10849600 (B.P.A.I. Sep. 29, 2010)

Ex Parte Glickman et al

Board of Patent Appeals and InterferencesSep 29, 2010

10849600 (B.P.A.I. Sep. 29, 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. 10/849,600 05/20/2004 Kathryn A. Glickman LOT920040028US1 (049) 7396 46321 7590 09/30/2010 CAREY, RODRIGUEZ, GREENBERG & PAUL, LLP STEVEN M. GREENBERG 950 PENINSULA CORPORATE CIRCLE SUITE 2022 BOCA RATON, FL 33487 EXAMINER ZEE, EDWARD ART UNIT PAPER NUMBER 2435 MAIL DATE DELIVERY MODE 09/30/2010 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 KATHRYN A. GLICKMAN, NIKLAS HEIDLOFF, PAUL B. MOODY, and MICHAEL O’BRIEN ____________ Appeal 2009-006813 Application 10/849,600 Technology Center 2400 ____________ Before HOWARD B. BLANKENSHIP, CAROLYN D. THOMAS, and JAMES R. HUGHES, Administrative Patent Judges. THOMAS, Administrative Patent Judge. DECISION ON REQUEST FOR REHEARING Appeal 2009-006813 Application 10/849,600 2 INTRODUCTION Appellants request rehearing of our Decision entered May 10, 2010 (“Decision”), in which we affirmed the rejection of claims 1-18 as being unpatentable over Karman and Miller. ANALYSIS In their Request for Rehearing, Appellants allege that “the Board either misapprehended and/or overlooked certain arguments presented by Appellants.” (Req. 2.) Specifically, Appellants contend that “a proper claim construction of ‘replication’ is not so broad as to encompass merely a process of copying data” (Req. 2). . . “the broadest reasonable interpretation of ‘replication’ consistent with the usage of the term ‘replication’ in the specification at hand is the duplication of data in two different locations and the subsequent synchronization of the duplicate data.” (Req. 3.) We disagree. We start by noting that this particular argument (replication includes synchronization) was not previously presented, and thus, we could not have misinterpreted and/or overlooked it. In our Decision, we found that “Appellants have not identified in the Specification what a ‘replication process’ consists of” and that the process “suggests any process where data/content is copied.” (Decision 6.) Although Appellants now direct our attention to paragraph [0006] of the Specification (Req. 3) to show the “replication process” being tied to subsequent synchronization of the Appeal 2009-006813 Application 10/849,600 3 duplicated data, we fail to find any evidence supporting Appellants’ interpretation. Paragraph [0006] of Appellants’ Specification merely discloses the benefits of replicating to a local store from an external authority. However, this section of Appellants’ Specification is silent about the “synchronization of duplicated data.” Furthermore, Appellants’ claims provide no additional limitations within the claim language itself to identify any characteristics of the claimed “replication process.” In addition, Appellants’ Specification does not provide any definition for the claimed “replication process. Instead, Appellants merely rely upon external definitions (e.g., Wikipedia (Req. 2); and Microsoft Developer’s Network (Req. 3)) to connect their claimed replication process to synchronization between databases. However, given that we find no specific definition for a “replication process” being advanced by Appellants’ Specification, we shall not consider the extrinsic definitions because the new evidence is not permitted in this request for rehearing, as the new evidence is untimely. See C.F.R. § 41.52(a). We decline to read each of the various extrinsic definitions found by Appellants into the claimed replication process. "[L]imitations are not to be read into the claims from the specification." In re Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993) (citing In re Zletz, 893 F.2d 319, 321 (Fed. Cir. 1989)). We equally find that limitations are not to be read into the claims from untimely extrinsic definitions. Appellants could have amended the claims during prosecution to recite particular functionality of the replication Appeal 2009-006813 Application 10/849,600 4 process, but chose not to. Because “app[ellants] 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) (citing In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004)). The absence of any defining limitations within the claims themselves or in the specification allows us to use the broadest reasonable interpretation standard. As such, we view this phrase as a mere label and under a broad but reasonable interpretation, a “replication process” can include any process where data/content is copied. Claim 1, as drafted, does not require any particular functionality to be attached to the replication process, other than to selectively replicate security data from an external repository to a local repository only for security data associated with messaging partners. Claim 1 does not recite, thus does not require, that the replication process include “subsequent synchronization of duplicate data.” (Req. 3) (emphasis added.) Although these features may have been contemplated by Appellants, they simply do not exist in the claims or Specification. Thus, Appellants’ arguments are unpersuasive. DECISION Accordingly, we have granted Appellants’ Request to the extent that we have reconsidered the original Decision but have DENIED it with respect to making any changes to the Decision. Appeal 2009-006813 Application 10/849,600 5 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). REHEARING DENIED ke CAREY, RODRIGUEZ, GREENBERG & PAUL, LLP STEVEN M. GREENBERG 950 PENINSULA CORPORATE CIRCLE SUITE 2022 BOCA RATON, FL 33487