Ex Parte Arun et al

Board of Patent Appeals and Interferences

May 30, 2012

11291352 (B.P.A.I. May. 30, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte GOPALAN ARUN and RAMESH VASUDEVAN
____________

Appeal 2010-003468
Application 11/291,352
Technology Center 2400
____________

Before JOSEPH L. DIXON, JEAN R. HOMERE, and
CARL W. WHITEHEAD, JR., Administrative Patent Judges.

DIXON, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from a rejection of claims
1-28. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm-in-part.
The claims are directed to providing collaborative access to software
applications. Claim 1, reproduced below, is illustrative of the claimed
subject matter:
1. A method providing collaborative access to an
application, the method comprising:

identifying an application from a set of independently
operable applications to be accessible from a collaborative
workspace;

creating an application container managed by the
application for storage of application data on behalf of users
accessing the application from the collaborative workspace;

creating a workspace container managed by the
collaborative workspace, the workspace container including
workspace metadata that identifies the application and that
provides collaborative users access to the application from the
collaborative workspace; and

providing collaborative access to the application on
behalf of users of the collaborative workspace, the collaborative
access allowing users to access the workspace metadata to
identify and gain access to the application and allowing the
users access to the application data maintained by the
application within the application container.

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REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Aldred

Prell

Karamanolis

Geyer

Spataro
US 5,649,105

US 2002/0010744 A1

US 2003/0131104 A1

US 2005/0165859 A1

US 2006/0053380 A1
July 15, 1997

Jan. 24, 2002

July 10, 2003

July 28, 2005

Mar. 9, 2006
(filed Nov. 15, 2004)

REJECTIONS1
Claims 1-5, 9, 11-16, 20, and 22-24 stand rejected under 35 U.S.C. §
102(e) as being anticipated by Spataro.
Claims 6 and 17 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Spataro and Geyer.
Claims 7, 8, 18, and 19 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Spataro and Karamanolis.
Claims 10 and 21 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Spataro and Aldred.
Claims 25-28 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Spataro and Prell.

1 We list all the outstanding rejections based on the Final Rejection (Final
Rej. 10-24), as the Examiner’s Answer only repeats those rejections
specifically argued by Appellants (see Ans. 3-12; App. Br. 14-27).
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ANALYSIS
The Anticipation Rejection
The Examiner finds that Spataro discloses “data persistence, so that
data files associated with the collaboration place can be stored for
subsequent access” (Ans. 3; Spataro, Abstract). Appellants contend that
Spataro does not disclose application data maintained by an application
within an application container (App. Br. 18). Rather, Appellants argue,
Spataro discloses containers managed by the collaboration server (Id.). The
Examiner responds that “there is no clear link between the location of the
application container (on the server device) and the appellants’ assertion that
Spataro does not teach the application data maintained by the application
within the application container” (Ans. 16). In other words, claim 1 does not
preclude the application container from being located in the same place as
the workplace (see id.).
We find Appellants’ arguments persuasive. The Examiner has not
shown that Spataro discloses “an application container managed by the
application for storage of application data”, and allowing users to gain
access to “the application data maintained by the application within the
application container”, as recited in claim 1. Spataro’s Abstract does not
specify storing application data, let alone that a container storing the
application data is managed by the application. Rather, the Abstract refers
only to collaboration place data files. In contrast, claim 1 requires that
application data and workspace metadata be stored in respective application
and workspace containers managed, respectively, by the application and the
collaborative workspace. Although the Examiner notes that claim 1 does not
require that the application container reside in a particular location (see Ans.
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16), this does not obviate the Examiner’s burden to show that Spataro
discloses “an application container managed by the application.”
The Examiner also finds that Spataro’s payload data is application
data (Ans. 4; Spataro, ¶ 0062). However, Spataro’s description of the
payload data—“data relevant to a request 138 to establish a new place or
access a pre-existing place, such as a place identifier for the pre-existing
place” (Spataro, ¶ 0062)—does not indicate that the data is application data
for an application accessible through the collaboration place. Rather, it
indicates that the payload data is collaboration place data. In any case, the
Examiner does not show that Spataro discloses storing the payload data in an
application container managed by an application.
We are therefore constrained by the record to find that the Examiner
erred in rejecting independent claim 1, independent claims 12 and 23 which
recite commensurate limitations, and claims 2-5, 9, 11, 13-16, 20, and 22 for
similar reasons.
However, we pro forma sustain the rejection of independent claim 24
because Appellants appealed the rejection of claims 1-28 (App. Br. 1, 5)
and included claim 24 in the Appendix. Yet, Appellants do not argue, let
alone show that the Examiner erred in rejecting claim 24 (see App. Br. 1-
28). See Ex parte Frye, 94 USPQ2d 1072, 1076 (BPAI 2010)
(“Precedential”) (“[T]he Board will generally not reach the merits of any
issues not contested by an appellant.”). Only those arguments actually made
by the Appellants have been considered in this decision. Arguments which
the Appellants could have made but chose not to make in the Briefs have not
been considered and are deemed to be waived. See 37 C.F.R. § 41.37
(c)(1)(vii) (2008). "It is not the function of [the U.S. Court of Appeals for
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the Federal Circuit] to examine the claims in greater detail than argued by an
appellant, looking for nonobvious distinctions over the prior art." In re
Baxter Travenol Labs., 952 F.2d 388, 391 (Fed. Cir. 1991). "Similarly, it is
not the function of this Board to examine claims in greater detail than argued
by an appellant, looking for distinctions over the prior art." Ex Parte Shen,
No. 2008-0418, 2008 WL 4105791 at * 9 (BPAI 2008).

The Obviousness Rejections
Claims 6-8, 10, 25, and 26 depend from claim 1, and claims 17-19,
21, 27, and 28 depend from 12. The Examiner does not find that the
additional cited references cure the deficiencies of Spataro with respect to
claims 1 and 12 (see Ans. 17-24). Therefore, for the reasons discussed
above, we find that the Examiner erred in rejecting claims 6-8, 10, 17-19,
21, and 25-28.

CONCLUSIONS OF LAW
Under 35 U.S.C. § 102(e), the Examiner erred in rejecting claims 1-5,
9, 11-16, 20, 22, and 23, but did not err in rejecting claim 24. Under 35
U.S.C. § 103(a), the Examiner erred in rejecting claims 6-8, 10, 17-19, 21,
and 25-28.

DECISION
For the above reasons, we affirm-in-part the rejections of claims 1-28.
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). See 37
C.F.R. § 41.50(f).
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AFFIRMED-IN-PART

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