Ex Parte Hitomi et al

Patent Trial and Appeal Board

Dec 20, 2017

14024584 (P.T.A.B. Dec. 20, 2017)

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.
14/024,584 09/11/2013 Arthur S. Hitomi 33PG-172200 6669
69849 7590 12/22/2017
SHEPPARD, MULLIN, RICHTER & HAMPTON LLP
379 Lytton Avenue
Palo Alto, CA 94301
EXAMINER
BUI, JONATHAN A
ART UNIT PAPER NUMBER
2448
NOTIFICATION DATE DELIVERY MODE
12/22/2017 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):
svpatents @ sheppardmullin.com
S heppardMullin_Pair @ firsttofile. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ARTHUR S. HITOMI, DAI KOBAYASHI,
DOUG PFIFFNER, and OSMAN KENT1
Appeal 2017-006392
Application 14/024,584
Technology Center 2400
Before JUSTIN BUSCH, JOHN P. PINKERTON, and
MATTHEW J. McNEILL, Administrative Patent Judges.
Opinion for the Board filed by Administrative Patent Judge JOHN P.
PINKERTON.
Opinion Concurring filed by Administrative Patent Judge JUSTIN BUSCH.
PINKERTON, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Final Rejection
of claims 1 and 3—21, which constitute all of the claims pending in the
application. Claim 2 is canceled. We have jurisdiction under 35 U.S.C.
§ 6(b).
We affirm.
1 Appellants identify Numecent Holdings, Inc. as the real party in interest.
App. Br. 2.
Appeal 2017-006392
Application 14/024,584
STATEMENT OF THE CASE
Introduction
Appellants describe the disclosed and claimed invention as follows:
Systems and methods for pixel streaming a stream-enabled
application to a client device that is executed on an intermediary
client device virtualization system. Portions of a stream-enabled
application are used to begin execution of the stream-enabled
application on the client device virtualization system. The output
of the beginning of execution of the stream-enabled application
are used to generate a pixel based stream-enabled application
stream. The pixel-based stream-enabled application stream is
sent to the client device. User interactions in response to the
display of the stream are represented in user interaction data. The
user interaction is determined from the user interaction data and
application execution commands are determined based on the
determined user interaction. Continued execution of the stream-
enabled application occurs based on the application execution
commands. The pixel-based stream-enabled application stream
is modified according to the continued execution of the stream-
enabled application.
Abstract.2
Claim 1 is representative of the subject matter on appeal and
reproduced below (with the disputed limitations emphasized)'.
1. A method comprising:
receiving portions of a stream-enabled application, at a
client device virtualization system;
2 Our Decision refers to the Final Action mailed Apr. 19, 2016 (“Final
Act.”); Appellants’ Appeal Brief filed Sept. 19, 2016 (“App. Br.”) and Reply
Brief filed Feb. 1, 2017 (“Reply Br.”); the Examiner’s Answer mailed Dec.
1, 2016 (“Ans.”); and, the original Specification filed Sept. 11, 2013
(“Spec.”).
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Application 14/024,584
beginning execution of the stream-enabled application at
the client device virtualization system;
generating a pixel-based stream-enabled application
stream based on a beginning output of the beginning execution
of the stream-enabled application;
sending the pixel-based stream-enabled application stream
to a client device;
receiving user interaction data based on a user of the client
device interacting with a display of the pixel-based stream-
enabled application stream;
determining a user interaction from the user interaction
data;
determining application execution commands based on the
determined user interaction;
continuing execution of the stream-enabled application at
the client device virtualization system based on the determined
application execution commands;
modifying the pixel-based stream-enabled application
stream based on a continued output of the continuing execution
of the stream-enabled application;
sending the modified pixel-based stream-enabled
application stream to the client device.
App. Br. 26 (Claims App’x).
Rejections on Appeal
Claims 12—21 stand rejected under 35 U.S.C. § 112, second
paragraph, as being indefinite for failing to particularly point out and
distinctly claim the subject matter which the inventors regard as the
invention.
Claims 1,9, 11, 12, 19, and 21 stand rejected under 35 U.S.C.
§ 102(e) as being anticipated by Duggal (US 2012/0297311 Al; published
Nov. 22, 2012).
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Claims 3, 5, 6, 13, 15, and 16 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over Duggal and Schwarz et al. (US 2006/0083308
Al; published Apr. 20, 2006) (“Schwarz”).
Claims 4, 10, 14, and 20 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Duggal and He (US 2014/0169471 Al; published
June 19, 2014).
Claims 7 and 17 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Duggal and Deever et al. (US 2008/0165280 Al;
published July 10, 2008) (“Deever”).
Claims 8 and 18 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Duggal and Bhaskar et al. (US 7,522,664 Bl; issued Apr.
21, 2009) (“Bhaskar”).
ANALYSIS
Rejection of Claims 12—21 under § 112, second paragraph
The Examiner concludes that the claim 12 limitation of “a client
device virtualization system configured to . . .” invokes 35 U.S.C. § 112,
sixth paragraph. Final Act. 3. The Examiner finds the written description
fails to disclose the corresponding structure, material or acts for the claimed
function and therefore, concludes that claim 12 is indefinite under 35 U.S.C.
§ 112, second paragraph. Id.
Appellants contend, inter alia, the limitation “a client device
virtualization system” fails to invoke 35 U.S.C. § 112, sixth paragraph.
App. Br. 8—9; Reply Br. 2—3. In particular, Appellants argue the limitation
does not use the term “means” and, therefore, the rebuttable presumption
that the limitation does not invoke § 112, sixth paragraph, is triggered. App.
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Br. 8 (citing MPEP § 2182 (Nov. 2015)). Appellants also argue that the
presumption is not overcome because Appellants’ Specification “explicitly
defines the ‘client device virtualization system’ as including definite
structure.” App. Br. 9 (citing Spec. 126). Appellants further argue “the
Specification does limit the ‘client device virtualization system’ to
hardware.” Reply Br. 2 (citing Spec. 132).
There is a rebuttable presumption that claim terms lacking the word
“means” do not invoke § 112, paragraph 6. Williamson v. Citrix Online,
LLC, 792 F.3d 1339, 1348 (Fed. Cir. 2015) (enbanc). “[MJerely because an
element does not include the word ‘means’ does not automatically prevent
that element from being construed as a means-plus-fimction element.” Id. at
1348 (quoting Cole v. Kimberly-Clark Corp., 102 F.3d 524, 531 (Fed. Cir.
1996)). “The standard is whether the words of the claim are understood by
persons of ordinary skill in the art to have a sufficiently definite meaning as
the name for structure.” Id. at 1349 (quoting Greenberg v. Ethicon Endo—
Surgery, Inc., 91 F.3d 1580, 1583 (Fed. Cir. 1996)); see also Media Rights
Techs., Inc. v. Capital One Fin. Corp., 800 F.3d 1366, 1372 (Fed. Cir. 2015)
(“In undertaking this [means-plus-fimction] analysis, we ask if the claim
language, read in light of the specification, recites sufficiently definite
structure to avoid § 112,16”) (quoting Robert Bosch, LLC v. Snap-On Inc.,
769 F.3d 1094, 1099 (Fed. Cir. 2014)).
We are persuaded by Appellants’ arguments that the Examiner erred.
Because the limitation at issue — “a client device virtualization system
configured to ...” — does not use the word “means,” we agree with
Appellants there is a rebuttable presumption that § 112, paragraph 6, does
not apply. Williamson, 792 F.3d at 1348. We also agree with Appellants’
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argument that the claimed “client device virtualization system” recites
definite structure. In that regard, paragraph 26 of the Specification states
this system “can be implemented as a computer system or parts of a
computer system or a plurality of computer systems. ... In general, a
computer system will include a processor, memory, non-volatile storage, and
an interface.” The Examiner finds this description to be “exemplary in
nature and clearly not limiting a ‘client device virtualization system’ as
structural.” Ans. 4. Although paragraph 26 uses the phrase “can be
implemented,” each example identified is a computer system or part thereof.
Thus, we find that a person of ordinary skill in the art, considering the claim
limitation and paragraph 26 of the Specification, would understand “client
device virtualization system” to be the name for structure—a computer
system, comprising a computer. Because the limitation “client device
virtualization system” denotes structure, it is not necessary that it identify or
call to mind a single well-defined computer structure. Greenberg, 91 F.3d at
1583 (“What is important is . . . that the term, as the name for structure, has
a reasonably well understood meaning in the art”); see also Power
Integrations, Inc. v. Fairchild Semiconductor Inti, Inc., 711 F.3d 1348,
1365 (Fed. Cir. 2013) (“[W]e require only that the claim term be used in
common parlance or by ordinarily skilled artisans to designate sufficiently
definite structure, even if the term covers a broad class of structures”)
(internal citation omitted).
Thus, the presumption that § 112, paragraph 6, does not apply is not
overcome because the limitation at issue recites definite structure.
Accordingly, we do not sustain the Examiner’s rejection of claim 12 as
indefinite under § 112, paragraph 2, because § 112, paragraph 6, does not
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Application 14/024,584
apply to the limitation “a client device virtualization system.” For the same
reason, we do not sustain the Examiner’s rejection of dependent claims
13-21.
Rejection of Claims 1, 9, 11, 12, 19, and 21 under § 102(e)3
The Examiner finds that Duggal anticipates claim 1. Final Act. 5—7.
Appellants contend that the Examiner has failed to show that Duggal
anticipates claim 1. App. Br. 10—15; Reply Br. 3—8. In particular,
Appellants argue that, “[i]n teaching a remote host where an entire remote
application resides,” Duggal fails to disclose “receiving portions of a
stream-enabled application at a client device virtualization system.” App.
Br. 13 (citing Duggal Fig. 3). According to Appellants, “the remote
application used as part of providing the virtual computer service, as taught
by Duggal, resides in its entirety at the interconnected servers” and,
therefore, Duggal does not disclose “receiving portions of a stream-
enabled application, at a client device virtualization system.” Reply Br. 4—
5 (citing Duggal Fig. 3,138). Appellants also argue Duggal fails to disclose
“a pixel-based stream-enabled application stream.” App. Br. 13—14; Reply
Br. 6—8. According to Appellants, the word “pixel” does not appear in
Duggal and, by merely citing a display at a client device, the Examiner has
3 Appellants argue the rejection of claims 1,9, 11, 12, 19, and 21 as a group.
See App. Br. 10-18; Reply Br. 3—8. Appellants focus on independent claims
1 and 12, and present substantially the same arguments for both claims. Id.
We consider claim 1 to be representative and, therefore, we review the
rejection of these claims on the basis of representative claim 1. See 37
C.F.R. § 41.37(c)(l)(iv).
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not shown that Duggal discloses “actual creation of a pixel-based stream-
enabled application stream.” Id.
We are not persuaded by Appellants’ arguments that the Examiner
erred. First, regarding the limitation “receiving portions of a stream-enabled
application at a client device virtualization system,” the Examiner finds:
As previously shown by the examiner, Duggal teaches a virtual
computing service including several servers and controlled by a
central grid that determines when and where to retrieve aspects
of the virtual computing service when requested by a user device
in paragraph [0038]. As an example, the service enables the
central grid of servers to identify a remote application and
streaming portions of the application to the user (see paragraph
[0042]). Furthermore, FIG. 1 clearly shows that the application
repository and virtual computing system are separate, thus
showing that the application is received as claimed.
Ans. 4—5.
For the reasons stated by the Examiner, we agree with the Examiner’s
findings. Contrary to Appellants’ argument that the application used as part
of providing the virtual computer service “resides in its entirety at the
interconnected servers,” Figure 1 shows, as the Examiner finds, the
application repository 132 and the virtual computing system 100 are
separate. See Duggal Fig. 1. Appellants did not respond to the above
findings of the Examiner in the Reply Brief. Thus, we find the
preponderance of the evidence supports the Examiner’s finding that Duggal
discloses “receiving portions of a stream-enabled application at a client
device virtualization system,” as recited in claim 1.
Second, regarding the limitation “a pixel-based stream-enabled
application stream,” the Examiner finds:
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The examiner notes that the Duggal disclosure references known
application streaming software, such as “AppStream” or
“Softricity” (see paragraph [0214]). Softricity’s application
streaming, at the time Duggal was published, was known to be
pixel based, and therefore [] Duggal’s application streaming,
which may use Softricity’s streaming software, is also pixel
based. Evidence that Softricity’s application streaming was pixel
based is found in Softricity’s patent Pub. No. US 2005/0010670
A1 . . . .
Ans. 5.
In response, Appellants argue that the cited portion of Softricity’s
published application referred to above by the Examiner, which Appellants
refer to as Greschler,4 “relates to assessing requirements to execute an
application at a client device” and, therefore, “the Examiner has not shown
how Greschler remedies the deficiencies of Duggal with respect to teaching
pixel streaming.” Reply Br. 7—8. This argument is not persuasive, however,
because it fails to address the Examiner’s findings that Duggal discloses
application streaming can be accomplished with Softricity software that “at
the time Duggal was published, was known to be pixel based.” Ans. 5
(citing Duggal 1214). Thus, we find the preponderance of the evidence
establishes that Duggal discloses “a pixel-based stream-enabled application
stream,” as recited in claim l.5
4 Greschler et al., US 2005/0010670 Al, published Jan. 13, 2005.
5 For the same reasons, we find Duggal discloses “the pixel-based stream-
enabled application stream” in the other limitations of claim 1 that are
identified by Appellants, but not separately argued. See App. Br. 14; Reply
Br. 8. We note that the mere reference to these other limitations amounts to
no more than reciting the claim language and alleging the cited prior art is
deficient, which does not constitute a separate argument for patentability of
the claim. See 37 C.F.R. § 41.37(c)(l)(iv) (“A statement which merely
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For the foregoing reasons, and based on a preponderance of the
evidence, we are not persuaded the Examiner erred in finding Duggal
discloses the disputed limitations of claim 1. Accordingly, we sustain the
Examiner’s rejection of claim 1 for anticipation under 35 U.S.C. § 102(e).
For the same reasons, we also sustain the Examiner’s rejection under
§ 102(e) of independent claim 12, as well as claims 9, 11, 19, and 21, which
depend variously from claims 1 and 12, and are not separately argued.
Remaining Claims
As indicated above, claims 3—8, 10, 13—18, and 20 are rejected as
unpatentable under 35 U.S.C. § 103(a) based on the combination of Duggal
with one of Schwarz, He, Deever, and Bhaskar. Appellants argue claims
3—8, 10, 13—18, and 20 are patentable over Duggal in view of these
secondary references because the secondary references do not cure the
asserted deficiencies of Duggal as argued with respect to claim 1, which also
apply to claim 12. See App. Br. 18—24. For the reasons discussed above
regarding claim 1, we are not persuaded there are any deficiencies in the
disclosure of Duggal with respect to the arguments raised by Appellants as
to claim 1. Accordingly, we sustain the Examiner’s rejection of claims 3—8,
10, 13—18, and 20 under § 103(a).
DECISION
We reverse the Examiner’s rejection of claims 12—21 under 35 U.S.C.
§112, second paragraph.
points out what a claim recites will not be considered an argument for
separate patentability of the claim.”); see also In re Lovin, 652 F.3d 1349,
1357 (Fed. Cir. 2011).
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We affirm the Examiner’s decision rejecting claims 1,9, 11, 12, 19,
and 21 under 35 U.S.C. § 102(e).
We affirm the Examiner’s decision rejecting claims 3—8, 10, 13—18,
and 20 under 35 U.S.C. § 103(a).
No time period for taking any subsequent action in connection with
this appeal maybe extended. See 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED
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UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ARTHUR S. HITOMI, DAI KOBAYASHI,
DOUG PFIFFNER, and OSMAN KENT
Appeal 2017-006392
Application 14/024,584
Technology Center 2400
Before JUSTIN BUSCH, JOHN P. PINKERTON, and
MATTHEW J. McNEILL, Administrative Patent Judges.
BUSCH, Administrative Patent Judge, CONCURRING.
I write separately because I respectfully disagree with the majority’s
opinion that claims 12—21 do not invoke 35U.S.C. § 112, sixth paragraph.
In particular, I believe the record supports the Examiner’s finding that the
recited “client device virtualization system” invokes 35 U.S.C. § 112, sixth
paragraph, notwithstanding the fact that the term does not recite the word
“means.” The majority has succinctly laid out the legal framework, so I will
not repeat it in its entirety; rather, I will focus on the areas of disagreement.
My opinion differs from the majority’s in that I believe the recited
“client device virtualization system” would not be “understood by persons of
ordinary skill in the art to have a sufficiently definite meaning as the name
for structure” that is capable of carrying out the recited functions.
Williamson v. Citrix Online, LLC, 792 F.3d 1339, 1348 (Fed. Cir. 2015) (en
banc) (citing Greenberg v. Ethicon Endo-Surgery, Inc., 91 F.3d 1580, 1584
Appeal 2017-006392
Application 14/024,584
(Fed. Cir. 1996)). More specifically, I would find the presumption against
applying § 112, sixth paragraph, is overcome because the claim merely
“recites ‘function without reciting sufficient structure for performing that
function.’” Id. (quoting Watts v. XL Sys., Inc., 232 F.3d 877, 880 (Fed. Cir.
2000)).
As in Williamson, the claim limitation in question is not the “client
device virtualization system” by itself; it includes all six of the functions that
it is “configured to” perform. See id. at 1350. Thus, similar to Williamson,
the claims here do not recite the term “means,” but “the limitation is drafted
in the same format as a traditional means-plus-fimction limitation, and
merely replaces the term ‘means’ with ‘nonce’ word [system], thereby
connoting a generic ‘black box’ for performing the recited functions.” Id.
The term “system” in this context is used as a generic term tantamount to
reciting a means because “system” provides no indication of the structure
necessary to perform the recited functions. Similarly, the prefix “client
device virtualization” provides no insight to one of ordinary skill in the art
regarding the structure necessary to perform the recited functions. Here, as
in Williamson, even if one of ordinary skill in the art would be capable of
programming a computer to perform the recited functions, it is not sufficient
to create the structure not otherwise disclosed. Id. at 1351.
Furthermore, I agree with the Examiner that the Specification’s
disclosure that a client device virtualization system “can be implemented as
a computer system or parts of a computer system or a plurality of computer
systems” and “[i]n general, a computer system will include a processor,
memory, non-volatile storage, and an interface” is exemplary language and
does not limit the client virtualization to a computer system, a part of a
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computer system, or a plurality of computer systems. Spec. 126. More
importantly, even assuming the Specification limits the recited client device
virtualization system to include a computer system having a processor and
memory, I disagree that such a disclosure is sufficient structure to avoid
invoking § 112, sixth paragraph.
The identified generic computer components, without specific
programming are not capable of performing each of the recited functions.
Williamson, 792 F.3d at 1350-51 (finding the presumption against invoking
§112, sixth paragraph, is overcome because the recitation of a “distributed
learning control module” connotes insufficient structure for carrying out the
recited functions). Appellants provide no reason for me to believe
otherwise. Thus, even if the claim recited a computer system configured to
perform the recited functions, I would still find the claim “recites ‘function
without reciting sufficient structure for performing that function,’” because
an off-the-shelf computer system is unable to perform at least some of the
recited functions without specific programming. Williamson, 792 F.3d at
1339. Even prior to Williamson overruling previous cases holding the
presumption that § 112, sixth paragraph, is not invoked if the claim does not
recite the term “means” is “strong,” 792 F.3d at 1349, the Board provided
guidance on the issue before us.
For example, the Board found the recitation of a generic processor
configured to perform functions that would require special programming
invoked § 112, sixth paragraph. Ex parte Lakkala, Appeal No. 2011-
001526, 2013 WL 1341108, at *6 (BPAI March 11, 2013) (informative).
Similarly, the Board found a claim that recited, in part, “a processor adapted
to” perform various functions invoked § 112, sixth paragraph, and explained
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that “[t]o see whether the presumption is overcome, we look to how a skilled
artisan would understand ‘processor,’ whether the limitation recites
sufficient structure, material, or acts for achieving the recited functions, and
whether the term ‘processor’ is modified by functional language.” Ex parte
Erol, Appeal No. 2011-001143, 2013 WL 1341107, at *8-9 (PTAB March
11, 2013) (informative); accord Ex parte Smith, Appeal No. 2012-007631,
2013 WL 1341109, at *6—8 (PTAB March 12, 2013) (informative). The
PTAB further explained that “[t]o confirm whether the presumption against
such a substitution is overcome, we look to determine whether the functions
performed by the processor are typical functions found in a commercially,
available off-the-shelf processor, which would weigh against invoking §
112, sixth paragraph.” Erol, 2013 WL 1341107, at *8.
Accordingly, I respectfully disagree with the majority that the recited
“client device virtualization system configured to” perform various functions
fails to invoke § 112, sixth paragraph.
Next, I would review the Specification to determine whether there is
sufficient structure to support the recited functions. For similar reasons, I
agree with the Examiner that the Specification’s disclosure that a client
device virtualization system may comprise a computer system, part of a
computer system, or a plurality of computer systems does not disclose
sufficient structure for performing at least some of the recited functions
attributed to the client device virtualization system. Net MoneyIN, Inc. v.
VeriSign, Inc., 545 F.3d 1359 (Fed.Cir.2008) (holding “a means-plus-
function claim element for which the only disclosed structure is a general
purpose computer is invalid if the specification fails to disclose an algorithm
for performing the claimed function”).
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Although a general purpose computer may provide sufficient structure
to perform functions that do not require special programming, the same
general purpose computer is insufficient structure for performing specific
functions that require special programming. In re Katz, 639 F.3d 1303, 1316
(Fed. Cir. 2011). In such cases where a specific function is recited, the
corresponding structure may be sufficiently disclosed in the form of an
algorithm. “A general purpose computer, or microprocessor, programmed to
carry out an algorithm creates ‘a new machine, because a general purpose
computer in effect becomes a special purpose computer once it is
programmed to perform particular functions pursuant to instructions from
program software.’” IVMS Gaming, Inc. v. Int’l Game Tech., 184 F.3d 1339,
1348 (quoting In re Alappat, 33 F.3d 1526, 1545 (Fed. Cir. 1994)).
Appellants argue the flowcharts depicted in Figures 5 and 6 and the
accompanying description disclose “an algorithm corresponding to the
structure of claim 12.” Reply Br. 3. However, neither the flowcharts nor the
Figures provide any algorithm or details regarding how the function is
performed. Spec. Tflf 75—86, Figs. 5, 6. The board has held that “[m]ere
reference to a general purpose computer or processor with appropriate
programming without providing an explanation of the appropriate
programming or to ‘software’ without providing detail about the means to
accomplish the software function is not an adequate disclosure.” Ex parte
Cadarso, Appeal No. 2010-008797, 2013 WL 1870808, at *8 (PTAB April
1, 2013) (informative); accord Erol, 2013 WL 1341107, at *7. Moreover,
simply reciting the claimed function in the specification, while saying
nothing about how the computer or processor ensures that those functions
are performed, is not a sufficient disclosure for an algorithm which, by
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definition, must contain a sequence of steps.” Cadarso, 2013 WL 1870808,
at *8; accordErol, 2013 WL 1341107, at *7.
Similar to the claims found indefinite in Katz, at least the claimed
function of “determin[ing] application execution commands based on the
determined user interaction” is broad enough to cover any relationship
between an application execution command and the determined user
interaction. Katz, 639 F.3d at 1315. Appellants’ claims, therefore, to a
generic computer system “programmed to perform a specialized function
without disclosing the internal structure of that processor in the form of an
algorithm” “fail to fulfill the ‘public notice function’ of35U.S.C. § 112^2
by ‘particularly pointing out and distinctly claiming’ the invention” and
“exhibit the ‘overbreadth inherent in open-ended functional claims.” Id.
(citing Praxair, Inc. v. ATMI, Inc., 543 F.3d 1306, 1319 (Fed. Cir. 2008);
quoting Halliburton Energy Servs. v. M—ILLC, 514 F.3d 1244, 1256 n.7
(Fed. Cir. 2008)).
For the above reasons, I also respectfully disagree with the majority’s
ultimate reversal of the Examiner’s rejection of claims 12—21 under
35U.S.C. § 112, second paragraph. However, I would reverse the
Examiner’s rejection of claims 12—21 as anticipated or obvious under
35 U.S.C. §§ 102, 103 because, without knowing what the corresponding
structure (or its equivalents) of a “client device virtualization system” is,
applying the art would require speculation, in which I would not engage.
Finally, I agree with the majority’s findings and conclusions regarding the
rejection of claims 1 and 3—11. In sum, I would affirm the Examiner’s
rejection of claims 1 and 3—11, reverse the art rejections of claims 12—21,
and affirm the rejection of claims 12—21 under 35 U.S.C. § 112, second
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paragraph. Accordingly, because I agree with the majority’s affirmance of
each appealed claim on at least one ground of rejection, I concur in the
result.
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