Ex Parte Jesse et al

Patent Trial and Appeal Board

Jun 23, 2016

13102968 (P.T.A.B. Jun. 23, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/102,968 05/06/2011
34395 7590 06/27/2016
OLYMPIC PA TENT WORKS PLLC
P.O. BOX 4277
SEATTLE, WA 98104
FIRST NAMED INVENTOR
Mary Jesse
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
35129.001C2 8224
EXAMINER
GEE, JASON KAI YIN
ART UNIT PAPER NUMBER
2495
NOTIFICATION DATE DELIVERY MODE
06/27/2016 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):
joanne@olympicpatentworks.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MARY JESSE, PHILIP ANDREW CORDIER,
JAMES DON EHRMIN, STEVEN MICHAEL KNOX,
DOUGLAS MANIS, DON A. MESSENGER, and
MATTHEW WILLIAM W AHLIN
Appeal2014-009096
Application 13/102,968
Technology Center 2400
Before CAROLYN D. THOMAS, JOSEPH P. LENTIVECH, and
KARA L. SZPONDOWSKI, Administrative Patent Judges.
THOivIAS, Administrative Patent Judge.
DECISION ON APPEAL
Appellants seek our review under 35 U.S.C. § 134(a) of the
Examiner's Final Rejection of claims 1-5, all the pending claims in the
present application (App. Br. 2). Claims 6-11 are canceled (id.). We have
jurisdiction over the appeal under 35 U.S.C. § 6(b ).
We AFFIRM.
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Application 13/102,968
The present invention relates generally to "automated systems for
organizing and facilitating information exchange between members of an
organization." See Abstract.
Claim 1 is illustrative:
1. An automated communications system comprising:
an input-processing subsystem that processes the
messages received from receiving components that each receives
messages from a communications medium by forwarding each
message directed to a group, subgroup, or user to a routing-and-
message-forwarding component which determines whether or not the
message is authorized to be forwarded and, when the message is
authorized to be forwarded, returns a corresponding message for each
member of a group, member of a subgroup, or user to which the
message is directed, and
queues the one or more corresponding messages to one or
more internal queues; and
a post-processing subsystem that
dequeues messages from the one or more internal
message queues,
processes each message dequeued from the one or more
internal message queues to generate one or more processed messages,
including modifying either or both of the destination and source
addresses included in the message according to stored rules when the
stored rules are applicable to the message, and
forwards the one or more processed messages to sending
components that each sends processed messages to a communications
medium.
Appellants appeal the following rejections:
RI. Claims 1-5 are rejected under 35 U.S.C. § 101 because the
claimed invention is directed to non-statutory subject matter (Final Act. 5);
R2. Claims 1-5 are rejected under 35 U.S.C. § 112, second
paragraph, as being indefinite (id. at 6-7);
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R3. Claim 1 is rejected under 35 U.S.C. § 102(b) as being anticipated
by Tsai (US 2004/0196858 Al, Oct. 7, 2004) (id. at 7-8);
R4. Claim 2, 3, and 5 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Tsai and Fonseca (US 2005/0076089 Al, Apr. 7, 2005)
(id. at 9-12); and
R5. Claim 4 is rejected under 35 U.S.C. § 103(a) as being
unpatentable over Tsai, Fonesca, and McClendon (US 2005/0078619 Al,
Apr. 14, 2005) (id. at 12-13).
ANALYSIS
Rejection under§ 1 OJ
Claims 1-5
Issue 1: Did the Examiner err in finding that the claims are directed
to software per se?
Appellants contend:
Paragraph [0070] of the current application clearly and explicitly
states, completely contrary to the Examiner's assertion, that the
automated communications system that represent embodiments
of the present invention include hardware platforms.
Furthermore, Figures 8A-B, 15B, 16, and 17 of the current
application clearly and unambiguously show physical hardware
components ....
(App. Br. 7). Appellants further contend that "the Examiner has again failed
to cite any authority for the absurd assertion" (id. at 9).
The Examiner finds "[i]n paragraph 70 of the [Appellants']
publication, [Appellants] have noted that the communication systems may
be implemented in many different ways, including programming languages
and data structures. Such examples are of software[,] ... the claims can
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Application 13/102,968
then be reasonably interpreted as being implemented by software in certain
embodiments" (Ans. 3). We agree with the Examiner.
For example, as indicated by the Examiner "[s]oftware by itself does
not fall into any one of these statutory categories" under 35 U.S.C. § 101
(Ans. 2). A claim that recites no more than software, logic, or a data
structure (i.e., an abstraction) does not fall within any statutory category. In
re Warmerdam, 33 F.3d 1354, 1361 (Fed. Cir. 1994). Significantly,
"[a]bstract software code is an idea without physical embodiment .... "
Microsoft Corp. v. AT&T Corp., 550 U.S. 437, 449 (2007). We highlight
that the unpatentability of abstract ideas was reaffirmed by the U.S. Supreme
Court in Bilski v. Kappas, 130 S. Ct. 3218, 3222 (2010).
Here, Appellants' Specification states:
For example, automated communications systems that represent
embodiments of the present invention may be implemented in
many different ways by varying any of many different
implementation parameters, including programming languages,
control structures, modular organization, data structures,
operating-system platforms, and hardware platforms.
(33:9-14). In other words, Appellants' automated communications system
may be implemented in many different ways by varying of many different
implementation parameters, including programming languages and data
structures. Although Appellants contend that "paragraph [0070] clearly and
explicitly states that a hardware platform is one of the components of the
automated communications systems that can be varied . . . . This, of course,
means that the hardware platform is a component of the currently claimed
automated communications system" (App. Br. 6-7), we find no such explicit
declaration. Instead, Appellants' Specification merely states that the system
can be implemented in many different ways by varying any of many
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Application 13/102,968
different implementation parameters (see Spec. 33:9-14). Stated differently,
there are different implementation parameters, i.e., ways of implementing
the system, that can be varied, including programming languages and data
structures. Appellants' Specification fails to indicate that a hardware
platform is included in each and every implementation, as proffered by
Appellants.
Accordingly, we sustain the Examiner's§ 101 rejection of claims 1-5
for being directed to software per se.
Rejection under§ 112, second paragraph
Claim 1-5
Issue 2: Did the Examiner err in finding that the claims are
indefinite?
Appellants contend "[ c ]learly, [the routing-and-message-forwarding
component] returns the corresponding message to the input-processing
subsystem which then 'queues the one or more corresponding messages to
one or more internal queues"' (App. Br. 10).
The Examiner finds "[ w ]hen a message is returned, it implies that an
original message was sent" (Ans. 4) ... and "[a]s the claim language uses
the language 'returns' accompanied with a subject that never sent a message
initially, the language is unclear and applicant's arguments are not
persuasive" (id.). We agree with the Examiner.
As indicated by the language in claim 1, the routing-and-message
forwarding component "returns a corresponding message for each member
... to which the message is directed" (see claim 1 ). We find that such
language implies, as noted by the Examiner, that a message is returned to
each member of a group, subgroup, or user. Furthermore, we agree with the
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Application 13/102,968
Examiner that this step raises the question: How can the routing component
return the message to a member/user when the message was never received
from the member/user? We find that Appellants' explanation, i.e., it returns
the corresponding message to the input-processing subsystem, is inconsistent
with the plain language of the claims.
Furthermore, regarding claims 2--4, Appellants concede that "[t]he
Examiner is correct [because] [t]he word 'not' was inadvertently omitted
from the final clause in each of claims 2-4" (App. Br. 11 ). Although
Appellants indicated that an amendment was included with the current
Appeal Brief to address this error (id.), we note that the Examiner found that
such an amendment was improper according to the Manual of Patent
Examining Procedure (MPEP) § 1206, and therefore did not enter the
amendments (see Ans. 5).
Accordingly, we sustain the Examiner's rejection of claims 1-5 under
§ 112, second paragraph, for being indefinite.
Rejection under§ 102(b)
Claim 1
Issue 3: Did the Examiner err in finding that Tsai discloses
forwarding the one or more processed messages to sending components that
each sends processed messages to a communications medium, as set forth in
claim 1?
Appellants contend that "the post-processing subsystem effects a fan-
out in which a single message dequeued from the one or more internal
message queues generates one or more processed messages and the one or
more processed messages are forwarded to multiple sending components"
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Application 13/102,968
(App. Br. 21 ). Appellants further contend that "[b ]y contrast, Tsai discloses
a network bridge that simply transmits a message from a cell phone
connected to a first wireless carrier to a cell phone connected to a second
wireless carrier" (id.) and that "[t]here is no fan-out or branching in any of
the message passes discussed in Tsai" (id. at 23).
The Examiner finds, and we agree, that "[A ]ppellant[ s '] claims are not
limited to taking a single message and fanning it out toward multiple users"
(Ans. 5) and "there could be two initial messages directed toward two
different users, and these messages can be forwarded to the two different
users" (id. at 6). For example, claim I merely recites,forwards the one or
more processed messages to sending components (see claim 1 ). We find
that such claim language does not necessarily require that a single processed
message be fanned-out to multiple sending components. Claim 1 can also be
read as multiple processed messages sent to multiple sending components.
i.e., two processed messages sent to two different sending components, as
proffered by the Examiner.
Consistent with the Examiner's interpretation, Tsai discloses in Figure
1 four devices, i.e., Ml-M4, in a network in which messages are routed.
The Examiner reasons, and we agree, that "[e]ven if these messages are
forwarded on a one-to-one basis and not fanned out, Tsai reads on the
broadest reasonable interpretation of the claims" (Ans. 7) because Tsai
discloses forwarding a plurality of messages to a plurality of components.
As written, Appellants' claim 1 does not require a fan-out of a single
message to multiple recipients. "Construing claims broadly during
prosecution is not unfair to the applicant ... because the applicant has the
opportunity to amend the claims to obtain more precise claim coverage." In
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re Amer. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004).
Here, we find that claim 1 as written, does not require any type of fan-out of
messages in the post-processing subsystem. We further find that claim 1
does not necessarily require "group messaging" or "group addressing" as
proffered by Appellants (see App. Br. 24--26), as claim 1 recites "directed to
a group, subgroup, or user" (see claim 1 ). In other words, the message could
be directed to a single user.
As for Appellants' contention that "the currently claimed automated
communications system does not include wireless carrier networks, such as
those described in Figures 2, 3, and 4 of Tsai" (App. Br. 27), the Examiner
finds, and we agree, that the claimed system "are not restricted toward a
single system with no outside networks involved" (Ans. 7). In other words,
claim 1 's automated communication system is not restricted from using
external wireless carrier networks. Therefore, as noted by the Examiner,
"the combination of such systems [in Tsai's Figure 1] can be interpreted as
the claimed automated communication system" (see Ans. 7).
Accordingly, we sustain the Examiner's rejection of claim 1.
Rejection under§ 103 (a)
Claims 2-5
Issue 4: Did the Examiner err in finding that Fonesca teaches or
suggests parsing the destination address into an ordered sequence of nodes,
as set forth in claim 2?
Appellants contend "[i]n paragraph [0117] of Fonesca, Fonesca
discusses parsing a message and assigning variables with values based on
the content of the message, but does not teach, disclose, mention, or suggest
parsing a destination address into an ordered sequence of nodes" (App. Br.
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31 ). Appellants further contend that Fonesca is not "in any way related to
the parsing of a destination address into an ordered sequence of nodes and
considering the nodes with respect to authorization of a source address to
send messages to the nodes" (id. at 30-31 ). We agree with Appellants.
In response to Appellants, the Examiner finds that Fonesca
"inherently implies parsing a destination address, as the messages are
filtered and processed accord[ing] to the recipient [and] [s]uch an action
would not be possible without parsing out the destination addresses of the
recipients" (Ans. 9). Regarding the Examiner's inherency conclusion, we
note that "[i]nherency may not be established by probabilities or
possibilities. The mere fact that a certain thing may result from a given set
of circumstances is not sufficient." In re Robertson, 169 F.3d 743, 745 (Fed.
Cir. 1999) (citations omitted). Here, we find that the Examiner has merely
shown that "parsing the destination address" may result in Fonesca.
However, when relying upon a theory of inherency, the Examiner must
provide a basis in fact and/or technical reasoning to reasonably support the
Examiner's determination that the allegedly inherent characteristic
necessarily flows from the teachings of the applied prior art. Ex parte Levy,
17 USPQ2d 1461, 1463---64 (BP AI 1990). Here, the Examiner fails to
provide facts and/or technical reasoning to support the conclusion that
"parsing the destination address" necessarily flows from Fonesca's
teachings, as one skilled in the art would recognize that there are various
means for obtaining the destination address.
In view of the above discussion, we are of the opinion that the
proposed combination of references set forth by the Examiner does not
support the obviousness rejection. We, accordingly, do not sustain the
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rejections of dependent claim 2, and dependent claims 3-5 for similar
reasons.
DECISION
We affirm the Examiner's§ 101 rejection of claims 1-5.
We affirm the Examiner's§ 112, second paragraph, rejection of
claims 1-5.
We affirm the Examiner's § 102(b) rejection of claim 1.
We reverse the Examiner's § 103(a) rejections of claims 2-5.
Since at least one rejection encompassing all claims on appeal is
affirmed, the decision of the Examiner is 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)(l )(iv).
AFFIRMED
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