10744302 (B.P.A.I. Nov. 8, 2010)

Ex Parte Banatwala et al

Board of Patent Appeals and InterferencesNov 8, 2010

10744302 (B.P.A.I. Nov. 8, 2010)

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. 10/744,302 12/22/2003 Mustansir Banatwala LOT920030089US1 (038) 9322 46321 7590 01/27/2011 CAREY, RODRIGUEZ, GREENBERG & PAUL, LLP STEVEN M. GREENBERG 950 PENINSULA CORPORATE CIRCLE SUITE 2022 BOCA RATON, FL 33487 EXAMINER LO, WEILUN ART UNIT PAPER NUMBER 2179 MAIL DATE DELIVERY MODE 01/27/2011 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 BOARD OF PATENT APPEALS AND INTERFERENCES ____________ Ex parte MUSTANSIR BANATWALA, MIGUEL A. ESTRADA, CHARLES R. HILL, SAMI M. SHALABI, and THOMAS M. SPINE ____________________ Appeal 2009-005531 Application 10/744,302 Technology Center 2100 ____________________ Before LANCE LEONARD BARRY, JAY P. LUCAS, and DEBRA K. STEPHENS, Administrative Patent Judges. STEPHENS, Administrative Patent Judge. DECISION ON REQUEST FOR REHEARING STATEMENT OF THE CASE Appellant filed a Request for Rehearing under 37 C.F.R. § 41.52(a)(1) (hereinafter “Request”) for reconsideration of our Decision mailed November 9, 2010 (hereinafter “Decision”). Appeal 2009-005531 Application 10/744,302 2 Our Decision affirmed the Examiner’s rejection of claims 4-15, which claims stand rejected under 35 U.S.C. § 102(e) as being anticipated by Moser. We have reconsidered our Decision, in light of Appellants’ arguments in the Request for Rehearing, and we find no errors therein. We decline to change our prior Decision for the reasons discussed infra. Appellants request reconsideration of the following issues: 1. Whether the Board erred in its claim construction of “ad hoc” (Request 3)1. 2. Whether Moser teaches “selecting an ad hoc mix of synchronous and asynchronous tools (id.). ILLUSTRATIVE CLAIM 4. A named collaborative space creation method comprising the steps of: rendering each of a list of collaborators in a membership, a list of roles which can be applied to said collaborators, a selection of resources which can be used by said collaborators, and a listing of a set of synchronous tools and asynchronous tools which can be accessed by said collaborators; selecting a set of collaborators from said list of collaborators and applying selected ones of said roles to individual ones of said collaborators; further selecting at least one resource for use by said selected set of collaborators; 1 Appellants Request appears to have misnumbered pages. Thus, we refer to the actual page number instead of the page number listed at the bottom of the Request. Appeal 2009-005531 Application 10/744,302 3 yet further selecting an ad hoc mix of said synchronous and asynchronous tools for use by said selected set of collaborators; and, defining the named collaborative space with said selected set of collaborators, said further selected at least one resource, and said yet further selected ad hoc mix of tools. Issues Regarding the first issue, Appellants argue that “ad hoc” in a vacuum may enjoy a broad, contextless meaning of “concerned with a particular end or purpose;” however, to a skilled artisan in the field of computers, Appellants contend “ad hoc” means more in the vein of “on the fly” or “as needed” (Request for Rehearing 3 and 4) Appellants then present a definition for “wireless ad hoc networking” from Wikipedia and point to their Specification to support this definition (Req. for Rehearing 4). We disagree with Appellants’ assertion. Appellants have presented a non-dated reference for a term that is not the term recited in claim 4. This reference is not adequate to support Appellants’ contention that a skilled artisan would have found “ad-hoc” to be defined as “on the fly” or “as needed” at the time of the invention. Indeed, the term “ad hoc” in the Microsoft Computer Dictionary 20 (5th ed. 2000) is only found in the definition of the term “ad-hoc network”. The definition of this term supports the definition we attributed to the term - ad-hoc network is defined as “[a] temporary network formed by communicating stations or computer in a wireless LAN” (id.). Thus, this reference, from the field of computer, does not support Appellants’ asserted definition. Appeal 2009-005531 Application 10/744,302 4 Similarly, the attributed definition is consistent with the portion of Appellants’ Specification argued by Appellants (Req. for Rehearing 4). As discussed in our Decision (Decision 4), Appellants do not provide a definition in their Specification. Therefore, we take the broadest reasonable construction consistent with the specification (in re Am. Acad. of Sci. Tech. Cir., 367 F. 3d 1359, 1364 (Fed. Cir. 2004). Accordingly, Appellants have not provided any persuasive evidence or argument that the term “ad hoc” “means more in the vein of ‘on the fly’ or “as needed.” Thus, we conclude “ad hoc” is defined as “concerned with a particular end or purpose” (Decision 4 and 5). Appellants additionally argue Moser does not teach “selecting an ad hoc mix of [] synchronous and asynchronous tools” in paragraph [0036] of Moser (Req. for Rehearing 4 and 5). As we stated in our Opinion, we agreed with the examiner’s findings and further emphasized specific points (Decision 4). Thus, we agreed with the Examiner’s findings that Moser discloses selecting synchronous and asynchronous tools (Ans. 3, 5, and 6). Specifically, Moser describes that a user may select synchronous or asynchronous tools that are concerned with a particular end – to simplify the creation of a computerized collaboration area or environment (pg. 1, [0002] and [0003] and pg. 4, [0037]-[0039]). For at least the aforementioned reasons, we do not find Appellant’s reasoning persuasive. Accordingly, we decline to modify our original Decision regarding Issue one. Moreover, we reaffirm and restate our reasoning regarding this issue as set forth in our Decision (Decision 4-5). Appeal 2009-005531 Application 10/744,302 5 CONCLUSION We have considered the arguments raised by Appellant in the Request for Rehearing, but find none of these arguments persuasive that our original Decision was in error. It is our view that Appellant has not identified any points that the Board has misapprehended or overlooked. We are still of the view that the invention set forth in claims 4-15 is anticipated over the applied prior art based on the record before us in the original appeal. Therefore, we have reconsidered our Decision but decline to grant the relief requested. This Decision on Appellants’ Request for Rehearing is deemed to incorporate our earlier Decision (mailed November 9, 2010) by reference. See 37 C.F.R. § 41.52(a)(1). ORDER We have granted Appellants’ request to the extent that we have reconsidered our Decision of November 9, 2010, but we deny the request with respect to making any changes therein. 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 also 37 C.F.R. § 41.52(b). REHEARING DENIED Vsh Appeal 2009-005531 Application 10/744,302 6 CAREY, RODRIGUEZ, GREENBERG & PAUL, LLP STEVEN M. GREENBERG 950 PENINSULA CORPORATE CIRCLE SUITE 2022 BOCA RATON FL 33487