11625057 (P.T.A.B. Feb. 26, 2014)

Ex Parte Karamchedu et al

Patent Trial and Appeal BoardFeb 26, 2014

11625057 (P.T.A.B. Feb. 26, 2014)

UNITED STATES PATENT AND TRADEMARKOFFICE 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. 11/625,057 01/19/2007 Murali M. Karamchedu 109166-138203 7784 25943 7590 02/27/2014 Schwabe Williamson & Wyatt PACWEST CENTER, SUITE 1900 1211 SW FIFTH AVENUE PORTLAND, OR 97204 EXAMINER HOLDER, BRADLEY W ART UNIT PAPER NUMBER 2439 MAIL DATE DELIVERY MODE 02/27/2014 PAPER 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. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________________ Ex parte MURALI KARAMCHEDU and JEFFREY B. SPONAUGLE ____________________ Appeal 2011-010350 Application 11/625,057 Technology Center 2400 ____________________ Before JAMES R. HUGHES, ERIC S. FRAHM, and HUNG H. BUI, Administrative Patent Judges. BUI, Administrative Patent Judge. DECISION ON APPEAL Appellants1 seek our review under 35 U.S.C. § 134(a) of the Examiner’s final rejections of claims 1, 2, 4-7, 9-16, 18-22 and 24-30.2 We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE.3 1 The Real Party in Interest is Kryptiq Corporation. 2 Claims 3, 8, 17 and 23 have been cancelled and are not on appeal. Appeal 2011-010350 Application 11/625,057 2 STATEMENT OF THE CASE Appellants’ Invention Appellants’ invention relates to methods and apparatus for providing unique smart identifiers for entities, such as documents or portions thereof, of a data processing system. See Appellants’ Spec. ¶[0001]. An application requests a smart identifier generator to generate a smart identifier for an entity, the request including one or more data values. Id. at ¶¶[0029]-[0030]. The smart identifier generator generates the smart identifier for the entity employing the data values and returns the smart identifier to the requester application. Id. at ¶¶[0033]-[0035]. Claims on Appeal Claims 1, 16 and 22 are the only independent claims on appeal. Claim 1 is representative of the invention,4 as reproduced below with disputed limitations emphasized: 1. A computer implemented method, comprising: receiving by a smart identifier generator, from a requestor, a request to generate a smart identifier for an entity, the request including one or more data values for one or more parameters; 3 Our decision refers to Appellants’ Appeal Brief filed February 7, 2011 (“App. Br.”); Reply Brief filed May 25, 2011 (“Reply Br.”); Examiner’s Answer mailed March 28, 2011 (“Ans.”); Final Office Action mailed August 5, 2010 (“Final Rej.”); and the original Specification filed January 19, 2007 (“Spec.”). 4 Appellants submit independent claims 16 and 22 are patentable for the same reasons as for claim 1. App. Br. 18. Appeal 2011-010350 Application 11/625,057 3 generating or causing to be generated by the smart identifier generator, the requested smart identifier comprising one or more of the data values or derivative data values derived from one or more of the data values; returning or causing to be returned, by the smart identifier generator, the generated smart identifier to the requestor; wherein the entity has an entity type; the request includes the entity types; the one or more data values are for one or more parameters associated with the entity type, and the generating or causing to be generated are based at least in part on the entity type; and the method further comprises receiving by the smart identifier generator, from a custom smart identifier generation function, a registration to register the custom smart identifier generation function to handle generation of smart identifiers for entities of an entity type, and registering the custom smart identifier generation function, by the smart identifier generator, based at least in part on the received registration. Evidence Considered The prior art relied upon by the Examiner in rejecting the claims on appeal is: Kawabe et al. (Kawabe) US 2007/0299880 A1 Dec. 27, 2007 Drelicharz et al. (Drelicharz) US 2005/0209880 A1 Sep. 22, 2005 Examiner’s Rejections (1) Claims 1, 2, 4-7, 9-14, 16, 18-20, 22, 24-27, and 29 stand rejected under 35 U.S.C. § 102(e) as being anticipated by Kawabe. Ans. 4- 18. (2) Claims 15, 21, 28, and 30 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Kawabe and Drelicharz. Id. at 19-24. Appeal 2011-010350 Application 11/625,057 4 ISSUE Based on Appellants’ arguments, the dispositive issue on appeal is whether the Examiner has erred in rejecting: (1) claims 1, 2, 4-7, 9-14, 16, 18-20, 22, 24-27 and 29 under 35 U.S.C. §102(e) as being anticipated by Kawabe, and (2) claims 15, 21, 28 and 30 under 35 U.S.C. §103(a) as being obvious over Kawabe and Drelicharz. App. Br. 13-20. In particular, the appeal turns on whether Kawabe discloses several limitations of Appellants’ independent claim 1. Id. ANALYSIS With respect to independent claim 1, Appellants argue that Kawabe fails to disclose “receiving by the smart identifier generator, from a custom smart identifier generation function, a registration to register the custom smart identifier generation function to handle generation of smart identifiers.” App. Br. 14-16. In particular, Appellants argue that neither a request for a locating screen nor a request to acquire a document teaches or suggests "a registration to register [a] custom smart identifier generation function" as recited in claim 1. App. Br. 15. The Examiner responds that the acquisition request for a document from a user contains a registration and thus equates the request with the recited registration. Ans. 25-27 (citing Kawabe ¶[0067]). We disagree with the Examiner, however. The relevant portion of Kawabe cited by the Examiner involves a user request for a document received by a document management server. See Kawabe ¶[0067]. Based on a document ID of the requested document, a new duplicate ID is Appeal 2011-010350 Application 11/625,057 5 generated and a new duplicate shortcut (SC) is generated. Id. Instead, we agree with Appellants that this user request is merely a request for a document and, consequently, do not find that this user request anticipates the registration language recited in Appellants’ independent claim 1. Appellants further argue that Kawabe fails to disclose the “custom smart identifier generation function” recited in claim 1. App. Br. 16-17. The Examiner responds that Kawabe teaches “the smart identifier generator or duplicate id short cut (SC) provider unit on the document management server receiving a registration or request from the client terminal for a custom smart identifier or duplicate id short cut (SC) generation function.” Ans. 31. Again, we disagree with the Examiner. Nowhere in Kawabe do we find any disclosure of a “duplicate id short cut (SC) generation function.” Nor do we find that a user request containing a document ID as disclosed by Kawabe constitutes a custom smart identifier generation function as recited in Appellants’ independent claim 1. We are thus persuaded by Appellants’ arguments and find that, contrary to the Examiner’s reasoning, Kawabe fails to disclose each and every element of Appellants’ independent claim 1. See In re King, 801 F.2d 1324, 1326 (Fed. Cir. 1986) (citing Lindemann Maschinenfabrik GMBH v. Am. Hoist & Derrick Co., 730 F.2d 1452, 1457 (Fed. Cir. 1984)) (“anticipation of a claim under § 102 can be found only if the prior art reference discloses every element of the claim”). Because Kawabe fails to teach each and every feature of Appellants’ independent claim 1, particularly those features discussed above, we cannot sustain the Examiner’s anticipation rejection of claim 1, as well as its dependent claims 2, 4-7 and 9-14. Since claims 16 and 22 have similar features to those of claim 1, we Appeal 2011-010350 Application 11/625,057 6 cannot sustain the Examiner’s anticipation rejections for claims 16 and 22, as well as their dependent claims 18-20 and 24-27 and 29 for the same reasons discussed. Furthermore, we cannot sustain the obviousness rejection of claims 15, 21, 28 and 30 based on their dependency to independent claims 1, 16 and 22. CONCLUSION On the record before us, we conclude that the Examiner’s final rejections of claims 1, 2, 4-7, 9-14, 16, 18-20, 22, 24-27 and 29 under 35 U.S.C. § 102(e) and claims 15, 21, 28 and 30 under 35 U.S.C. § 103(a) should be withdrawn. DECISION As such, we REVERSE the Examiner’s final rejection of claims 1, 2, 4-7, 9-16, 18-22 and 24-30. REVERSED kmm