road SUITE 520 BOCA RATON, FL 33487 EXAMINER RUTZ, JARED IAN ART UNIT PAPER NUMBER 2187 MAIL DATE DELIVERY MODE 11/20/2013 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 MARCUS L. KORNEGAY, NGAN N. PHAM, and BRIAN T. VANDERPOOL ____________ Appeal 2011-001145 Application 11/425,011 Technology Center 2100 ____________ Before JOSEPH F. RUGGIERO, KRISTEN L. DROESCH, and JOHN G. NEW, Administrative Patent Judges. RUGGIERO, Administrative Patent Judge. ON REQUEST FOR REHEARING Appellants request that we reconsider our Decision of August 21, 2013, wherein we affirmed the Examiner’s 35 U.S.C. § 102(b) rejection of claims 1 and 4-8, the 35 U.S.C. § 103(a) rejection of claims 9, 12, and 13, and the 35 U.S.C. § 101 rejection of claims 9-13. Appellants’ request for reconsideration is directed solely to our affirmance of the Examiner’s non- statutory subject matter rejection of claims 9-13 under 35 U.S.C. § 101. We have reconsidered our Decision of August 21, 2013, in light of Appellants’ Appeal 2011-001145 Application 11/425,011 2 arguments in the Request for Rehearing, and we find no error therein. We, therefore, decline to make any changes in the prior Decision for the reasons which follow. Appellants’ arguments in the Request for Rehearing focus on the contention that our original Decision erred in not affording patentable weight to the term “tangible” with respect to the claimed “computer usable tangible medium.” Appellants’ arguments direct attention to the precedential opinion of the Board in Ex parte Mewherter, 107 USPQ2d 1857, 1862, Appeal No. 2012-007692 (PTAB May 8, 2013). Request 3-4. As correctly characterized by Appellants, the Board in Mewherter, because the Specification was silent with respect to the terms “medium” or “media,” turned to extrinsic evidence and concluded that an ordinarily skilled artisan would have understood the term “machine-readable storage medium” to include signals per se. According to Appellants, however, the instant Specification is not silent but, instead, defines “computer-usable or computer-readable medium” as including both tangible and intangible forms (such as “propagation medium”). Request 5 (citing Spec. ¶ [0022]). Appellants further contend that the ordinarily skilled artisan would recognize the difference between an intangible propagation medium (“e.g., light, electricity, EMF, etc.”) and a tangible storage medium (“e.g., memory, hard disk, CD-ROM, etc.”). Id. Accordingly, in Appellants view, the term “tangible” breathes life into Appellants’ claim language and our original Decision erred in not giving weight to the term. We do not find Appellants’ arguments to be persuasive of any error in our original Decision. While Appellants’ Specification sets forth various Appeal 2011-001145 Application 11/425,011 3 non-limiting examples of computer-usable media, the Specification does not equate the terms of a “computer usable tangible medium” to the listed examples. Spec. [0023]. The Specification merely states that the medium “can be” any of the listed examples. Id. Aside from the fact that the Specification has no indication as to which examples Appellants consider to be computer usable tangible media, the use of the terminology “can be” is permissive language that does not expressly limit the medium to “non- transitory” applications. Further, contrary to Appellants’ contention, the present issue is not whether one of ordinary skill in art may or may not recognize certain media as tangible but, instead, is whether the addition of the term tangible to “computer usable medium” limits the claim to statutory non-transitory embodiments. As stated in In re Nuitjen, 500 F.3d, 1346, 1357 (Fed. Cir. 2007), “[a] transitory, propagating signal like Nuitjen’s is not a ‘process, machine, manufacture, or composition of matter,’” the four categories that define the explicit scope and reach of patentable subject matter under 35 U.S.C. § 101. It is noteworthy that the Court in Nuitjen recognized the real world tangible aspects of Nuitjen’s signals, but concluded that because of their transitory nature, they were not a tangible article or commodity that would make them statutory subject matter. See Nuitjen, at 1357. Further, we also note that although not binding on the Board, recent presentation guidelines to the examining patent corps indicate that while “non-transitory” is a viable option for overcoming the presumption that the media encompass signals or carrier waves, merely indicating that such media are “physical” or “tangible” will not overcome such presumption. U.S. Patent & Trademark Office, Evaluating Subject Matter Eligibility Under 35 Appeal 2011-001145 Application 11/425,011 4 USC § 101: August 2012 Update (2012) (pp. 11-14), available at http://www.uspto.gov/patents/law/exam/101_training_aug2012.pdf. CONCLUSION Based on the foregoing, we have granted Appellants’ request to the extent that we have reconsidered our original Decision of August 21, 2013, but we deny the request with respect to making any changes therein. 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). REHEARING DENIED gvw