Ex Parte Cohen et al

Patent Trial and Appeal Board

Nov 21, 2014

11524052 (P.T.A.B. Nov. 21, 2014)

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.
11/524,052 09/19/2006 Alexander J. Cohen SE1-0167-US 6558
80118 7590 11/21/2014
Constellation Law Group, PLLC
P.O. Box 580
Tracyton, WA 98393
EXAMINER
BELCHER, HERMAN A
ART UNIT PAPER NUMBER
2448
MAIL DATE DELIVERY MODE
11/21/2014 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 ALEXANDER J. COHEN, EDWARD K.Y. JUNG,
ROYCE A. LEVIEN, ROBERT W. LORD, and
WILLIAM HENRY MANGIONE-SMITH
____________________

Appeal 2012-001868
Application 11/524,052
Technology Center 2400
____________________

Before: HUBERT C. LORIN, JOSEPH A. FISCHETTI, and
BART A. GERSTENBLITH, Administrative Patent Judges.

FISCHETTI, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellants seek our review under 35 U.S.C. § 134 from the
Examiner’s final rejection of claims 61–71, 73, 75, 78–82, 101, 131–133,
and 137–144.
We affirm.
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THE CLAIMED INVENTION
Claim 61 is illustrative of the claimed subject matter:
61. A network subsystem comprising:
circuitry for displaying a portion of a data structure;
circuitry for deciding whether to update the data structure
in response to an inter-core linkage and to input received after
displaying the portion of the data structure; and
circuitry including a first core and a second core where
the inter-core linkage defines a linkage between a first core’s
data object and a second core’s data object, the first core
operable to pull data and push data through the linkage from the
second core to confirm a relationship between the first core’s
data object and the second core’s data object.

REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Mulgund
Black
Gustave
US 2002/0161751 A1
US 2005/0215243 A1
US 2007/0067848 A1
Oct. 31, 2002
Sep. 29, 2005
Mar. 22, 2007

REJECTIONS
The following rejections are before us for review.
The Examiner rejected claims 61–71, 73, 75, 78–82, 101, 132, 133,
and 137–144 under 35 U.S.C. § 103(a) as unpatentable over Gustave and
Mulgund.
The Examiner rejected claim 131 under 35 U.S.C. § 103(a) as
unpatentable over Gustave, Mulgund, and Black.

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FINDINGS OF FACT
We find the following facts by a preponderance of the evidence. We
accept as our own the Examiner’s findings of fact at pages 5 to 31 of the
Examiner’s Answer.

ANALYSIS
Appellants’ arguments against each of the independent claims 61,
101, and 131 are based on perceived deficiencies of Gustave and Mulgand,
or Gustave, Mulgand, and Black, as rejected under 35 U.S.C. § 103(a).
Inasmuch as Appellants raise the same issues with respect to each of these
claims and dependent claim 69, we discuss them together, addressing each
of Appellants’ arguments in turn.
Appellants argue, throughout over 100 pages of text, that the cited
prior art “fails to recite several express recitations” of the various claims,
“do not recite the text” of the claims, that the claims and cited art are
“facially different recitations,” and that the claims and art are “very
different.” (App. Br. 39–101; Reply Br. 3–6). Appellants merely recite the
text of the claims, recite the cited sections of prior art, and assert that they
are not “textually” the same, without any consideration of the meaning of
either the claim language or the prior art disclosures. Indeed, Appellants
explicitly assert the Appeal Brief merely “notes instances in which the
USPTO did not follow the prescribed rules rather than seeking to interpret
claims and/or to adduce evidence on the USPTO’s behalf.” (App. Br. 42
n.18). Appellants assert that “straying from the objective texts would turn
this prosecution into a morass of subjectivity.” (Reply Br. 4).
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We are not persuaded by Appellants’ arguments because we find the
Examiner has made a prima facie case of obviousness as to each of the
limitations of independent claims 61, 101, and 131, and dependent claim 69.
(Ans. 5–8, 11–12, 16–19, and 28–31). The Appellants’ arguments do not
amount to a showing of error in the established prima facie case in the
rejection.
Taking claim 61 as representative of the prima facie case established
by the Examiner, we find the Examiner made a proper showing of each and
every element of the claim against the cited prior art. The Examiner found
the limitation “circuitry for displaying a portion of a data structure” is
disclosed in Gustave at Figure 4 and paragraphs 114, 137, and 141. (Ans.
5). The Examiner found the limitation “circuitry for deciding whether to
update the data structure . . .” in Gustave at paragraphs 19, 20, 113, and 129.
(Ans. 5–6). The Examiner found the limitation “circuitry including a first
core and a second core . . . the first core operable to pull data and push data
through the linkage from the second core to confirm a relationship between
the first core's data object and the second core's data object” in Gustave at
paragraphs 87 and 98. (Ans. 6–7). The Examiner found the limitations “in
response to an inter-core linkage” and “where the inter-core linkage defines
a linkage between a first core’s data object and a second core’s data object”
are disclosed by Mulgund at paragraphs 20 and 38. (Ans. 7–8).
Our review of Gustave and Mulgund at the cited sections confirms the
Examiner’s findings supra as properly corresponding to the claim limitations
of claim 61. Our review of Gustave, Figure 4 and paragraphs 19, 20, 87, 98,
113, 114, 129, 137, and 141, and Mulgund, paragraphs 20 and 38, also
confirms the Examiner’s findings of the references disclosing the
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corresponding claim limitations of claims 101 and 131, similar to claim 61.
(Ans. 16–19, and 28–31). Our review of Gustave, paragraphs 114, 130, 131,
136, and 137, and Mulgund, paragraph 38 confirms the Examiner’s findings
as to claim 69. (Ans. 11–12).
Against the backdrop of these findings, Appellants present arguments
in the Appeal Brief which amount to no more than statements which merely
point out what each claim recites, juxtaposed to the cited section of the prior
art applied by the Examiner. The mere existence of differences between the
prior art and the claim does not establish nonobviousness. Dann v.
Johnston, 425 U.S. 219, 230 (1976). The issue is “whether the difference
between the prior art and the subject matter in question ‘is a differen[ce]
sufficient to render the claimed subject matter unobvious to one skilled in
the applicable art.’” Dann, 425 U.S. at 228 (citation omitted). Also, a
statement which merely points out what a claim recites will not be
considered an argument for separate patentability of the claim. See 37
C.F.R. § 41.37 (c)(1)(vii) (2008). As such, these statements will not be
considered argument for separate patentability of the claims.
At best, Appellants seem to assert that because the cited portions of
Gustave and Mulgund do not disclose the exact language of the claims, the
prior art thus does not render obvious the claims through anticipation of the
claim elements. However, anticipation “is not an ‘ipsissimis verbis’ test.”
In re Bond, 910 F.2d 831, 83233 (Fed. Cir. 1990) (citing Akzo N.V. v. U.S.
Int’l Trade Comm’n, 808 F.2d 1471, 1479 n.11 (Fed. Cir. 1986)). “An
anticipatory reference . . . need not duplicate word for word what is in the
claims.” Standard Havens Prods., Inc., v. Gencor Indus., Inc., 953 F.2d
1360, 1369 (Fed. Cir. 1991).
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Appellants assert that the Examiner has “overlooked” certain claim
terms, or failed to address them. (App. Br. 40, 42–44, 59, 60, 74, 77, 90, 91,
94; Reply Br. 5). These assertions, however, do not offer any more than that
the exact claim terminology is not recited in the prior art. As such, they do
not actually demonstrate that the Examiner overlooked or failed to address
any particular claim elements. Even still, as found supra, we find that the
Examiner made findings sufficient to establish a prima facie case for
independent claim 61, which findings are alike for all the rejected
independent claims (Answer 16–31), which have similar limitations to those
recited in claims 61.
In addition, Appellants variously assert that the Examiner has not
explained how claim elements map to art elements, or how those mapping
represent that they “teach” the claims. (App. Br. 42–104). However, our
review of the Examiner’s rejection and responses to argument (Ans. 5–39)
leads us to disagree with Appellants and find instead that the Examiner made
findings sufficient to establish a prima facie case for all claims rejected in
the manner discussed supra for claim 61, whereby claim elements are
mapped to prior art sections, including explanations of claim interpretations
upon which the Examiner relies.
Appellants assert they were forced to respond to the Examiner under a
“notice theory” because “the USPTO merely cited locations in the reference
in parentheses which were not explained.” (Reply Br. 4). However, a
review of the Examiner’s rejection clearly shows pinpoint citations,
restatement of specific terms and phrases from within those citations that are
relevant, and explanations of claim interpretations. (See Ans. 5–39). We
therefore disagree with Appellants’ underlying assertion. The briefs do no
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more than state, using over one hundred pages of text to do so, that the claim
words do not match exactly word-for-word with the words of the cited art,
without any attempt to address the meaning of either the claims or the art
disclosures.
All remaining assertions set forth by the Appellants presuppose that
differences in the explicit claim text and prior art disclosures deserve
remedy, and that the Examiner has failed to do so. (App. Br. 52–101). We
find these assertions unpersuasive because we find no shortcomings in the
cited disclosures and reasoning by the Examiner.
For these reasons, we affirm the rejection of claims 61–71, 73, 75, 78–
82, 101, 132, 133, and 137–144 under 35 U.S.C. § 103(a) over Gustave and
Mulgund, and the rejection of claim 131 under 35 U.S.C. § 103(a) over
Gustave, Mulgund, and Black.

CONCLUSIONS OF LAW
The Examiner did not err in rejecting claims 61–71, 73, 75, 78–82,
101, 132, 133, and 137–144 under 35 U.S.C. § 103(a).
The Examiner did not err in rejecting claim 131 under 35 U.S.C.
§ 103(a).

DECISION
For the above reasons, the Examiner’s rejections of claims 61–71, 73,
75, 78–82, 101, 131–133, and 137–144 are 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).

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AFFIRMED

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