Alan E. Booth et al.

Patent Trials and Appeals Board

Jan 2, 2020

14095438 - (D) (P.T.A.B. Jan. 2, 2020)

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.
14/095,438 12/03/2013 Alan E. Booth RSW920040224US2
8152-0235
2652
112978 7590 01/02/2020
Cuenot, Forsythe & Kim, LLC
20283 State Road 7, Suite 300
Boca Raton, FL 33498
EXAMINER
PATEL, CHIRAG R
ART UNIT PAPER NUMBER
2454
NOTIFICATION DATE DELIVERY MODE
01/02/2020 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):
ibmptomail@iplawpro.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte ALAN E. BOOTH and DONALD N. JONES

Appeal 2018-008306
Application 14/095,438
Technology Center 2400
____________

Before JEFFREY S. SMITH, KARA L. SZPONDOWSKI, and
JOHN R. KENNY, Administrative Patent Judges.

SZPONDOWSKI, Administrative Patent Judge.

DECISION ON APPEAL

Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 37–54, constituting all of the claims
pending in the current application. 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 the real party in interest as IBM
Corporation. Appeal Br. 1.
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STATEMENT OF THE CASE
Appellant’s invention generally relates to centralized session
management in an aggregated application environment. Spec. 4. Claim 37,
reproduced below, is representative of the claimed subject matter:
37. A computer-implemented method performed by a server,
comprising:

aggregating, within a host aggregation environment, a set of
applications that are distinct from the host aggregation environment;
monitoring for interactivity within the applications;

monitoring, separate from the monitoring for interactivity
within the applications, for interactivity within the host aggregation
environment itself; and

centrally keeping alive, upon a detection of interactivity within
any one of the applications or the host aggregation environment, all of
the applications.

REJECTIONS

Claims 37–54 stand rejected under 35 U.S.C. § 112(a) or 35 U.S.C.
§ 112 (pre-AIA), first paragraph, as failing to comply with the written
description requirement.
Claims 37–54 stand rejected under pre-AIA 35 U.S.C. § 103(a) as
unpatentable over the combination Nickerson et al. (US 2005/0108390 A1;
published May 19, 2005) (“Nickerson”) and Hayer et al. (US 7,941,544 B2;
issued May 10, 2011) (“Hayer”).
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ANALYSIS

35 U.S.C. § 112 Rejections
The Examiner finds the limitation “a set of applications that are
distinct from the host aggregation environment,” as recited in independent
claims 37, 43, and 49, lacks written description support in the Specification.
Final Act. 3. The Examiner explains “Applicant[’]s disclosure has clearly
shown that the applications or portlets are included and part of the host
aggregation or portal environment which is contrary to the recited claims.”
Final Act. 3; Ans. 5. Relying on a dictionary definition, the Examiner
construes the term “distinct” to mean “separate,” because Appellants do not
provide an explicit definition of the term “distinct” in the Specification.2
Appellant argues “[a]s claimed, the applications are distinct from the
host aggregation environment.” Appeal Br. 8. Appellant provides several
analogies, such as a house having chairs within it, a CD-ROM found within
a desktop computer, and a computer application that executes within an
operating system. Appeal Br. 8; see also Appeal Br. 11–12; Reply Br. 5.
According to Appellant, “a portlet (i.e., an example of an application) is
distinct from a portal (i.e., an example of a host aggregation environment).”
Appeal Br. 8. Appellant cites to two articles (not submitted as exhibits) and
argues that “those skilled in the art recognize that a portlet is not necessarily
an integral part of a portal. Instead, a portal can be added to or removed
from a portal. Moreover, the same portal can be added to a different portal

2 The Examiner provides a citation an online Merriam Webster dictionary
definition of “distinct,” as “distinguishable to the eye or mind as being
discrete (see DISCRETE 1) or not the same: SEPARATE.” Ans. 7 (citing
https://www.merriam-webster.com/dictionary/distinct)).
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and act the same.” Appeal Br. 8. Appellant points to several passages from
the Specification in support of its argument that “one having ordinary skill
would . . . recognize that a portal is distinct from a portlet, as claimed.”
Appeal Br. 9. In particular, Appellant points to page 8, lines 5–8 of the
Specification, which states:
The agents 170 can be programmed to detect interactivity
within the corresponding application 140 and can report the
interactivity 180 to the centralized session management logic
200. Likewise, the centralized session management logic 200
can be programmed to detect interactivity 180 within the
aggregation 120, itself.

Appellant argues “[a] proper reading of this passage requires that the
detection of interactivity in the application 140 be different than the
detection of interactivity in the portal 120. Accordingly, the application 140
must be distinct from the portal 120.” Appeal Br. 9; see also Appeal Br. 10,
12. Appellant also points to page 9, lines 16–18 of the Specification, which
states “Beginning in block 210, a selection of applications, for example,
portlets, can be loaded in an aggregation of applications, for example a
portal.” Appellant argues “a portal is a standalone entity into which distinct
portlets can be added.” Appeal Br. 9.
Appellant further argues the Examiner fails “to appreciate the
difference between ‘separate’ and ‘distinct.’” Reply 2; see also Appeal Br.
11. According to Appellant, “the Examiner’s analysis that refers to
‘included and part of’ is only relative to something that is ‘separate.’” Reply
Br. 2–3. Appellant contends that the word “distinct” essentially means “seen
as not the same or not identical,” but the term “separate” means “kept apart.”
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Reply Br. 3.3 Appellant argues the Examiner has presented a narrow
construction of the term “distinct,” that only describes certain examples of
what can be considered “distinct,” namely, being separate. Reply Br. 4.
Appellant further argues the Examiner errs by construing the term “distinct”
the same as “separate” because claim 37 uses both terms, and the general
assumption is that different terms have different meanings. Reply Br. 4–5.
We do not find Appellant’s arguments persuasive. To satisfy the
written description requirement under 35 U.S.C. § 112(a), the specification
must “reasonably convey[ ] to those skilled in the art that the inventor had
possession” of the claimed invention as of the filing date. Ariad Pharms.,
Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en banc).
Although the Specification need not recite the claimed invention in haec
verba, it must do more than simply render the claimed invention obvious.
Id. at 1352. “One shows that one is ‘in possession’ of the invention by
describing the invention, with all its claimed limitations, ... by such
descriptive means ... that fully set forth the claimed invention.” Lockwood v.
American Airlines Inc., 107 F.3d 1565, 1572 (Fed. Cir. 1997) (citation
omitted). In determining what “the claimed subject matter” is, we apply the
broadest reasonable interpretation of the claim that is consistent with

3 Appellant provides a citation to Dictionary.com’s definition of “distinct,”
as “distinguished as not being the same; not identical; separate (sometimes
followed by from).” Reply Br. 3 (citing
https://www.dictionary.com/browse/distinct). Appellant also provides
citations to Merriam Webster’s and Dictionary.com’s definitions of
“separate.” Reply Br. 3 (citing
https://www.meriam.webster.com/dictionary/separate) and
https://www.dictionary.com/browse/separate).
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Appellant's Specification. See In re American Acad. of Sci. Tech Ctr., 367
F.3d 1359, 1364 (Fed. Cir. 2004). We then perform “an objective inquiry
into the four corners of the specification from the perspective of a person of
ordinary skill in the art,” to determine whether it demonstrates possession of
the claimed subject matter. Ariad, 598 F.3d at 1351.
Appellant’s argument that a portal “is an example of a host
aggregation environment” is not supported by the Specification. Appellant
does not explicitly define a “host aggregation environment” in the
Specification, nor does Appellant provide any evidence or citations to the
Specification in support of the argument that the portal is a host aggregation
environment. Appellant’s Specification indicates that “[t]he host
aggregation environment can include a portal environment, wherein each
application can include a portlet and wherein the aggregation can be a
portal.” Spec. 5; see also Spec. 4 (“aggregating a set of applications in a
host aggregation environment”); Spec. 5 (“each application in an
aggregation in the host aggregation environment”); Spec. 7 (“the host
environment can be a portal environment hosting a portal having a
multiplicity of portlets,” “aggregated application distribution system can
include a host environment 150 such as a portal server hosting an application
aggregation 120 such as a portal including one or more applications 140 as a
set of portlets”); Spec. 8 (“application in the aggregation”); Spec. 9 (“a
collection of applications, for example, portlets, can be loaded in an
aggregation of applications, for example a portal”); Spec. Fig. 1. In other
words, Appellant’s Specification describes three different things: a host
environment, an application aggregation, and one or more applications. In
light of the disclosure in Appellant’s Specification, the portal corresponds to
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the application aggregation, the portlet corresponds to the applications, and
the portal environment corresponds to the host environment. The host
aggregation environment, therefore, includes at least the application
aggregation and the applications, or, both the portal and the portlets. See
Spec. 4, 5, 7, 9, Fig. 1. Claims 37, 43, and 49 recite “a set of applications
that are distinct from the host aggregation environment.” Accordingly,
Appellant’s arguments and supporting citations to the Specification that the
application (portlet) is distinct from the portal are not commensurate with
the claim language.
The question before us whether there is sufficient written description
to support that the applications (or portlets) that are included within or in the
host aggregation environment (e.g., the portal environment, including the
portal and portlets) are distinct from the host aggregation environment.
Even assuming we agree with Appellant as to the appropriate meaning of
“distinct from” as used in the claims, Appellant has not sufficiently
identified where this limitation is supported in the Specification, or provided
evidence that Appellant’s disclosure demonstrates possession of the
invention to one of ordinary skill in the art.
Accordingly, we are not persuaded the Examiner erred in rejecting
claims 37–54 as lacking written description.

35 U.S.C. § 103 Rejections
Appellant argues that the Examiner’s analysis is not based upon the
new language in the claims, in particular, the language “a set of applications
that are distinct from the host aggregation environment,” as recited in
independent claims 37, 43, and 49. Appeal Br. 15. In the Answer, the
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Examiner points to Hayer, column 3, lines 43–67, “that application 1 and
application 2 are distinct from the portal manager as it runs on its own
computing system.” Ans. 9–10. In Reply, Appellant argues “Hayer does
not disclose an application 1 and application 2.” Reply Br. 8.
We are not persuaded. Hayer describes a “portal manager 330 and
several disparate applications.” Hayer 3:46–47; see also Fig. 4, 2:17–18;
3:48–67; 4:40–45. Appellant has not provided sufficient argument as to why
Hayer’s disclosure, as identified by the Examiner, does not teach “a set of
applications that are distinct from the host aggregation environment.” See
Appeal Br. 13.
Appellant also argues the Examiner errs with respect to the limitation
“monitoring, separate from the monitoring for interactivity within the
applications, for interactivity within the host aggregation environment
itself,” recited in independent claims 37, 43, and 49. Specifically, Appellant
argues that “[t]he Board recognized a difference between separately
monitoring for interactivity within the host aggregation environment versus
monitoring for interactivity within the host aggregation environment itself,”
and argues that “[t]he Examiner’s response . . . does not address this
important distinction.” Appeal Br. 17; see also Reply Br. 7–8.
Appellant has not addressed or argued why Hayer does not teach or
suggest the disputed limitation. The Examiner relies on column 1, line 63
through column 2, line 10 of Hayer to teach or suggest this limitation. Final
Act. 8. This portion of Hayer describes an embodiment where “a
communication manager establishes communication sessions for several
applications with a common external terminal . . . [and] may receive
messages identifying terminal activity at one of the applications and may
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signal to the other applications to keep their sessions active.” Hayer, 2:4–10.
Under the broadest reasonable interpretation in light of Appellant’s
Specification (e.g., Spec. 8, 10), we agree with the Examiner that Hayer’s
communication manager receiving messages identifying terminal activity at
one of the applications within a common external terminal teaches or
suggests separately monitoring for interactivity within the host aggregation
environment itself. In other words, separate from any monitoring for
interactivity within the applications (as described in Nickerson, see Final
Act. 7), Hayer’s communication manager monitors for interactivity within
the host aggregation environment itself, which includes the portal manager
and applications within a common external terminal, in that it receives
messages identifying terminal activity at the various applications.
Accordingly, we are not persuaded the Examiner in rejecting claims
37–54 under 35 U.S.C. § 103(a).

CONCLUSION
In summary:
Claims
Rejected
Basis Affirmed Reversed

§ 112(a) 37–54
§ 103(a) 37–54
Overall Outcome 37–54

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

AFFIRMED