Ex Parte Burckart et al

Patent Trial and Appeal Board

Mar 29, 2016

12844497 (P.T.A.B. Mar. 29, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/844,497 07/27/2010
84986 7590 03/31/2016
GRASSOPLLC
1818 LIBRARY STREET, SUITE 500
RESTON, VA 20190
FIRST NAMED INVENTOR
Eric John Burckart
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
RSW920100088US 1 8184
EXAMINER
ELFERVIG, TAYLOR A
ART UNIT PAPER NUMBER
2445
NOTIFICATION DATE DELIVERY MODE
03/31/2016 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):
admin@grassoip.com
vromme@grassoip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ERIC JOHN BURCKART, ANDREW IVORY,
ASHWIN BHASKARRAO MANEKAR, and
AARON KYLE SHOOK
Appeal2014-002345
Application 12/844,497
Technology Center 2400
Before ROBERT E. NAPPI, DEBRA K. STEPHENS, and
KARA L. SZPONDOWSKI, Administrative Patent Judges.
Per Curiam.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134 from a final rejection of
claims 1-20. We have jurisdiction under 35 U.S.C. § 6(b ).
We AFFIRM.
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Application 12/844,497
STATEMENT OF THE INVENTION
According to Appellants, the claims are directed to a synchronizing
user content in a collaborative session (Abstract). Claim 1, reproduced
below, is representative of the claimed subject matter:
1. An article of manufacture comprising:
a non-transitory computer readable medium, the computer
readable medium storing instructions thereon, which when
executed, comprise:
determining that a first user has established a remote
server sponsored session;
during or after establishing the remote server sponsored
session, determining that particularized user content, from
a previous server session, is associated with the first user,
the particularized user content from the previous server
session reflecting selections made by the first user on a
website sponsored by the server during the previous server
sess10n;
during or after establishing the remote server sponsored
session providing, the particularized user content from the
previous server session of the first user, to the first user;
supporting a collaborative session between the first user
and a second user, the first user being the primary user and
the second user being a subordinate user;
manipulating particularized user content of the first user
using collaborative session instructions, the particularized
user content of the first user for synchronization of content
between the first user and the second user during a
collaborative session; and
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during a collaborative session between the first user and
the second user, providing the particularized user content
of the first user to the second user, the particularized
content of the first user for replacing content previously
provided to the second user.
REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Menezes
Shahi
Roy
Light
Fiedorowicz
US 2003/0097448 Al
US 2005/0033843 Al
US 7,149,776 Bl
US 2008/0052377 Al
US 2010/0191799 Al
REJECTIONS
May 22, 2003
Feb. 10,2005
Dec. 12, 2006
Feb.28,2008
July 29, 2010
Claims 1; 3; 4; 7-9; 11; 12; 14--17; 19; and 20 stand rejected under
35 U.S.C. § 103(a) as being unpatentable over Menezes, Roy, and Shahi
(Final Act. 4--11). 1
Claims 2, 10 and 18 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Menezes, Roy, Shahi, and Light (Final Act. 11-12).
1 Although the rejection of claim 6 is included in the section under the
heading of the rejection of claims 1, 3, 4, 7-9, 11, 12, 14--17, 19, and 20
under 35 U.S.C. § 103(a) as being unpatentable over Menezes, Roy, and
Shahi, the Examiner relied on Fiedorowicz as teaching the recited limitation
of claim 6 (Final Act. 9). Accordingly, we consider claim 6 as being
inadvertently misplaced and address claim 6 as being rejected under 35
U.S.C. § 103(a) over Menezes, Roy, Shahi, and Fiedorowicz.
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Application 12/844,497
Claims 5, 6, and 13 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Menezes, Roy, Shahi, and Fiedorowicz (Final Act. 12-
14).
We have only considered those arguments that Appellants actually
raised in the Briefs. Arguments Appellants could have made but chose not
to make in the Briefs have not been considered and are deemed to be
waived. See 37 C.F.R. § 41.37(c)(l)(iv) (2012).
ISSUES
The issues presented by Appellants' arguments are:
Issue 1: Has the Examiner erred in finding the combination of
Menezes, Roy, and Shahi teaches or suggests the article of manufacture that
comprises a non-transitory computer readable medium, as recited in claims 1
and 17?
Issue 2: Has the Examiner set forth with specificity the basis of
rejection of claims 9 and 1 7?
Issue 3: Has the Examiner erred in finding Shahi to be analogous art?
Issue 4: Has the Examiner erred in finding the combination of
Menezes, Roy, and Shahi teaches or suggests "at the inception of a
collaborative session, receiving collaborative session instructions from the
first user providing rules for sharing particularized user content from the first
user with another user, the rules restricting access to certain particularized
user content," as recited in claim 3 and commensurately recited in claims 11
and 19?
Issue 5: Has the Examiner erred in finding the combination of
Menezes, Roy, and Shahi teaches or suggests "authenticating the second
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user prior to sending the second user particularized user content of the first
user," as recited in claim 7 and commensurately recited in claim 15?
Issue 6: Has the Examiner erred in finding the combination of
Menezes, Roy, and Shahi teaches or suggests the recited first user, as recited
in claims 8 and 16?
Issue 7: Has the Examiner improperly combined the teachings of
Menezes, Roy, and Shahi?
Issue 8: Has the Examiner improperly combined the teachings of
Menezes, Roy, Shahi, and Light?
Issue 9: Has the Examiner improperly combined the teachings of
Menezes, Roy, Shahi, and Fiedorowicz?
Issue 10: Has the Examiner erred in finding the combination of
Menezes, Roy, and Shahi teaches or suggests "identity of a product
previously purchased by the first user on a website, the website being the
target of the collaborative session; and default collaborative session
preferences previously selected by the first user or an administrator," as
recited in claim 6?
ANALYSIS
Issue 1: Claims 1 and 17
Appellants argue the Examiner has not made a prima facie case as the
Examiner has not shown specifically where Menezes teaches "an article of
manufacture that comprises a non-transitory computer readable medium"
(App. Br. 8-9).
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We are not persuaded. The Examiner specifically states "the server of
Menezes performs all the relevant steps, and therefore must contain a
medium storing instructions that execute those steps" (Ans. 6).
Thus, Appellants' assertion that the Examiner is unclear and cites to
several elements (Reply Br. 7), is not persuasive. Furthermore, we are not
persuaded an ordinarily skilled artisan, upon reading Menezes and the
Examiner's rejection and responses would not understand the basis for the
rejection (Final Act. 4--7; Ans. 5-6).
Accordingly, we are not persuaded of Examiner error.
Issue 2: Claim 9 and 17
Appellants argue the Examiner has not specifically addressed the
limitation:
manipulating, at a computer, particularized user content of the
first user using collaborative session instructions, the
particularized user content of the first user for synchronization of
content between the first user and the second user during a
collaborative session, the particularized user content of the first
user from a previous server session and reflecting selections
made by the first user on a website,
as recited in claims 9 and 17 (App. Br. 6-8; Reply Br. 5---6). According to
Appellants, in contrast to the Examiner's assertion, the same steps are not
being performed and are not just rearranged (Reply Br. 6).
Appellants' arguments center on the placement of the limitation "the
particularized user content of the first user from the previous server session
reflecting selections made by the first user on a website sponsored by the
server during the previous server session" (App. Br. 7-9). Although we note
the claims have varying scope, claims 9 and 17 (as well as claim 1) are not
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entirely clear because the claim recites "particularized user content" twice,
leaving one to speculate if this is the same particularized user content or
different particularized user content ("determining ... that particularized user
content ... " and "manipulating ... particularized user content .... ") This
confusion is compounded in later references to "the particularized user
content," as it is unclear to which "particularized user content" is being
referred.
We construe the recitation of the second "particularized user content"
as referring to the already recited "particularized user content." Specifically,
we read claim 9 to recite "manipulating, at a computer, [the] particularized
user content" and claim 17 as "manipulating [the] particularized user
content." As the particularized user content is the same content recited
throughout the respective claims regardless of the location of the further
recitation, we are not persuaded by Appellants' arguments.
As to Appellants' argument that the Examiner has not shown the
references manipulation of particularized user content as recited (App. Br.
8), we are not persuaded. The Examiner has set forth how the references
teach the disputed limitations (Act. 4--5) and Appellants have not proffered
sufficient evidence or argument to persuade us the combination of Menezes,
Roy, and Shahi does not teach the disputed limitations.
Issue 3: Non-analogous art
Appellants next argue Shahi does not qualify as analogous prior art
(App. Br. 10). According to Appellants, Shahi is not directed to
collaborative and synchronized browsing between two or more users, but
instead is directed to a single user continuing a session on a second terminal
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(id. at 11 ). Thus, Appellants contend, Shahi is directed to a sequential
transfer (id.).
The Examiner finds Shahi is analogous art because it is directed to
communication sessions between different users and how each
communication session is established (Ans. 7). We agree with the
Examiner's findings (Ans. 7; Final Act. 7). Indeed, Shahi teaches that co-
browsing between users work at the URL level and the inability of a user to
switch from using one device to another (Shahi i-f 8). More specifically,
Shahi addresses the drawback of no network based representation of the web
session state which prevents a user being able to switch from using one
device to another, unless the second device had already been connected to
the session (id.). Thus, Appellants' have not persuaded us Shahi does not
qualify as analogous art as Shahi addresses co-browsing between two or
more users.
If Appellants believe that the Examiner's Answer contained a new
ground of rejection not identified as such, Appellants should have filed a
petition under 37 C.F.R. § 1.181(a) within two months from the mailing of
the Examiner's Answer requesting that this ground of rejection set forth in
the answer be designated as a new ground of rejection. However, any
allegation that an Examiner's Answer contains a new ground of rejection not
identified as such is waived if not timely raised (i.e., by filing the petition
within two months of the answer) by way of a petition under 37 C.F.R.
§ 1.181(a).
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Claims 2 and 18
Claims 2 and 18 are argued on the basis of arguments set forth for
claims 1 and 17 (App. Br. 13). Thus, for the reasons set forth above, we are
not persuaded of Examiner error.
Issue 4: Claims 3, 11, and 19
With respect to Appellants' arguments the first user must be a person,
we are not persuaded. Appellants are arguing limitations not recited in the
claim. Specifically, claims 3, 11, and 19 recite "at the inception of a
collaborative session, receiving collaborative session instructions from the
first user .... " The claims do not require the first user input the collaborative
session instructions at the inception of a collaborative session, but only that
instructions when executed, comprise receiving the collaborative session
instructions from the first user. Furthermore, Appellants admit Roy
describes an individual may set the rules (App. Br. 14; Roy, 6:59---67). We
find that individual may immediately use the session. Thus, we are not
persuaded Roy fails to teach the disputed limitation.
Issue 5: Claims 7 and 15
Appellants argue although Roy identifies an authorization manager to
authenticate clients and client communications, Roy does not specify
sequencing and sending a particular user particular content, as set forth in
claims 7 and 15. (App. Br. 16).
We agree with the Examiner's findings (Ans. 9). Claims 7 and 15
recite "authenticating the second user prior to sending the second user
particularized user content of the first user." Roy teaches the
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communication manager authenticates or validates clients and client
communications (Roy, 6:7-10, 30-34). We are not persuaded an ordinarily
skilled artisan would not understand the disclosure of authentication of
clients and client communications to not teach the disputed limitation.
Issue 6: Claims 8 and 16
Appellants argue the claim language requires the first user be an actor
and not the server itself and thus, a server or automated modules should not
be considered the actor (App. Br. 16-17). We agree with the Examiner's
findings and reasoning that both Roy and Shahi describe user interaction
with the system. (Ans. 9-10).
Issue 7:
Improper Hindsight
Appellants argue the Examiner used improper hindsight, asserting the
complex nature of the technology and the disparate directions of the various
systems and processes described in the five cited references (App. Br. 18).
According to Appellants, in Menezes, information to change content and
properties of the client or information of the web page being considered are
identified as being present in these events, but the information is not for
"synchronizing content between different users, or showing selections made
by a different user in a previous session, or manipulating user content of the
first user using collaborative session instructions as recited in the claims"
(App. Br. 18-19).
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We agree with the Examiner (Ans. 10-11). Indeed, Appellants have
not proffered sufficient evidence or argument to persuade us the Examiner
used impermissible hindsight.
Motivation to Combine and Further Hindsight Arguments
Appellants argue that because "so much change is necessitated to the
system of Menezes and this change is apart from the focus of Menezes," an
ordinarily skilled artisan would not look to improve the prior art (App. Br.
19-21 ). Specifically, Appellants assert Menezes already considers and
addresses an interactive co-browsing session interruption by using a session
ID, the proposed motivation is superfluous to Menezes' teachings; and thus,
contend the Examiner is using impermissible hindsight (App. Br. 19-20).
We are not persuaded by Appellants' arguments. We agree with the
Examiner's findings and reasoning (Ans. 11-13). The Examiner has
articulated reasoning with a rational underpinning as to why an ordinarily
skilled artisan would have been motivated to combine the teachings of
Menezes, Roy, and Shahi (Final Act. 4--7).
The Supreme Court has guided that "[r]igid preventative rules that
deny factfinders recourse to common sense, however, are neither necessary
under our case law nor consistent with it." KSR Int'! v. Teleflex, Inc., 550
U.S. 398, 421 (2007). "Common sense teaches[] that familiar items may
have obvious uses beyond their primary purposes, and in many cases a
person of ordinary skill will be able to fit the teachings of multiple patents
together like pieces of a puzzle." Id. at 420. Moreover, "the analysis need
not seek out precise teachings directed to the specific subject matter of the
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challenged claim, for a court can take account of the inferences and creative
steps that a person of ordinary skill in the art would employ." Id. at 418.
Accordingly, we are not persuaded the Examiner erred in finding the
combination of Menezes, Roy, and Shahi teaches or suggests the limitations
as recited in claims 1, 3, 4, 7-9, 11, 12, 14--17, 19, and 20. Additionally, we
are not persuaded the Examiner improperly combined the teachings and
suggestions of Menezes, Roy, and Shahi. Therefore, we sustain the rejection
of claims 1, 3, 4, 7-9, 11, 12, 14--17, 19, and 20 under 35 U.S.C. § 103(a)
for obviousness over Menezes, Roy, and Shahi.
New arguments raised in the Reply Brief were not considered as being
untimely (37 C.F.R. § 41.41(b)(2) (2011); see McBride v. Merrell Dow and
Pharms., Inc., 800 F.2d 1208, 1211 (D.C. Cir. 1986) (internal citations
omitted)). See also Ex parte Borden, 93 USPQ2d 1473, 1474 (BPAI 2010)
(informative).
Issue 8: Claims 2, 10, and 18
With respect to claims 2, 10, and 18, Appellants argue the proposed
motivation proffered by the Examiner to combine Light's teaching to get
information desired by users, is improper because Menezes teaches features
which render the combination superfluous (App. Br. 20). Appellants
specifically argue because Menezes provides information to users
unprompted, the proposed motivation is superfluous (id.).
We are not persuaded by Appellants' proffered argument that the
Examiner used impermissible hindsight or that the Examiner has failed to
articulate reasoning with a rational underpinning as to why an ordinarily
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skilled artisan would have been motivated to combine the teachings and
suggestion of the cited references (Final Act. 11-12).
Accordingly, we are not persuaded the Examiner erred in finding the
combination of Menezes, Roy, Shahi, and Light teaches or suggests the
limitations as recited in claims 2, 10, and 18.
Nor are we persuaded the Examiner improperly combined the
references. Therefore, we sustain the rejection of claims 2, 10, and 18 under
35 U.S.C. § 103(a) for obviousness over Menezes, Roy, Shahi, and Light.
Issue 9: Claims 5 and 13:
With respect to claims 5 and 13, Appellants argue "adding the tagging
and searching functionality of Fiedorowicz to the collaborative browsing
system of Menezes, Roy, and Shahi, in order to find content that was
previously marked by a user" is improper because Menezes teaches features
which render the combination superfluous (App. Br. 20-21 ). Thus,
according to Appellants, the Examiner employed impermissible hindsight
(id.).
We are not persuaded by Appellants' proffered argument that the
Examiner used impermissible hindsight or that the Examiner has failed to
articulate reasoning with a rational underpinning as to why an ordinarily
skilled artisan would have been motivated to combine the teachings and
suggestions of the cited references (Final Act. 13-14 ).
Issue 10: Claim 6
With respect to claim 6, Appellants argue the Examiner does not
provide any basis for rejecting the limitations "identity of a product
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previously purchased by the first user on a website, the website being the
target of the collaborative session; and default collaborative session
preferences previously selected by the first user or an administrator" (App.
Br. 5). Specifically, Appellants contend that the language of the claim
requires one of each of the three recited elements due to the use of the
conjunction "and" (Reply Br. 4).
We are not persuaded. A claim meaning is reasonable if one of
ordinary skill in the art would understand the claim, read in light of the
specification, to encompass the meaning. See In re American Academy of
Science Tech Center, 367 F.3d 1359, 1364 (Fed. Cir. 2004). Here, we find
that the Specification does not specifically discuss the composition of the
personal user content, but instead, gives examples of what may be included
(see e.g. Spec. i-fi-128-29). We appreciate that one may read the limitation as
suggested by Appellants. However, we also find the Examiner's
interpretation to reasonable and more specifically, broad, but reasonable, in
light of the Specification. Because "applicants may amend claims to narrow
their scope, a broad construction during prosecution creates no unfairness to
the applicant or patentee." In re ICON Health and Fitness, Inc., 496 F.3d
1374, 1379 (Fed. Cir. 2007) (citation omitted). It follows, Appellants may
amend the claims to clarify the interpretation proposed, e.g., using "at least
one of each of' or inserting "at least one of' before each piece of content.
Accordingly, we are not persuaded the Examiner erred in finding the
combination of Menezes, Roy, Shahi, and Fiedorowicz teaches or suggests
the limitations as recited in claims 5, 6 and 13. Nor are we persuaded the
Examiner improperly combined the references. Therefore, we sustain the
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rejection of claims 5, 6 and 13 under 35 U.S.C. § 103(a) for obviousness
over Menezes, Roy, Shahi, and Fiedorowicz.
DECISION
The Examiner's rejection of claims 1, 3, 4, 7-9, 11, 12, 14--17, 19,
and 20 under 35 U.S.C. § 103(a) as being unpatentable over Menezes, Roy,
and Shahi is affirmed.
The Examiner's rejection of claims 2, 10, and 18 under 35 U.S.C.
§ 103(a) as being unpatentable over Menezes, Roy, Shahi, and Light is
affirmed.
The Examiner's rejection of claims 5, 6, and 13 under 35 U.S.C. §
103(a) as being unpatentable over Menezes, Roy, Shahi, and Fiedorowicz 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). See 37 C.F.R.
§ 1.136(a)(l )(iv).
AFFIRMED
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