McAfee, Inc.

Patent Trials and Appeals Board

May 19, 2021

2020006197 (P.T.A.B. May. 19, 2021)

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.
14/965,298 12/10/2015 Dattatraya Kulkarni P77307 8059
149052 7590 05/19/2021
HANLEY, FLIGHT & ZIMMERMAN, LLC (McAfee)
150 S. WACKER DRIVE
SUITE 2200
CHICAGO, IL 60606
EXAMINER
SHUDY, ANGELINA M
ART UNIT PAPER NUMBER
3668
NOTIFICATION DATE DELIVERY MODE
05/19/2021 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
docketing@hfzlaw.com
jflight@hfzlaw.com
pcesarz@hfzlaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte DATTATRAYA KULKARNI, SRIKANTH NALLURI,
RAJA SINHA, SUSMITA NAYAK,
KRISHNAPUR VENKATASUBRAHMANYAM,
ANJAN NAYAK, RAGHUVIR SONGHELA, and
BHAAVIKA PANJWANI
____________

Appeal 2020-006197
Application 14/965,298
Technology Center 3600
____________

Before MICHELLE R. OSINSKI, CARL M. DEFRANCO, and
LISA M. GUIJT, Administrative Patent Judges.

GUIJT, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant1 seeks our review under 35 U.S.C. § 134(a) of the rejection
of claims 1–72 under 35 U.S.C. § 101 as being directed to non-statutory
subject matter. Final Act. 3–4. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42. Appellant identifies McAfee, LLC as the real party in
interest. Appeal Br. 3.
2 Claims 8–14 and 26–32 have been allowed. See Examiner-Initiated
Interview Summary dated October 22, 2019.
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THE INVENTION
Appellant’s invention relates to “systems for navigation and route
guidance, and more particularly to a system and method for group
navigation, which uses collective and collaborative information from
members in a group.” Spec. ¶ 2. Claim 1, reproduced below as the sole
independent claim on appeal, is illustrative of the subject matter on appeal,
with disputed claim language italicized for emphasis.
1. A machine readable storage device or storage disk
comprising instructions that, when executed, cause a server to at
least:
transmit, via a first network communication, an invitation
to one or more client devices in communication with the server,
the invitation related to participating in a navigation session with
a leader client device associated with a first member;
after receiving a first navigation object from the leader
client device via a second network communication, transmit, via
a third network communication, the first navigation object to a
second client device based on the server receiving an acceptance
to the invitation from the second client device, the first
navigation object related to the navigation session, the first
navigation object including a first route to a destination for the
second client device, and the second client device associated with
a second member; and
after receiving an updated navigation object via a fourth
network communication from the second client device that is
separate from the leader client device, transmit, via a fifth
network communication, the updated navigation object to the
leader client device, the updated navigation object including
sensor information from the second client device indicating a
location of the second client device and a modified version of the
first route customized for the second client device.

Appeal 2020-006197
Application 14/965,298
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OPINION
Appellant argues claims 1–7 as a group. Appeal Br. 5–11. We select
claim 1 as representative, and claims 2–7 stand or fall therewith. See 37
C.F.R. § 41.37(c)(1)(iv).
The Examiner finds that the claims require “a machine readable
storage device or storage disk, which stores a program,” however,
[Appellant’s Specification] does not set forth what constitutes a
machine readable storage device or storage disk, and therefore,
in view of the ordinary and customary meaning of machine
readable storage device or storage disk in accordance with the
broadest reasonable interpretation of the claim, said medium
could be directed towards a transitory propagating signal per se
and considered to be non-statutory subject matter.
Final Act. 3–4 (emphasis added) (citing, e.g., In re Nuijten, 500 F.3d 1346,
1356–57 (Fed. Cir. 2007)); Ans. 12 (referring to Nuijten, “[u]nder broadest
reasonable interpretation and the customary meaning, [the claimed] ‘storage
device’ covers both subject matter that falls within a statutory category (the
random-access memory), as well as subject matter that does not (the carrier
waves)”).
Appellant argues that (A) “[s]torage devices and storage disks” are
“articles of manufacture” (Appeal Br. 5); (B) “[a] ‘disk drive or other mass
storage device’ is not a transitory propagating signal per se” (id. at 6); (C)
“the plain, customary meanings of the terms ‘storage device’ and ‘storage
disk’ as understood by a person of ordinary skill in the art” are as used in the
context of the “full class of statutory subject matter in terms of the word
‘devices’” as set forth in the MPEP § 2106.03(I) and as discussed in In re
Nuitjen, 500 F.3d (id. at 6–7); (D) the Examiner misconstrued the MPEP in
that the term “compact disc” is a statutory embodiment, while the term
Appeal 2020-006197
Application 14/965,298
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“carrier wave” is not (id. at 8–9); (E) the Examiner’s finding is inconsistent
with PTAB Appeal No. 2012-00857 (id. at 10). See also Reply Br. 1–10.
As explained in the PTAB Decision, Ex Parte Maresca3 (quotations
omitted), the Federal Circuit has held that “transitory forms of signal
transmission such as radio broadcasts, electrical signals through a wire, and
light pulses through a fiber-optic cable . . . are not directed to statutory
subject matter.” In re Nuijten, 500 F.3d 1346, 1353 (Fed. Cir. 2007). More
recently, a precedential PTAB decision held that, absent disclosure to the
contrary in the specification, “those of ordinary skill in the art would
understand the claim term ‘machine-readable storage medium’ would
include signals per se.” Ex Parte Mewherter, 107 USPQ 1857, 1862 (PTAB
2013) (precedential). “[W]here, as here, the broadest reasonable
interpretations of . . . the claims . . . covers a signal per se, the claims must
be rejected under 35 U.S.C. § 101 as covering non-statutory subject matter.”
Id. at 1862; see also Nuitjen, 500 F.3d at 1352.
In its training materials for examiners, the USPTO has said, “It is
acceptable to amend the claims to exclude the signal embodiment by adding
‘non-transitory’ to modify the computer readable media.” USPTO Office of
Patent Legal Administration, Evaluating Subject Matter Eligibility Under 35
USC § 101: August 2012 Update (“August 2012 Update”), at 14, available at
http://www.uspto.gov/patents/law/exam/101_training_aug2012.pdf.
However, the training also explains, “‘Non-transitory’ is not a requirement,
but simply one option” and “Applicant can choose other ways to amend the
claim in accordance with the original disclosure.” Id.

3 Ex parte Chang, Appeals No. 2017-001639, 2018 WL 6247918 (PTAB
Nov. 18, 2018).
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In determining whether a claim is directed to signals per se, the
specification may provide insight into the meaning of the claim terms. For
example, in one recent Federal Circuit decision, “the specification defined
the claimed machine-readable medium as including read-only memory,
random-access memory, CDROMs, magnetic tape, optical data storage
devices, and carrier waves.” Mentor Graphics Corp. v. EVE-USA, Inc., 851
F.3d 1275, 1294 (Fed. Cir. 2017) (emphasis added). “Even though carrier
waves differ greatly from the other disclosed mediums (such as CD-ROMs
or magnetic tape), we are bound by the patentee’s lexicography.” Id. “Thus,
the claims cover carrier signals themselves” and were “not eligible subject
matter.” Id.
We note that some PTAB panels have held that, absent broadening in
the specification, the ordinary meaning of “device” or “storage device”
would have excluded signals per se.4 Other PTAB panels have reached the
opposite conclusion and held that, absent narrowing in the specification the
ordinary meaning of “device” would have included signals per se.5

4 E.g., Ex parte Davis, Appeal No. 2015-006679, 2016 WL 6995171, at *3-
4 (PTAB Nov. 28, 2016) (“[T]he ordinary meaning of the term device ....
does not, however, encompass a . . . ‘transitory, propagating signal’” and
“the Specification has been amended to eliminate examples in order to avoid
expanding the scope of ‘device’ beyond its ordinary meaning”).
5 E.g., Ex parte Rincon, Appeal No. 2017-006111, 2018 WL 4356961, at *5
(PTAB Aug. 22, 2018) (“Numerous decisions of the Board similarly
conclude that a recitation of ‘computer-readable storage devices’ also
encompasses transitory signals, absent contrary disclosure in the
specification.”); Ex parte Joshi, Appeal No. 2014-004812, 2016 WL
4159110, at * 5 (PTAB Aug. 4, 2016) (“giving [the claims] their broadest
reasonable interpretation consistent with the Specification, we construe the
terminology ‘computer-readable storage devices’ as encompassing transitory
propagating signals having instructions”); Ex parte Montgomery, Appeal
No. 2015-7047, 2015 WL 2063304, at *2 (PTAB Feb. 3, 2015) (“Although
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Here, the claims recite “a machine readable storage device or storage
disk.”6 We find that the plain meaning of the claim term “a machine
readable . . . storage disk” excludes transitory forms of signal transmission.
For example, the Microsoft® Encarta® College Dictionary defines “disk,”
in the context of a computer storage device, as “a device consisting of one or
more thin magnetically or optically etched plates, used in a computer to store
information.” Microsoft® Encarta® College Dictionary (2001), p. 412; see
Appendix. Thus, a storage disk is a physical, tangible article of manufacture
(i.e., at least one plate), and not a transitory, propagating signal.

the claimed ‘computer-readable storage device’ implicates a physical or
tangible medium, . . . it is not limited to such medium only” and “because
Appellants’ Specification does not defined ‘computer-readable storage
device’ to exclude transitory media, the ‘computer-readable storage device’
encompasses transitory media, which is not patent eligible.”); Ex parte
McMullin, Appeal No. 2012-004839, 2014 WL 7336710, at * 3 (PTAB Aug.
4, 2016) (“Given the lack of definition in Appellant’s Specification, we give
the term ‘computer-readable storage device’ its broadest reasonable
interpretation to cover ‘ . . . forms of non-transitory tangible media AND
transitory propagating signals per se.’”).
6 Notably, claims 1 to 7, as originally filed, recited “[a] machine readable
medium, on which are stored instructions.” Application, as filed on Dec. 10,
2015. In response to a Non-Final Office Action (dated September 22, 2017),
which rejected the claims pursuant to 35 U.S.C. § 101 for being directed to
non-statutory subject matter, Appellant amended the claims as follows: “[a]
non-transitory machine readable medium, on which are stored instructions.”
Amendment (dated Dec. 22, 2017), p. 2. In response to further Final and
Non-Final Office Actions (dated May 4, 2018 and September 26, 2018,
respectively), which rejected the claims pursuant to 35 U.S.C. § 101 for
being directed to a judicial exception (i.e., an abstract idea, and particularly,
a mental process), Appellant ultimately amended the claims as follows and
as currently claimed: “A non-transitory machine readable medium storage
device or storage disk.” Amendment (dated Jan. 28, 2019), p. 2.
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Notwithstanding, we agree with the PTAB decisions finding that the
claim term “a machine readable storage device” encompasses transitory
signals, absent contrary disclosure in the specification. See fn. 5.
Appellant’s Specification discloses that “a machine-readable medium”
“can refer to a single physical medium or a plurality of media that together
may store the material described as being stored on the machine-readable
medium.” Spec. ¶ 16. This passage does not address the claim term
“machine readable storage device.” Appellant’s Specification separately
discloses, with reference to Figure 8, that
[v]arious devices may be coupled to second line 820 including,
for example, a keyboard/mouse 812, communication devices(s)
826 (which may in turn be in communication with the computer
network 803), and a data storage unit 828 such as a disk drive or
other mass storage device which may include code 830, in one
embodiment.
Id. ¶ 74.
As noted correctly by the Examiner, Appellant’s Specification “does
not provide a definition regarding the [claim term] machine readable storage
device,” but rather, “provides a non-exhaustive list of what a data storage
unit includes.” Ans. 4–5, 7. We do not construe the listing of “[a] mass
storage device which may include code” as an example of a data storage
unit, as set forth supra, to exclude the storage device (as well as the data
storage unit) from reading on both transitory and non-transitory machine
readable media for storing data. In other words, on the record before us, we
are not persuaded by Appellant’s arguments that a storage device is an
article of manufacture and not a transitory propagating signal per se, nor do
we agree that the plain, customary meaning of the claim term “machine
readable storage device,” as understood by a person of ordinary skill in the
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art, means a machine readable storage device is a device in the statutory
class of an article of manufacture. Regarding PTAB Appeal No. 2012-
00857 (titled, “Ex parte Chang”), as relied on by Appellant supra, the
decision addressed the claimed phrase “tangible article of manufacture,”
which is distinct from the presently claimed “machine-readable storage
device.” Ex parte Chang, at 1.
Accordingly, we sustain the Examiner’s rejection of claim 1, under 35
U.S.C. § 101 as being directed to non-statutory subject matter, and claims 2–
7 fall therewith.
CONCLUSION
In summary:
Claim(s)
Rejected
35
U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1–7 101 Eligibility 1–7

AFFIRMED
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).