Ex Parte Fremantle et al

Board of Patent Appeals and Interferences

Sep 21, 2010

10402185 (B.P.A.I. Sep. 21, 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.
10/402,185 03/26/2003 Paul Z. Fremantle GB920020060US1 (259) 9092
46320 7590 02/14/2011
CAREY, RODRIGUEZ, GREENBERG & PAUL, LLP
STEVEN M. GREENBERG
950 PENINSULA CORPORATE CIRCLE
SUITE 2022
BOCA RATON, FL 33487
EXAMINER
ISMAIL, SHAWKI SAIF
ART UNIT PAPER NUMBER
2455
MAIL DATE DELIVERY MODE
02/14/2011 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 PAUL Z. FREMANTLE, SIMON A.J. HOLDSWORTH, and
CHRISTOPHER E. SHARP
____________________

Appeal 2009-006025
Application 10/402,1851
Technology Center 2400
____________________

Before JAY P. LUCAS, THU A. DANG, and STEPHEN C. SIU,
Administrative Patent Judges.

LUCAS, Administrative Patent Judge.

DECISION ON REQUEST FOR REHEARING2

1 Application filed March 26, 2003. The real party in interest is International
Business Machines Corporation.
2 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.

Appeal 2009-006025
Application 10/402,185

2
Appellants request a rehearing of the Decision mailed September 21,
2010, affirming the final rejection of claims 1 to 4, 6 to 11, and 13 to 17
(Req. Reh’g. 1, middle).
Appellants’ invention relates to a method of enabling a client with
tailored access to a target service (e.g., a customized service level agreement
for web services provided for an e-commerce business). (See Spec. 1, ll. 5
to 7 and 16 to 20.)
Representative claim 1 illustrates the claims on Rehearing:
1. A method for a data processing host to
provide access to a target service, the method
comprising:

receiving a request from a client for a
document describing the target service, the request
including client identity information;

using the client identity information to
modify an initial document describing the target
service to produce a modified document which
contains a description of the target service,
wherein the description is tailored for the client;
and

returning the modified document in response
to the client request;

thereby enabling the data processing host to
provide access to the target service which is
tailored for the client, wherein

the modified document includes details
which enable the client to access the target service
at a predetermined quality of service.
Appeal 2009-006025
Application 10/402,185

3
Appellants, in their Request for Rehearing, contend that the Board of
Patent Appeals and Interferences (“Board”), in its analysis, impermissibly
relied upon findings and conclusions not made by the Examiner (Req.
Reh’g. 6, ll. 1 to 2). More specifically, Appellants contend that “a decision
of the BPAI is limited to the findings and conclusions made by the
Examiner” with respect to claim construction of the claimed “predetermined
quality of service,” as recited in claim 1 (id. at 3, ll. 10-11) (emphasis
omitted).
We disagree. Claim construction is a question of law that is reviewed
de novo. In re Donaldson Co., 16 F.3d 1189, 1192 (Fed. Cir. 1994) (en
banc).
Claim construction at this Board involves de novo review and is one
of the essential functions of this administrative law body (id.). As a Board
deciding disputes between Appellants and Examiners, we are not limited to
the Examiner’s findings and conclusions with respect to claim construction
(id.). We are entitled to review and rely upon the entire record before us.
The entire record before us includes the whole prosecution history of the
patent application, including any and all of the references the Examiner has
cited.
We weighed all of Mangipudi’s teachings against the claimed
invention and, in doing so, adopted a claim construction with respect to the
phrase “predetermined quality of service” (claim 1). Appellants have
attempted to rebut our claim construction of this phrase by pointing to what
Ananian discloses (Req. Reh’g. 10, ll. 17 to 18). Appellants further argue
that our interpretation of a “predetermined quality of service” differs from its
plain or ordinary meaning in the art since the claim phrase is “not a service
Appeal 2009-006025
Application 10/402,185

4
itself” but instead a “characteristic of a particular service” (e.g., “high
priority” or “normal priority”) (Req. Reh’g. 11, ll. 4 to 6).
We find unconvincing Appellants’ argument since we pointed to
Mangipudi’s class of service as meeting the claimed “quality of service.”
(Final Decision at *8, middle, mailed Sept. 21, 2010). Indeed, Mangipudi’s
disclosure of a “class” is similar to a “quality,” as claimed. A “class,” as
disclosed in Mangipudi, is a characteristic of a particular service in the same
way Appellants’ “quality” is a characteristic of a specific service. Here, we
find no definition in the Specification3 redefining the term “quality of
service” so that the claim element can no longer be considered a class of
service. Further, we find that Appellants’ argument is unconvincing, as the
argument provides no hint as to how or why our claim construction is
unsubstantiated. Thus, as the Final Decision stated, Mangipudi’s class of
service is no different from Appellants’ “quality of service” recited in claim
1 (Final Decision at *8).
Next, Appellants argue that the Board’s Decision impermissibly relied
upon teachings of Mangipudi that Appellants did not previously have an

3 See Phillips v. AWH Corp., 415 F.3d 1303, 1312 (Fed. Cir. 2005) (en banc)
(internal citations omitted) (holding that “the words of a claim ‘are generally
given their ordinary and customary meaning.’” “[T]he ordinary and
customary meaning of a claim term is the meaning that the term would have
to a person of ordinary skill in the art in question at the time of the invention,
i.e., as of the effective filing date of the patent application.” (Id. at 1313)
(citation omitted).

Appeal 2009-006025
Application 10/402,185

5
opportunity to rebut (Req. Reh’g. 12, ll. 10 to 20). Thus, Appellants argue a
new ground of rejection is warranted (id.).
Since the disputed limitation is found in a single reference and the
thrust of the obviousness reasoning remains the same, the Board may rely on
a single reference to affirm a multiple reference rejection under 35 U.S.C. §
103(a) without designating it a new ground of rejection. Relying on fewer
references in affirming a rejection under 35 U.S.C. § 103 does not normally
constitute a new ground of rejection. See In re Kronig, 539 F.2d 1300, 1303
(CCPA 1976).
Appellants, in essence, seek “a second bite at the apple,” in arguing
that they are entitled to new ground of rejection over the additional passages
cited in the Final Decision (Req. Reh’g. 12, ll. 10 to 20). Appellants urge
that the ultimate criterion of whether a rejection is considered “new” in a
decision by the Board is whether Appellants have had fair opportunity to
react to the thrust of the rejection (id.). We agree with this general
proposition, for otherwise Appellants could be deprived of the
administrative due process rights established by 37 C.F.R. § 1.196(b) of the
Patent and Trademark Office. However, in view of the teachings of Kronig,
we disagree with Appellants, since the additional passages cited do not
change the thrust of this rejection. Accordingly, we will not issue a new
ground of rejection.
Next, it is Appellants’ contention that the claim limitation “returning
the modified document in response to the client request” is not disclosed in
the cited prior art references (Req. Reh’g. 14, ll. 5 to 6).
“Considering an argument advanced for the first time in a reply brief
Appeal 2009-006025
Application 10/402,185

6
. . . is not only unfair to an appellee[,] but also entails the risk of an
improvident or ill-advised opinion on the legal issues tendered.” McBride v.
Merrell Dow & Pharms., Inc., 800 F.2d 1208, 1211 (D.C. Cir. 1986)
(internal citations omitted).
There are cogent reasons for not permitting an appellant to raise
issues or arguments in a reply brief. Among them are the
unfairness to the appellee who does not have an opportunity to
respond and the added burden on the court that a contrary
practice would entail. As the Tenth Circuit put it, permitting an
appellant to raise new arguments in a reply brief “would be
unfair to the court itself, which without the benefit of a
response from appellee to an appellant’s late-blooming
argument, would run the risk ‘of an improvident or ill-advised
opinion, given [the court’s] dependence . . . on the adversarial
process for sharpening the issues for decision.’” Headrick [v.
Rockwell Int’l Corp.], 24 F.3d [1272,] 1278 [(10th Cir. 1994)],
(quoting Herbert v. Nat’l Acad. of Scis., 974 F.2d 192, 196
(D.C. Cir. 1992)).
Carbino v. West, 168 F.3d 32, 34-35 (Fed. Cir. 1999).
We note that Appellants had an opportunity to set forth their argument
as to the above-stated claim limitation in the Brief but chose not to do so.
(See App. Br. 3 to 6.) The Board, like its guiding Court, is not obligated to
examine claims in greater detail than argued by an appellant, looking for
distinctions over the prior art. See In re Baxter Travenol Labs., 952 F.2d
388, 391 (Fed. Cir. 1991). In view of the teachings of McBride, Carbino,
and In re Baxter Travenol Labs., we need not address Appellants’ issue here.
Finally, Appellants contend that the Board and the Examiner present
no reason having a rational underpinning supporting a finding that the
claimed invention, as a whole, would have been obvious (Req. Reh’g. 14, ll.
17 to 18).
We disagree for the following reasons.
Appeal 2009-006025
Application 10/402,185

7
References within the statutory terms of 35 U.S.C. § 103 qualify as
prior art for an obviousness determination only when analogous to the
claimed invention. In re Clay, 966 F.2d 656, 658 (Fed. Cir. 1992). Two
separate tests define the scope of analogous prior art: (1) whether the art is
from the same field of endeavor, regardless of the problem addressed and,
(2) if the reference is not within the field of the inventor’s endeavor, whether
the reference still is reasonably pertinent to the particular problem with
which the inventor is involved. In re Deminski, 796 F.2d 436, 442 (Fed. Cir.
1986)
We find that the Ananian and Mangipudi references disclose
accessing a service via a telecommunications line. (See Final Decision at
*5, FF#2, FF#3.) Moreover, we find that the Examiner’s cited prior art is
analogous to the subject matter of the claimed invention, which involves a
method and system of accessing a target service (id., FF#1). We conclude
that a person of ordinary skill in the art would have considered the
references when solving the problem addressed by the claimed invention. In
the Answer, the Examiner states the rationale for combining the references
as follows: A skilled artisan would have incorporated Mangipudi’s teaching
into the invention of Ananian to provide enhanced [Quality of Service] as a
function of client characteristics. (See Ans. 4, bottom.) Accordingly, we
find Appellants have not demonstrated error in this regard.

DECISION
The Request for Rehearing has been fully considered and is denied.

Appeal 2009-006025
Application 10/402,185

8
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).

REHEARING DENIED

erc

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