Ex Parte Charters et al

Patent Trial and Appeal Board

Mar 28, 2017

10907034 (P.T.A.B. Mar. 28, 2017)

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.
10/907,034 03/17/2005 Graham C. Charters GB920030109US1 4034
46320 7590
CRGO LAW
STEVEN M. GREENBERG
7900 Glades Road
SUITE 520
BOCA RATON, EL 33434
EXAMINER
CAO, DIEM K
ART UNIT PAPER NUMBER
2196
NOTIFICATION DATE DELIVERY MODE
03/30/2017 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):
docketing@crgolaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte GRAHAM C. CHARTERS, AMANDA E. CHESSELL,
MICHAEL FRIESS, VERNON M. GREEN, and KEITH B. MANTELL
Appeal 2016-001773
Application 10/907,034
Technology Center 2100
Before ALLEN R. MacDONALD, ROBERT E. NAPPI, and JOHNNY A.
KUMAR, Administrative Patent Judges.
NAPPI, Administrative Patent Judge.
DECISION ON REQUEST FOR REHEARING
Appellants have filed a Request for Rehearing under 37 C.F.R.
§ 41.52 on March 13, 2017 (hereinafter “Request”), requesting that we
reconsider our Decision on Appeal of January 12, 2017 (hereinafter
“Decision”), in which we affirmed the rejection of claims 1,11, and 23
through 30, 32 through 35, 42, and 43 under 35 U.S.C. § 102(e) as being
anticipated over Racca (US 2008/0307392 Al); claims 36 through 38, and
41 under 35 U.S.C. § 103(a) as being unpatentable over Racca and Felt (US
7, 213,049 B2); and claims 31, 39, and 40 under 35 U.S.C. § 103(a) as being
unpatentable over Racca and Monson-Rafel (Enterprise JavaBeans,
O'Reilly & Associates, 364—369 (March 2000)). We reconsider our
Appeal 2016-001773
Application 10/907,034
Decision in light of Appellants’ Request for Rehearing, but we decline to
change the Decision.
ISSUES AND ANALYSIS
Appellants contend that our Decision misapprehended an issue as it
found no error in the Examiner’s finding that the combination of Katz and
Heck teaches the claim limitation in which an individual must be present in
order to be compliant. Request 4. Specifically, Appellants argue:
First, Appellants point to the statement of the Appellants at
page 3 of the Reply Brief in which Appellants stated the
following:
[Cjontrary to Examiner's contention, Appellants'
claim language does require setting a string value
equal to "solution," "conversation," "task," or
"data" as a type of real world context for an
instance identifier.
Thus, Appellants did in fact argue that the claim language
required the setting of a string value "as a type of real world
context for an instance identifier" to be equivalent to "solution",
"conversation", "task" or "data". Second, though the Board
determines the type of real world context for the instance
identifier to be non-functional descriptive material in reference
to the jurisprudence of the "printed matter doctrine", it is not
believed to be the case given the mischaracterization of the
"type" as a "label" and the fact that the "type" has a functional
relationship to the body of the Appellants' claim language.
Request 5. Further, Appellants assert that:
In the claim language, it is the updating of application
components so that a real world context instance is active
during execution of the computer application of a function for
the real world context instance, that also has an identifier and is
referenced by a "type" of the real world context that is a string
value including any of a "solution", "a conversation", "a task"
2
Appeal 2016-001773
Application 10/907,034
and "a data". Thus, as can be seen, the string value is not a
"label" and thus is not comparable to the fact patterns of most
printed matter doctrine cases including DeStefano. As well,
there remains a functional relationship between the "type" and
the "context instance" as an "instance identifier" used to
reference the "type of real world context". Thus, a substantially
greater functional relationship exists as between the "type of
real world context" as claimed by Appellants than the numbers
on the hat band and the hat band itself of the seminal case of In
Re Gulack.
Request 7.
We are not persuaded of error by this argument. As stated by the
Examiner:
the claim language does not required the string value must
include the exact term "conversation", or "task", or "data", or
"solution". Instead, the claim language requires the type of a
real world context being any one of a solution, a conversation, a
task, and a data, which is clearly taught by Racca. Examiner
also wanted to point out that Racca teaches meeting only one of
conversation/task/data/solution would also teach the claim
limitation. Racca teaches "Action A" or "Action B" which is a
task and being a string value (paragraphs [0088]-[0091]), or an
activity has an associated activity name (paragraph [0098]), or
"sending an email message to the client" to notifies a client of
an incomplete sales order can be a task (sending an email) or a
conversation (the purpose of the email is to notify client of the
outcome of the business transaction".
Answer 3. We concur. Representative claim 1 states “the real world context
instance has an instance identifier and is referenced by a type of real world
context being a string value and including any of a solution, a conversation,
a task, and a data.” Thus, the claim does recites that the real world context
has a string value, and the real world context includes any of a solution, a
conversation, a task and a data. The claim does not identify that the string
3
Appeal 2016-001773
Application 10/907,034
value has to include one of the four words (solution, conversation, task and
data) argued by Appellants. Further, as we identified, in our Decision, if the
claim were construed as the string value being one of these four words, such
would be non-functional descriptive material. Decision 3^4.
Appellants’ arguments that these words are functionally related to the
method is not well taken. If we were to construe the claim as Appellants’
assert (that the string contain one of the four listed words), we find no
claimed function (method steps) which operates based upon the specific
word in the string nor do we find any limitation that relates the specific
words in the string to the computer readable storage media Decision 4.
Additionally, we note that assigning patentable weight to the use of specific
words in a string would lead the absurd result of novelty being determined
by using different words in string values (i.e. of novelty being determined
over a reference which has the same words in another language or synonyms
for the same words).
CONCLUSION
For the aforementioned reasons, Appellants’ contentions have not
persuaded us of error in our Decision.
Accordingly, while we have granted Appellants’ Request for
Rehearing to the extent that we have reconsidered our Decision, that request
is denied with respect to making any changes therein.
4
Appeal 2016-001773
Application 10/907,034
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv).
DENIED
5