Ex parte Buros
Appeal 2009009738; Appl. No. 11/268,931; Tech. Center 2100
Decided June 20, 2011
The application was directed to aggregation of data using policies. The Examiner finally rejected all independent claims as being anticipated and all dependent claims as being obvious. A set of "computer usable medium" claims were also rejected under § 101.
The computer-usable medium claims read as follows:
11. A computer-usable medium comprising a computer program product and operable by a data processing system for managing data, the computer program product comprising:
program code for identifying a policy for managing the data in a data storage system;
program code for locating raw data in the data storage system for processing to form located data;
program code for aggregating the located data based on the policy by summarizing the located data to form aggregated data such that the aggregated data is in a condensed form with respect to the located data by not including all of the located data in the aggregated data; and
program code for storing the aggregated data in the data storage system.
12. The computer program product of claim 11, wherein the program code for identifying a policy for managing the data in a data storage system comprises:
program code for retrieving aggregation metadata from a server to identify the policy, wherein the aggregation metadata contains information used to aggregate the located data.
According to the Examiner, the medium claims were "drawn to a form of energy." The Examiner explained that energy is "not a series of steps or acts and thus is not a process," "is not physical nor an object and as such is not a machine or manufacture," and "is not a combination of substances and therefore is not a composition of matter."
The Board affirmed some of the prior art rejections and reversed others. The Board did not reach the § 101 rejection of the "computer usable medium" claims, instead entering a new ground of rejection of the dependent claims under § 112 2nd Paragraph and/or 4th Paragraph.
According to the Board, each of dependent claims 12-15 and 17 "purports to provide further limitations with respect to the 'computer program product' of the independent claim." However, as written the dependent claims do not require the "computer usable medium" of the independent claim. Therefore, each dependent claim is broader in this respect than the independent claim, and thus fails under § 112 4th Paragraph to further limit the claim from which it depends.
As to the indefiniteness rejection, the Board found that the scope of dependent claims 12-15 and 17 is not readily ascertainable because "the dependent claims appear to be directed to only a portion of the invention as set forth in independent claim 11." Therefore, an infringer "would not reasonably be apprised as to whether the 'computer usable medium' is required for infringement of the dependent claims."
My two cents: I've seen at least a dozen ways of formulating what is commonly referred to as a "computer readable medium" (CRM) claim. In some cases, like this one, it can be hard to figure out what exactly is being claimed. Presumably the "medium" is claimed because case law has recognized this as an article of manufacture. But why claim the "product"? And do you claim "code" (as was done here) or do you claim steps, or .... what?
As this case shows, formulating dependent claims for CRMs can be even trickier than for independents. I don't think Examiners are picky about this, so perhaps you don't see any reason to be concerned. But I think the Board was right, and you might as well write your dependent CRM claims properly. This sort of problem is trivial to fix – in fact, the Applicant here fixed it after the BPAI decision. So why wait for the Board – or worse yet, an accused infringer – to bring up a 112 Fourth problem?
One unusual aspect of this case was that no independent claims went up on appeal. The Applicant filed an After Final amendment which cancelled all independent claims and rewrote various dependents into independent form. However, the Examiner refused to enter the After Final amendment, noting in the Advisory Action that it "raised new issues that would require further consideration and/or search" ! So the Applicant withdrew the independent claims and a number of dependent claims in the Appeal Brief, and thus only dependent claims were considered by the Board.
Why did the Examiner refuse to enter the rewrite-dependent-into-independent-form amendments? Such an amendment doesn't change the scope of the claim, so logically, how could it require further consideration, much less a new search? The Applicant argued that the amendment put the case into "better form for appeal", which is a category of amendment that is allowed under § 1.116. Even if § 1.116 doesn't require the Examiner to enter it, it does sound like that one that MPEP 714.13 suggests should be entered, namely, it requires only cursory review:
Except where an amendment merely cancels claims, adopts examiner suggestions, removes issues for appeal, or in some other way requires only a cursory review by the examiner, compliance with the requirement of a showing under 37 CFR 1.116(b)(3) is expected in all amendments after final rejection.
Finally, from a practical standpoint, how much work could it possible be for the Examiner to enter this? Is the Examiner just hoping to push the Applicants into an RCE?
One more observation. As noted above, when the Examiner refused to enter the After Final amendments, the Applicant reacted by "withdrawing" the independent claims in the Appeal Brief. The other option would be to file an After-Notice-of-Appeal amendment that rewrites the dependents into independent form. The rules for entry of amendments after appeal (§ 41.33) are different than the rules for entry After Final (§ 1.116), such that the Examiner is required to enter this same amendment after appeal.