Ex Parte Muller et alDownload PDFPatent Trial and Appeal BoardDec 26, 201311839857 (P.T.A.B. Dec. 26, 2013) Copy Citation 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. 11/839,857 08/16/2007 Michael Muller CAM920070008US1 (175) 9231 46321 7590 12/26/2013 CAREY, RODRIGUEZ, GREENBERG & O''''KEEFE, LLP STEVEN M. GREENBERG 7900 Glades Road SUITE 520 BOCA RATON, FL 33434 EXAMINER PAPPAS, PETER ART UNIT PAPER NUMBER 2444 MAIL DATE DELIVERY MODE 12/26/2013 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 MICHAEL MULLER and ANDREW L. SCHIRMER ___________ Appeal 2011-006489 Application 11/839,857 Technology Center 2400 ____________ Before ST. JOHN COURTENAY, III, THU A. DANG, and CARL W. WHITEHEAD, JR., Administrative Patent Judges. WHITEHEAD, JR., Administrative Patent Judge. DECISION ON APPEAL Appeal 2011-006489 Application 11/839,857 2 STATEMENT OF THE CASE Appellants are appealing claims 1-13. Appeal Brief 5. We have jurisdiction under 35 U.S.C. § 6(b) (2012). We affirm. Introduction The invention is directed to “method for referencing relative roles suffixes in a collaborative computing environment.” Appeal Brief 2. Illustrative Claim (Emphasis Added) 1. A method for referencing relative role suffixes in a collaborative computing environment, the method comprising: receiving as input to a collaborative tool in the collaborative computing environment, a relative reference to a member of the collaborative computing environment; decomposing the relative reference into a prefix and a suffix; determining a member specified by the prefix and a role specified by the suffix; transforming the role to a member of the collaborative computing environment relative to the member specified by the prefix; and, returning the transformed member to the collaborative tool. Rejections on Appeal Claims 1, 2, 4-9, and 11-13 stand rejected under 35 U.S.C. § 102(b) as being anticipated by Castro (U.S. Patent Application Publication Number 2006/0173936 A1; published August 3, 2006). Answer 3-5. Claims 3 and 10 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Castro and Lindsey (International Application Publication Number WO 01/86504 A2; published November 15, 2001). Answer 5-6. Appeal 2011-006489 Application 11/839,857 3 Issue Do Castro and Lindsey, either alone or in combination, disclose or would have suggested “transforming the role to a member of the collaborative computing environment relative to the member specified by the prefix” as recited in claim 1? ANALYSIS We have reviewed the Examiner’s rejections in light of Appellants’ arguments that the Examiner has erred. We disagree with Appellants’ arguments. We concur with the findings and reasons set forth by the Examiner in the action from which this appeal is taken and the reasons set forth by the Examiner in the Answer in response to Appellants’ Appeal Brief. However, we highlight and address specific findings and arguments for emphasis as follows. Appellants argue that the act of transforming is an active step and “Castro does not appear to teach any ‘transforming’ but instead only teaches that a context predicate can include an entry such [sic] the ‘designated human resource specialist for Jenny’s department.’” Appeal Brief 7. Appellants argue that the Examiner’s analysis of Castro ignores Appellants’ arguments and the language of the claim. Id. at 8. Appellants contend: As claimed, first the “relative reference” is decomposed into a prefix and a suffix. There is no teaching of Castro that shows a prefix and suffix as is recognize by one of reasonable skill in the art. To the contrary, in figure 3, Castro teaches an “initial” request having “a [first] set of explicitly identified user or device identifiers” and “a second set of context predicates”. This is not the “relative reference” as defined by Appellants’ Appeal 2011-006489 Application 11/839,857 4 disclosure as [prefix] [delimiter] [suffix] in lines 10-13 of paragraph [0021] and illustrated in the table of paragraph [0018] which is presented below. For example, in the first entry of the table, “A. McIntosh” is the [prefix], the “.” is the [delimiter] and “self” is the [suffix]. Appeal Brief 8. The Examiner finds Castro teaches the transforming limitation as claimed: Castro teaches resolving a request for implicit users and transforming it into the corresponding user identifiers. Castro 0038. Appellant further states that Castro teaches no prefix and a suffix in the [prefix][delimiter][suffix] format. Brief, p. 8. However, the [prefix][delimiter][suffix] format is not part of the claim language. Furthermore, Castro teaches a name-value pair, which is equivalent to a prefix suffix format. Castro teaches an example of the request that consists of a user identifier (john@xyz.com) followed by an implicit user identification that consists of “managers of John who are in the same building as John.” Castro 0038. Identically as in Appellant's claims, this format is nothing more than a prefix- suffix combination where the user identifier is the prefix and the relative reference is the suffix. Answer 8. We disagree with Appellants’ arguments that Castro fails to disclose the claimed transforming step and agree with the Examiner’s findings. See Answer 8. Appellants further argue that Castro does not disclose a relative reference as disclosed by Appellants’ disclosure and provides an example [A. McIntosh]. Appeal Brief 8. We do not find Appellants’ arguments to be persuasive because they are not commensurate with the scope of the claims. Appeal 2011-006489 Application 11/839,857 5 Although giving claims their broadest reasonable interpretation must take into account any definitions given in the Specification, In re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997), it is improper to read into the claims limitations from examples given in the Specification. In re Zletz, 893 F.2d 319, 321-22 (Fed. Cir. 1989). See also Phillips v. AWH Corp., 415 F.3d 1303, 1323 (Fed. Cir. 2005)(“[A]lthough the specification often describes very specific embodiments of the invention, we have repeatedly warned against confining the claims to those embodiments . . . . In particular, we have expressly rejected the contention that if a patent describes only a single embodiment, the claims of the patent must be construed as being limited to that embodiment”) (citations omitted). The Examiner finds that Castro discloses a request for establishing the collaborative session and not a request for explicitly identified users as Appellants argue. Answer 8; Appeal Brief 8. Castro supports the Examiner findings, “The entire interaction between the DCE, CIPE and CNAE components is really triggered by the initial request from the requester, requesting the establishment of the collaborative session.” See Castro, [0038]. Consequently, we agree with the Examiner’s findings that Appellants’ claimed prefix-suffix format fails to distinguish over Castro’s name-value pair format. See Answer 8. Appellants further argue that Castro [0025] does not disclose “locating a synonymous role to the role specified by the suffix” as recited in dependent claims 5 and 12. Appeal Brief 10. The “locating a synonymous role” limitation is broad and as such, subject to a broad interpretation. During examination of a patent Appeal 2011-006489 Application 11/839,857 6 application, a claim is given its broadest reasonable construction “in light of the specification as it would be interpreted by one of ordinary skill in the art.” In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004) (citations omitted) (internal quotation marks omitted). Consequently, the Examiner finds and we agree, Castro discloses, if the multimedia session between an available doctor and a patient is disconnected, the system will query for an alternative “currently available doctor” and therefore teaches the claim language recited in claims 5 and 12 Answer 9. Therefore we sustain the Examiner’s anticipation rejection of claims independent claim 1, as well as, independent claims 7 and 8 and dependent 2, 4-6, 9, and 11-13, not separately argued, for the reasons stated above. Appellants then argue the combination of Castro and Lindsey fails to disclose the invention as recited in claims 3 and 10 because Lindsey fails to reveal any generation of a “list of valid roles” for the textually specified member. Appeal Brief 11 and 14-15. We observe that Appellants attack the cited references in isolation (Appeal Brief 14-15) and therefore Appellants’ arguments do not take into account what the collective teachings of the prior art would have suggested to one of ordinary skill in the art and are therefore ineffective to rebut the Examiner's prima facie case of obviousness. See In re Keller, 642 F.2d 413, 425 (CCPA 1981)(“The test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference; nor is it that the claimed invention must be expressly suggested in any one or all of the references. Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art.” (Emphasis added) (citations omitted)). Appeal 2011-006489 Application 11/839,857 7 The Examiner finds that Lindsey “teaches displaying a list of possible relationships between a selected record in a database and other records. Lindsey, pg 4, lines 4-5” and articulates a reasoning with rational underpinning to combine the references - “One of ordinary skill in the art would take Castro's teachings of specifying a context predicate and apply Lindsey's teachings of displaying a list of possible relationships in order to facilitate specification of the context predicates.” Answer 10. “[R]ejections on obviousness grounds cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.” KSR Int’l., Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (citing In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)). We agree with the Examiner’s findings. Consequently, we sustain the Examiner’s obviousness rejection of claims 3 and 10 for the reasons stated above. DECISION The Examiner’s anticipation rejection of claims 1, 2, 4-9, and 11-13 is affirmed. The Examiner’s obviousness rejection of claims 3 and 10 is affirmed. 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). AFFIRMED kis Copy with citationCopy as parenthetical citation