12753596 (P.T.A.B. Oct. 18, 2016)

Ex Parte Dietrich et al

Patent Trial and Appeal BoardOct 18, 2016

12753596 (P.T.A.B. Oct. 18, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 121753,596 04/02/2010 91344 7590 11/02/2016 HONEYWELL/JETTER & ASSOC PATENT SERVICES 115 Tabor Road P.O. Box 377 MORRIS PLAINS, NJ 07950 FIRST NAMED INVENTOR Ken Dietrich 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 ATTORNEY DOCKET NO. CONFIRMATION NO. H0023153-0104 4967 EXAMINER YUN, CARINA ART UNIT PAPER NUMBER 2194 NOTIFICATION DATE DELIVERY MODE 11/02/2016 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): patentservices-us@honeywell.com Arlene.Simon@JetterPatents.com neil.jetter@jetterpatents.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte KEN DIETRICH and GARY FOX Appeal2015-002477 Application 12/753,596 Technology Center 2100 Before BRUCE R. WINSOR, HUNG H. BUI, and JOSEPH P. LENTIVECH, Administrative Patent Judges. WINSOR, Administrative Patent Judge. DECISION ON APPEAL .6. .... ,1 .... ,....,-TTr'l.r-"\l\-1,....Al/'\.r'" , .. C- "1 â€¢ ,â€¢ Appeuants' appeal unaer j) u.~.L. s U4~aJ rrom me rma1 reJecuon of claims 1, 3-16, and 18-20, which constitute all the claims pending in this application. We have jurisdiction under 35 U.S.C. Â§ 6(b). Claims 2 and 17 are cancelled. Br. 2. We reverse and institute a new ground of rejection within the provisions of 37 C.F.R. Â§ 41.50(b). 1 The real party in interest identified by Appellants is Honeywell International Inc. Br. 2. Appeal2015-002477 Application 12/753,596 STATEMENT OF THE CASE Appellants' disclosed invention relates to "communicating between an integrated development environment (IDE) process and a process outside the IDE." Spec. i-f 1. Claim 1, which is illustrative, reads as follows: 1. A method for inter-process communications between an integrated development environment (IDE) process and a separate process run on an extension, comprising: communicably coupling said IDE process and said separate process using an inter-process communication module implemented by program code run by a processor, wherein said inter-process communication module provides inter-process call channels for transporting messages between said IDE process and said separate process, and adds a transport layer comprising routing information to said messages; performing an action by a caller that raises an event that includes a requested operation to said IDE process, wherein said requested operation is supported by said separate process but not by said IDE process, and wherein said event is caught by said IDE process; sending a command message from said IDE process to said separate process using a first of said inter-process call channels, wherein said command message includes information for performing said requested operation; performing said requested operation by said separate process, and after completing said requested operation, sending a return message from said separate process using a second of said inter-process call channels to said IDE process, wherein said separate process includes a separate database and said separate process is a master controlling process, further comprising saving data or files generated by performing said requested operation in said separate database in a data format different from a format used by said IDE process to save data or files. 2 Appeal2015-002477 Application 12/753,596 The Examiner relies on the following prior art in rejecting the claims: Griffith et al. US 2004/0122788 Al June 24, 2004 ("Griffith") Blevins US 2004/0221261 Al Nov. 4, 2004 Wason US 2005/0235258 Al Oct. 20, 2005 Davis et al. US 2007 /0226752 Al Sept. 27, 2007 ("Davis") Honeywell, "Experion Custom Algorithm Block An Evolution in Control Language," Product Information Note (May, 2005) ("Honeywell") Claims 7, 8, 15, and 16 stand rejected under 35 U.S.C. Â§ 112, second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the applicant regards as the invention.2 See Final Act. 3. Claims 1, 3---6, 9, 11-14, and 18-20 stand rejected under 35 U.S.C. Â§ 103(a) as being unpatentable over Davis, Blevins, and Griffith. See Final Act 4--8. Claims 7, 8, 15, and 16 stand rejected under 35 U.S.C. Â§ 103(a) as being unpatentable over Davis, Blevins, Griffith and Honeywell. See Final Act 8-9. Claims 10 stand rejected under 35 U.S.C. Â§ 103(a) as being unpatentable over Davis, Blevins, Griffith, and Wason. See Final Act. 9-10. Rather than repeat the arguments here, we refer to the Appeal Brief ("Br." filed Oct. 2, 2014) and the Specification ("Spec." filed Apr. 2, 2010) for the positions of Appellants and the Final Office Action ("Final Act." 2 All rejections are under the provisions of 35 U.S.C. in effect prior to the effective date of the America Invents Act of 2011. Final Act 2. 3 Appeal2015-002477 Application 12/753,596 mailed Apr. 2, 2014) and Examiner's Answer ("Ans." mailed Nov. 4, 2014) for the reasoning, findings, and conclusions of the Examiner. We also refer to the Declaration of Ziad Kaakani ("Kaakani Deel." dated Feb. 17, 2014). REJECTIONS UNDER 35 U.S.C. Â§ 112, 2ND PARAGRAPH CLAIMS 7, 8, 15, AND 16 The issue presented by Appellants' contentions is whether the Examiner errs in finding that "Custom Algorithm Block" is a trademark or trade name that renders claims indefinite. The Examiner finds that claims 7, 8, 15, and 16 are indefinite for using the phrase "Custom Algorithm Block (CAB)" to identify a programming language. Final Act. 3. The Examiner cites to the decision in Ex parte Simpson, 218 USPQ 1020 (Bd. App. 1982), for the proposition that "[a] trademark or trade name is used to identify a source of goods, and not the goods themselves. Thus, a trademark or trade name does not identify or describe the goods associated with the trademark or trade name." Final Act. 3. Appellants contend as follows: The "CAB" process recited in claims 7, 8, 15 and 16 is not a trademark. Moreover, claim 7 and 15 recite not only a "CAB process", rather a "Custom Algorithm Block (CAB) process that implements a sub-system of a control system". The limitation "that implements a sub-system of a control system" is descriptive and clearly defines what is being claimed by the "CAB process". Similarly, claims 8 and 16 recite "wherein said (CAB) process is operable to create and manage at least one control strategy". The limitation "is operable to create and manage at least one control strategy" further defines and limits the claimed CAB process. Since the claim language identifies the particular process being claimed "that implements a sub-system of a control system" and "wherein said (CAB) process is operable to create and manage at 4 Appeal2015-002477 Application 12/753,596 least one control strategy" the claim scope is certain as the process is clearly identified, so that the 35 U.S.C. 112 second paragraph rejections are improper and thus should be removed. Br. 21-22. We agree with Appellants. "The presence of a trademark or trade name in a claim is not, per se, improper under ... 35 U.S.C. 112, second paragraph, but the claim should be carefully analyzed to determine how the mark or name is used in the claim." MPEP Â§ 2173.05(u). A review of the Specification and the Honeywell reference of record in this appeal indicates that "Custom Algorithm Block" and "CAB" are used as proper nouns to identify a custom developed function block that is implementable within a Honeywell Experion Application Control Environment. As such, it is a proprietary term used to distinguish the goods of Honeywell International, Inc. (see Honeywell 4) from competitor's goods. Nevertheless, the present case is more closely analogous to Ex parte Regen, 2013 WL 6253158 (PTAB 2013) (non-precedential) and Ex parte O'Farrell; 2014 WL 2112325 (PTAB 2014) (non-precedential), than to Simpson. The Regen panel held that the recitation of the trademark "Bluetooth" in a claim did not render the claim indefinite because "[u]nlike the facts in the Simpson case, one of ordinary skill in the relevant art would have understood" the meaning of the term "in the context of the claimed invention," Regen, 2013 WL 6253158 at *2; accord O'Farrell, 2014 WL 2112325 at *4 (holding that the recitation of the trademark "Java" did not render the claim indefinite). Here, "Custom Algorithm Block" and "CAB" are used to identify a custom developed function block. Although the terms may be proprietary, they are, on their face, descriptive of claimed element. Accordingly, we conclude one of ordinary skill in the relevant art would have understood "Custom Algorithm 5 Appeal2015-002477 Application 12/753,596 Block" and "CAB" to be custom developed function blocks which may have been developed using the Honeywell Experion Development Environment as it existed on the filing date of the present application. Therefore, we conclude "Custom Algorithm Block" and "CAB" as used in claims 7, 8, 15, and 16, does not render those claims indefinite. Accordingly, we do not sustain the rejection of claims 7, 8, 15, and 16 underÂ§ 112, second paragraph. NEW GROUND OF REJECTION UNDER 35 U.S.C. Â§ 112, 2ND PARAGRAPH, WITHIN 37 C.F.R. Â§ 41.50(b) Claims 1, 3-16, and 18-20 are rejected on a new ground of rejection under 35 U.S.C. Â§ 112, second paragraph, as indefinite for failing to particularly point out and distinctly claim the subject matter which the Appellants regard as the invention. "It is of utmost importance that patents issue with definite claims that clearly and precisely inform persons skilled in the art of the boundaries of protected subject matter." MPEP Â§ 2173. During prosecution "[a] claim is indefinite when it contains words or phrases whose meaning is unclear." MPEP Â§ 2173.05(e). Language in a claim is unclear ifit is "ambiguous, vague, incoherent, opaque, or otherwise unclear in describing and defining the claimed invention ... " In re Packard, 751F.3d1307, 1311 (Fed. Cir. 2014 ), or if it is "is amenable to two or more plausible claim constructions ... "Ex Parte Miyazaki, 89 USPQ2d 1207, 1211 (BPAI 2008) (precedential). However, "[t]he requirement, applied to the real world of modem technology, does not contemplate in every case a verbal precision of the kind found in mathematics." Packard, 751 F.3d at 1313. Furthermore "[b]readth of a clairn is not to be equated vvith indefiniteness." l\!iPEP Â§ 2173. 04, citing In re 1t!iller, 441 F .2d 689, 693 (CCP A 1971). 6 Appeal2015-002477 Application 12/753,596 Recitation of "supported." Claim 1 Claim 1 recites "wherein said requested operation is supported by said separate process but not by said IDE process" (emphasis added). We conclude that as used in claim 1, the term "supported" is unclear in describing and defining the claimed invention. The Examiner explains as follows: Blevins teaches this claimed limitation because Blevins shows in Fig. 3 Plug-ins are separate from the IDE process. The plug-in handles the requested operation. Therefore, it is supported by the plugin but not the IDE process. The plug-in and the IDE process are two separate things. The requested operation is handled only when the plug-in is present (see at least i-f [0077] of Blevins). Ans. 10 (brackets in original). The Examiner thus implicitly construes "support[ s ]"to mean "provides the feature or functionality." This is consistent with a technical dictionary that states "[ s ]upport is a verb that in the tech world means 'This hardware, software has the following feature.'" NEWTON'S TELECOM DICTIONARY 764 (19th ed. 2003); accord NEWTON'S TELECOM DICTIONARY 1139 (27th ed. 2013). Appellants, on the other hand, take the position that Blevins's IDE process "supports" the requested operation (i.e., the plug-in) "because the third party external applications in Blevins must be exposing interfaces for the plug-ins to pass data to/from the plug-ins, so that the particular operation must be supported by both the IDE and the separate process." Br. 11 (referring to Kaakani Deel. 6). In other words, Appellants implicitly construe "support[ s ]" to mean "facilitates the feature or functionality in any way." This is consistent with another technical dictionary that defines 7 Appeal2015-002477 Application 12/753,596 "support" to mean "[t]o work with another program or product." MICROSOFT COMPUTER DICTIONARY 503 (5th ed., 2003). We find both claim constructions to be plausible. We have reviewed Appellants' written description of the invention and, although "support" and its grammatical variants appear in several passages of the Specification, we find no definition or other guidance as to which of the two plausible constructions is the correct one. See Spec. i-fi-13, 5, 7, 16, 19. Accordingly, we conclude the term "supported" in claim 1 is subject to at least two plausible claim constructions, rendering claim 1 indefinite for at least this reason. See Miyazaki, 89 USPQ2d at 1211. Recitation of "separate database." Claim 1 recites that "said separate process includes a separate database ... [and] saving data or files generated by performing said requested operation in said separate database in a data format different from a format used by said IDE process to save data or files" (emphasis added). It is unclear whether the "separate database" is merely separate from said IDE process or separate from some un-recited database "used by said IDE process to save data or files." We have reviewed Appellants' written description and find no guidance to resolve the ambiguity in the meaning of "separate database." See Spec. ,-r 17 Accordingly we conclude the phrase "separate database" renders claim 1 indefinite for this additional reason. Recitation of "master controlling process." Claim 1 recites that the "said separate process is a master controlling process" (emphasis added). It is unclear what functions or features of the separate process qualify it as a "master controlling process." Appellants' 8 Appeal2015-002477 Application 12/753,596 written description indicates that a consequence of a process being a "master controlling process" is that it "act[ s] as a server side process." Spec. i-f 19. Appellants' written description provides no further guidance as to what a "master controlling process" controls or is the master of. Thus, it is impossible to ascertain whether a given separate process is, or is not, a "master controlling process." Accordingly we conclude the phrase "master controlling process" renders claim 1 indefinite for this additional reason. Claim 12 Independent claim 12 recites the terms and phrases discussed supra regarding claim 1. We conclude these terms and phrases render claim 12 indefinite for the same reasons they render claim 1 indefinite. Dependent Claims We have entered new grounds of rejection for independent claims 1 and 12 for indefiniteness. Claims 3-11, and 19 depend, directly or indirectly, from claim 1 and are indefinite at least because they depend from, and incorporate, an indefinite claim. Similarly, claims 13-15, 16, 18, and 20 depend from claim 12 and are indefinite at least because they depend from, and incorporate, an indefinite claim. We note that we have not reviewed claims 3-11, 13-16, and 18-20 to ascertain if there are additional words or phrases whose meaning is unclear. REJECTIONS UNDER 35 U.S.C. Â§ 103(a) Claims 1, 3-16, and 18-20 are rejected as being indefinite under the new ground of rejection under 35 U.S.C. Â§ 112, second paragraph, discussed supra. In view of the indefiniteness of claims 1, 3-16, and 18-20, we find 9 Appeal2015-002477 Application 12/753,596 that it is not possible to ascertain what claims 1, 3-16, and 18-20 cover. Accordingly, we find the Examiner's rejections of claims 1, 3-16, and 18- 20 are necessarily based on speculation and assumptions. See In re Steele, 305 F.2d 859, 862 (CCPA 1962) ("We do not think a rejection under 35 U.S.C. Â§ 103 should be based on ... speculations and assumptions .... [I]t is essential to know what the claims do in fact cover."). Therefore, we decline proforma to sustain the rejections of claims 1, 3-16, and 18-20. It should be understood, however, that our decision in this regard is based solely on the indefiniteness of the claimed subject matter and does not reflect the adequacy or the inadequacy of the prior art evidence applied in support of the rejection before us. Once definite claims are presented, the Examiner is free to apply the same, different, or additional prior art if the Examiner so chooses. DECISION The decision of the Examiner to reject claims 7, 8, 15, and 16 under 35 U.S.C. Â§ 112, second paragraph, is reversed. We enter a new ground of rejection of claims 1, 3-16, and 18-20 under 35 U.S.C. Â§ 112, second paragraph. The decision of the Examiner to reject claims 1, 3-16, and 18-20 under 35 U.S.C. Â§ 103 is reversed proforma. This decision contains new grounds of rejection pursuant to 37 C.F.R. Â§ 41.50(b). Section 41.50(b) provides that "[a] new ground of rejection ... shall not be considered final for judicial review." Section 41.50(b) also provides that Appellants, WITHIN TWO MONTHS FROM THE DATE OF THE DECISION, must exercise one of 10 Appeal2015-002477 Application 12/753,596 the following two options with respect to the new ground of rejection to avoid termination of the appeal as to the rejected claims: (1) Reopen prosecution. Submit an appropriate amendment of the claims so rejected or new Evidence relating to the claims so rejected, or both, and have the matter reconsidered by the examiner, in which event the proceeding will be remanded to the examiner. . . . (2) Request rehearing. Request that the proceeding be reheard underÂ§ 41.52 by the Board upon the same Record. 37 C.F.R. Â§ 41.50(b). No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. Â§ 1.136(a)(l). See 37 C.F.R. Â§Â§ 41.50(f), 41.52(b) (2013). REVERSED 37 C.F.R. Â§ 41.50(b) 11 * A B c D E F G H I J K L M * N 0 p Q R s T * u v w x Application/Control No. Notice of References Cited 12/753,596 Examiner I Appeal No. 2014-002477 U.S. PATENT DOCUMENTS Document Number Date Country Code-Number-Kind Code MM-YYYY Name US- US- US- US- US- US- US- US- US- US- US- US- US- FOREIGN PATENT DOCUMENTS Document Number Date Country Code-Number-Kind Code MM-YYYY Country Name NON-PATENT DOCUMENTS Applicant(s)/Patent Under Reexamination Dietrich, et al. Art Unit I Page 1 of 1 12194 Classification 70715 Classification Include as applicable: Author, Title Date, Publisher, Edition or Volume, Pertinent Pages) Harry Newton, Newton's Telecom Dictionary (19th Ed.), Â©2003 Harry Newton, CMP Books, page 764 Harry Newton et al., Newton's Telecom Dictionary (27th Ed.),Â© 2013 Harry Newton, Flatiron Publishing, page 1139 Microsoft Computer Dictionary (5th Ed.),Â© 2002 Microsoft Corporation, page 503 *A copy of this reference 1s not being furnished with this Office action. (See MPEP Â§ 707.05(a).) Dates in MM-YYYY format are publication dates. Classifications may be US or foreign. U.S. Patent and Trademark Office PT0-892 (Rev. 01-2001) Notice of References Cited Part of Paper No.