Ex Parte Congdon et al

Board of Patent Appeals and Interferences

Sep 30, 2010

10678400 (B.P.A.I. Sep. 30, 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.
10/678,400 10/03/2003 Robert M. Congdon LOT920030027US1 (012) 3520
46321 7590 10/01/2010
CAREY, RODRIGUEZ, GREENBERG & PAUL, LLP
STEVEN M. GREENBERG
950 PENINSULA CORPORATE CIRCLE
SUITE 2022
BOCA RATON, FL 33487
EXAMINER
EL CHANTI, HUSSEIN A
ART UNIT PAPER NUMBER
2457
MAIL DATE DELIVERY MODE
10/01/2010 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 ROBERT M. CONGDON and WEI-LEE H. JAMROG
_____________

Appeal 2009-006632
Application 10/678,400
Technology Center 2400
____________

Before KENNETH W. HAIRSTON, JOHN C. MARTIN,
and THOMAS S. HAHN, Administrative Patent Judges.

HAIRSTON, Administrative Patent Judge.

DECISION ON REQUEST FOR REHEARING
In a Decision dated May 27, 2010, the Board affirmed the Examiner’s
anticipation rejection of claims 1 to 14. Appellants have requested a
rehearing of our decision to affirm the Examiner’s anticipation rejection of
claims 1 to 14 (Req. Reh’g. 1, 3).
In the Decision, we determined that Appellants have not demonstrated
that the Examiner erred by finding that DeAnna teaches “‘logical grouping
of application server nodes disposed and executing within an application
server,’” as set forth in claim 1 (Dec. 10).
Appeal 2009-006632
Application 10/678,400

2
We have reconsidered our Decision of May 27, 2010, in light of
Appellants’ comments in the Request, and we find no errors therein. We
therefore decline to change our prior decision for at least the following
reasons.
In the decision, the Board provided some elucidation of the portions
of Appellants’ Specification related to the claimed “application server
nodes” (Dec. 3-4; FF 1 and 2), as well as the teachings of DeAnna (Dec. 4-5;
FF 3 and 4). Based upon the teachings of DeAnna (see Dec. 7-9; FF 3 and
4), the Board affirmed the anticipation rejection of all of the claims on
appeal.
Appellants do not dispute (see generally Req. Reh’g 2-3) any of the
factual findings made in our Decision (see FF 1-4 at Dec. 3-5). Instead,
Appellants contend (Req. Reh’g. 2) that “the Board has determined the
meaning of ‘application server nodes’ to be ambiguous and thus inclusive of
‘application operating on a server.’” We disagree. In light of Appellants’
originally filed Specification and claims, we found the meaning of
“application server nodes” to be broad, not necessarily ambiguous (see Dec.
7-9).
Although Appellants admit that they “have not claimed ‘application
server nodes, each of the nodes hosting execution of an application server,
each application server hosting an API [application program interface] to
expose business logic and business processes for use by other applications’”
(Req. Reh’g 3), Appellants contend that “the plain claim language of
‘application server nodes’ provides a specific meaning that distinguishes
past the basic concept of an application executing in a server” (Req. Reh’g.
Appeal 2009-006632
Application 10/678,400

3
3). Appellants contend that “the evidence of record demonstrates the
industrially understood meaning of ‘application server’” [is][sic] a ‘server
that hosts an API to expose Business Logic and Business Processes for use
by other applications’” (Req. Reh’g. 2-3); however, Appellants notably do
not contend that the term “application server nodes” is defined in the
originally filed Specification and claims.
Our review of the Specification (see FF 1 and 2 citing Spec. 5:16-19
and 9:11-17, portions of the Specification describing “application server
nodes” and “enterprise beans” that are disposed in the application server
100) does not persuade us that our construction of the term “application
server nodes” is in error. Appellants’ arguments in the Request are
unpersuasive in view of the Examiner’s findings (Ans. 3 and 6-8), our
findings (Dec. 3-5; FF 1-4), and our discussion supra, with respect to
Appellants’ disclosure in the Specification concerning “application server
nodes” and the applications located within the ZDF server 50 of DeAnna.
In our Decision of May 27, 2010, we explained our interpretation of
the term “application server nodes” as follows:
Claim 1 merely requires a plurality of “application server
nodes” (see claim 1). The broadest reasonable interpretation of
the phrase “application server node” indicates that points in a
network topology or links/interface points such as 171, 172, and
174 shown in DeAnna’s Figure 4 function as recited in the
claims (e.g., being disposed and executing within an application
server such as ZDF server 50) and would be encompassed by
the language of the claims. See Am. Acad. of Sci. Tech. Ctr.,
367 F.3d at 1364.

(Dec. 7-8). We also explained why our interpretation is not precluded by the
Specification, as follows:
Appeal 2009-006632
Application 10/678,400

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A proper interpretation of claim 1, giving this claim its
broadest reasonable interpretation consistent with the
Specification as understood by one of ordinary skill in the art
(Phillips, 415 F.3d at 1315) must be construed to be consistent
with any definition provided in the originally filed
Specification. The Specification (Spec. 5:16-19, 9:11-17; see
FF 1, 2), however, does not provide any definition for
“application server nodes.” In fact, the Specification at page 9
supports the Examiner’s position, considering that (i) the
Specification describes an application server 100 that has
enterprise beans disposed thereon (see Spec. 9:13-15), and (ii)
DeAnna also has session beans or applications such as timer
171, receiverMDB 172 (message driven bean), and
mailprocessorMDB 174 (message driven bean) (FF 3; see col.
15, ll. 16, 37, and 55).
Because (i) DeAnna teaches an IMAP compliant mail
server coupled to a plurality of applications or session beans
disposed in and operating on a ZDF server, and (ii) one of
ordinary skill in the art would understand that an application or
session bean (e.g., applications 171, 172, and 174) operating on
an application server (e.g., ZDF server 50) can be considered an
application server node, DeAnna necessarily functions in
accordance with, or includes, the claimed limitation of “a
logical grouping of application server nodes” in an “application
server.” Appellants’ originally filed Specification and claims do
not preclude such a broad, but reasonable, interpretation of the
term “application server nodes.”

(Dec. 8-9).
We have carefully considered the arguments as to claim 1 raised by
Appellants in the Request for Rehearing, but none of these arguments is
persuasive that the original decision was in error. We find that Appellants
have not shown the Board erred in finding that DeAnna teaches “a logical
grouping of application server nodes disposed and executing within an
Appeal 2009-006632
Application 10/678,400

5
application server” in sustaining the rejection of claims 1 to 14 under 35
U.S.C. § 102(e).
Although the heading on page 2 of the Request for Rehearing implies
that Appellants request rehearing of the rejection of claims 2 to 14, we note
that Appellants do not provide any separate arguments on the merits as to
claims 2 to 8 which depend from claim 1, or as to independent claim 9 and
its dependent claims 10 to 14. Based on (i) the content of Appellants’
Request for Rehearing, which only discusses claim 1 on the merits, (ii) the
fact that the term in question (“application server nodes”) does not appear in
claim 9, and (iii) Appellants’ failure to dispute our conclusion that claims 2
to 14 stand or fall with claim 1 (see Dec. 6), we only reconsider our decision
with respect to claim 1.
In summary, Appellants’ Request for Rehearing has been granted to
the extent that our Decision has been reconsidered, but such request is
denied with respect to making any modifications to the decision.

REHEARING
DENIED

KIS

CAREY, RODRIGUEZ, GREENBERG & PAUL, LLP
STEVEN M. GREENBERG
950 PENINSULA CORPORATE CIRCLE
SUITE 2022
BOCA RATON FL 33487