Thursday, March 5, 2009

BPAI Remains Split on "Computer-Readable Medium"

Ex Parte Scott Alan Isaacson, Stephen R. Carter and Frank Allan Nutt
Decided: February 26, 2009

This decision, also from Technology Center 2100, continues on the Ex parte Mitchell path. The Board determined that "medium" when modified by "computer-readable" is not limited to only tangible embodiments.

The claims of the Isaacson et al. application were directed to for assembling or otherwise aggregating electronic identities. Representative claim 1 recited:
[a] method implemented in a computer-readable medium to aggregate an identity, comprising:

accessing one or more identity authorities and one or more identity stores with a schema to acquire identifiers and attributes associated with the aggregated identity, wherein the identifiers are information used to identify the identity; and

assembling the acquired identifiers and attributes to aggregate the identity.
Also, the preamble of independent claim 9 recited a “data store implemented in a computer-readable medium, residing in a computer-accessible medium.” Likewise, the preamble of independent claim 16 recited a “schema data structure used to aggregate an identity and implemented in a computer accessible medium.” Finally, the preamble of independent claim 22 recited a “system implemented in a computer-readable medium.”

Arguably, the specification did not include an express definition of "computer-readable medium." However, the specification included the following:
[o]f course, the invention can be implemented in a variety of applications, systems, schema conventions, programming languages, and data formats. Additionally, the invention is not limited to any particular network. Thus, any hardwired (direct or indirect), or wireless network can be used.

FIG. 1 is a flowchart representing one method 100 to aggregate an identity, according to one embodiment of the invention. The method is implemented in an electronic environment on a network. The network can be, without limitation, a Local Area Network (LAN), a Wide Area Network (WAN), or a combination of LANs and WANs interfaced together. Furthermore, as mentioned above, the network can be hardwired or wireless.
The examiner rejected all the claims under 101.

During prosecution, Isaacson et al. added the "implemented in a computer-readable medium" type limitations to the preamble. Also, they argued that those amendments recite structure and indicate that the claims are limited to computer implemented embodiments.

The Board discussed the limitations in the preambles. They said that:
to the extent that the preamble has any bearing upon the broad recitations in the body of representative independent claim 1 on appeal, the subject matter also appears to be proscribed by the reasoning in In re Nuijten, 500 F.3d 1346, 1359 (Fed. Cir. 2007). The broadly claimed “medium” in the preambles of all independent claims on appeal is not necessarily required to be embodied in a tangible computer-readable medium. Indeed, the subject matter is so broadly disclosed that there is no discussion of what the claimed “medium” is supposed to be or otherwise be comprised of in the Specification as filed. As such, the medium appears to be a broadly definable wireless network that encompasses signals per se proscribed by Nuijten ...

Additionally, based upon the analysis in the previous and this paragraph at least, the data store broadly recited in the preamble of independent claim 9 is not positively stated to be embodied in a tangible device conventional in the arts since it is merely recited to be “implemented in a computer-readable medium, residing in a computer-accessible medium.” A similar observation is appropriate for the schema data structure of independent claim 16. We are not aware of any authority which permits the direct claiming alone of a data structure per se. With respect to the system of claim 22, it is not necessarily recited to be a tangible computer system since all the recited elements are inclusive of non-tangible embodiments or abstract concepts as already discussed with respect to independent claims 1, 9, and 16.

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