95001395 (P.T.A.B. Jun. 2, 2016)

Ex Parte 7043486 et al

Patent Trial and Appeal BoardJun 2, 2016

95001395 (P.T.A.B. Jun. 2, 2016)

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. 95/001,395 07/16/2010 7043486 6115-0105L 4449 2292 7590 06/02/2016 BIRCH STEWART KOLASCH & BIRCH, LLP PO BOX 747 FALLS CHURCH, VA 22040-0747 EXAMINER DESAI, RACHNA SINGH ART UNIT PAPER NUMBER 3992 MAIL DATE DELIVERY MODE 06/02/2016 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 ____________ SAP AMERICA, INC. Requester, v. WELLOGIX TECHNOLOGY LICENSING, LLC Patent Owner. ____________ Appeal 2015-007684 Reexamination Control 95/001,395 Patent 7,043,486 B2 Technology Center 3900 ____________ Before MARC S. HOFF, STEPHEN C. SIU, and DENISE M. POTHIER, Administrative Patent Judges. SIU, Administrative Patent Judge DECISION ON REHEARING In papers filed November 30, 2015, Wellogix Technology Licensing, LLC (“Patent Owner”) requests a rehearing under 37 C.F.R. § 41.79 from the decision of the Patent Trial and Appeal Board (hereinafter Board), dated October 28, 2015 (“Decision”). In the Decision, we affirmed the Examiner’s rejection of claims 1-3, 5, 7, 9-11, 13, 14, 17, 18, 20, 22-24, 26, Appeal 2015-007684 Reexamination Control 95/001,395 Patent 7,043,486 B2 2 27, 30, 32, 37, 38, and 40 as anticipated by Getting Started;1 claim 4, 8, 12, 15, 16, 21, 26, 28, and 29 as unpatentable over Getting Started; claims 1-30 as unpatentable over Getting Started and R/3 Help;2 claims 1-42 under 35 U.S.C. § 112, first paragraph for failing the written description requirement; and claims 1-42 under 35 U.S.C. § 112, second paragraph as being indefinite. 35 U.S.C. 112, first paragraph Independent claim 1, as amended, recites “to permanently prevent further input of the actual data via the first version of the data input interface.” Independent claims 5 and 18 are similarly amended. Patent Owner relied upon the disclosure in the Specification of “retiring a version” as written description support for “permanently prevent[ing] further input.” PO Request 13 (citing Spec. Fig. 30A, 3046).3 The Examiner disagreed that the disclosure of “retiring a version” provided sufficient written description support for the claim limitation of “permanently” preventing and rejected claims 1-42 under 35 U.S.C. § 112, first paragraph as failing the written 1 Dennis L. Prince, “Getting Started with SAP R/3,” 1998 (“Getting Started”). 2 Selected Excerpts from the SAP R/3 Online Help for R/3 version 4.5B, 1999 (“R/3 Help”). 3 Request to Reopen Prosecution and Amendments by Patent Owner Under 37 C.F.R. 41.77(b)(1), filed July 28, 2014 (“PO Request”). Appeal 2015-007684 Reexamination Control 95/001,395 Patent 7,043,486 B2 3 description requirement. Examiner’s Determ. 104 (citing 3PR Comments 4- 9).5 We agreed with the Examiner. Decision 3-4. Patent Owner now argues that “[t]he original claim 1” recites “preventing” and that the “specification as filed (e.g., page 10, lines 10-13) describes preventing further input,” that “the key feature is preventing ‘further input’,” and that “the specification and the claims are consistent.” Req. Reh’g. 7-8. We note that “original claim 1” does not recite, and “page 10, lines 10-13” of the Specification does not disclose, “permanently” preventing. Hence, Patent Owner does not indicate points that we misapprehended or overlooked with respect to the affirmance of the Examiner’s rejection of claims 1-42 as lacking written description support for “permanently” preventing. Patent Owner argues that “[t]he Board overlooked or misapprehended Patent Owner’s explanation of support for the ‘permanent’ preventing.” Req. Reh’g 7. Specifically, Patent Owner argues that a “key distinction overlooked or misapprehended by the Board” is that the Specification “discloses the ability to display the previous version” but “does not describe the ability to input data using the previous version.” Even assuming that the Specification discloses displaying a previous version and does not disclose an ability to input data using the previous version, as Patent Owner now contends, Patent Owner does not demonstrate sufficiently that we 4 Examiner’s Determination Under 37 CFR 41.77(d), dated December 3, 2014 (“Examiner’s Determ.”). 5 Third Party Requester’s Comments Opposing Patent Owner’s Request to Reopen Prosecution with Amendments, filed August 28, 2014 (“3PR Comments”). Appeal 2015-007684 Reexamination Control 95/001,395 Patent 7,043,486 B2 4 overlooked or misapprehended any points supporting the Patent Owner’s contention that the Specification provides adequate written description support for “permanently” preventing. Hence, Patent Owner does not indicate points that we misapprehended or overlooked. Patent Owner also now argues that “[t]he plain and ordinary meaning of prevent . . . is permanent” and that we “misapprehended and overlooked [Patent Owner’s proposed] plain and ordinary meaning of ‘prevent[ing].” Req. Reh’g. 7-8. Patent Owner also argues that the term “permanently prevented” must mean “retired” and must also mean “forever” and that “Patent Owner has consistently advanced the plain and ordinary meaning of prevention [as being permanent].” Req. Reh’g. 8 (citing PO Comments6 10- 11); PO Request 13-14, PO Comments after Examiner’s Determ. 4.7 We note that Patent Owner previously argued that “[a] plain and ordinary meaning of ‘further’ is extending into the time indefinitely.” PO Comments 10. We do not identify, and Patent Owner does not point out, Patent Owner’s alleged previous arguments regarding the plain and ordinary meaning of “prevention” or “permanently” for that matter. In any event, aside from mere speculation, Patent Owner does not explain sufficiently or provide adequate evidence supporting the contention that one of skill in the art would have understood that the plain and ordinary meaning of “preventing” an action must also require that the prevention be “permanent.” 6 Patent Owner Comments Under 37 C.F.R. 41.77(e), filed January 5, 2015 (“PO Comments”). 7 Patent Owner Comments Under 37 C.F.R. 41.77(e) (“PO Comments after Examiner’s Determ.”). Appeal 2015-007684 Reexamination Control 95/001,395 Patent 7,043,486 B2 5 Patent Owner also does not explain the relevance of the plain and ordinary meaning of the term “further” to that of the term “permanently.” Patent Owner argues that the plain and ordinary meaning of “to prevent” “implies permanence” because, according to Patent Owner, “[i]f an action can happen, that action is not prevented” and that “[i]f the action is delayed . . . it is not prevented.” Req. Reh’g. 9. However, Patent Owner does not explain sufficiently how an action that is “prevented” from being performed at a point in time (but may be performed at a later point in time) is nevertheless not “prevented” at that point in time. One of skill in the art would have understood that an action that is prevented from occurring at a point time would have been “prevented” from occurring at that point in time regardless of what might happen at some time in the future. Additionally, following along this argument, one postures why Patent Owner would choose to amend the claims to modify the recitation “to prevent” in the original claims with the word “permanently” if “prevent” implies permanence. Patent Owner also now argues that Patent Owner never intended to argue that “‘permanent prevention’ means ‘retiring’.” Req. Reh’g. 8. In any event, other than Patent Owner’s previous allegation that the Specification discloses “retiring,” Patent Owner did not demonstrate persuasively that the Specification provides written support for the term “permanently” and does not now point out any points that we misapprehended or overlooked with respect to this issue. In addition, we disagree with Patent Owner’s contentions for at least the additional reasons set forth by Requester. Third Party Requester’s Appeal 2015-007684 Reexamination Control 95/001,395 Patent 7,043,486 B2 6 Comments in Opposition to Request for Rehearing, filed December 28, 2015 (“3PR December 2015 Comments”) 4-6. 35 U.S.C. 112, second paragraph As previously discussed, in view of Patent Owner’s argument that the claim term “permanently” would have also meant “retired,” we agreed with the Examiner and Requester that the metes and bounds of the claim would be ambiguous as one of skill in the art would not have known whether the claim encompassed “permanently” and/or “retired” or, perhaps, some other non-specified term. As such, we affirmed the Examiner’s rejection of claims 1-42 under 35 U.S.C. § 112, second paragraph as being indefinite. Patent Owner now argues that the previously presented arguments pertaining to the term “permanently” and “retired” were “to show written description.” Req. Reh’g 5. However, Patent Owner does not argue persuasively that Patent Owner’s position regarding how one of skill in the art would have understood the terms “permanently” and/or “retired” as the same would be applicable “to show written description” but the multiple terms would then somehow be reconciled differently when considering whether the metes and bounds of the claim of the claim term would be unambiguous to one of skill in the art. Nor does Patent Owner indicate any points that we misapprehended or overlooked with respect to this issue. In addition, we disagree with Patent Owner’s contentions for at least the additional reasons set forth by Requester. Third Party Requester’s Comments in Opposition to Request for Rehearing, filed December 28, 2015 (“3PR Comments”) 2-4. Appeal 2015-007684 Reexamination Control 95/001,395 Patent 7,043,486 B2 7 Getting Started Patent Owner argues that Getting Started fails to disclose prevention. Req. Reh’g. 9-11. These arguments were previously addressed. Decision 7; Decision dated June 27, 2014 (“First Decision”) 8-9; Third Party Requester’s Comments Opposing Patent Owner’s Request to Reopen Prosecution with Amendments, filed August 28, 2014 (“3PR Comments”) 19; Examiner’s Determ. 6. In addition, we disagree with Patent Owner’s contentions for at least the additional reasons set forth by Requester. Third Party Requester’s Comments in Opposition to Request for Rehearing, filed December 28, 2015 (“3PR December 28, 2015 Comments”) 6-9. For example, Patent Owner argues that “the Board overlooked that [Getting Started] does not teach any prevention” and that “there is no prevention of further input [in Getting Started].” Req. Reh’g. 9, 10. This argument was previously addressed. See, e.g., Decision 6-7; see also October 10, 2013 Decision on Appeal 13. Patent Owner also argues that Getting Started fails to disclose “deactivating the alleged first version to prevent further input via the first version.” Req. Reh’g. 11. This argument was previously addressed. See, e.g., October 10, 2013 Decision on Appeal 13-14. Patent Owner argues that Getting Started fails to disclose “version numbers” because a “number” is “materially different from a ‘name.’” Req. Reh’g. 12-14. This argument was previously addressed. See, e.g., Decision 5-6. Patent Owner does not indicate points that were misapprehended or overlooked. Appeal 2015-007684 Reexamination Control 95/001,395 Patent 7,043,486 B2 8 Patent Owner also argues that Access and Roddick each fail to disclose various claim limitations. Req. Reh’g. 3, 4, 12. In view of our affirmance of rejections of the above-referenced claims based on Getting Started, we need not consider the additional proposed rejections of the claims over Access or Roddick. Cf. In re Gleave, 560 F.3d 1331, 1338 (Fed. Cir. 2009). Patent Owner does not demonstrate persuasively that we overlooked or misapprehended any points previously argued. Therefore, Patent Owner’s request for rehearing is denied. DENIED PATENT OWNER: D. RICHARD ANDERSON BIRCH STEWART KOLASCH & BIRCH LLP PO BOX 747 FALLS CHURCH, VA 22040-0747 THIRD PARTY REQUESTER: GARTH A. WINN KLARQUIST SPARKMAN, LLP ONE WORLD TRADE CENTER 121 S.W. SALMON ST., SUITE 1600 PORTLAND, OR 97204