Ex Parte Lakshmanan et al

Patent Trial and Appeal Board

Aug 31, 2016

13117065 (P.T.A.B. Aug. 31, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/117,065 05/26/2011 Geetika T. Lakshmanan
70672 7590 09/02/2016
CRGOLAW
7900 Glades Road
SUITE 520
BOCA RATON, FL 33434
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.
YOR920100481US2 (014) 6816
EXAMINER
DON ABED, NINOS
ART UNIT PAPER NUMBER
2444
NOTIFICATION DATE DELIVERY MODE
09/02/2016 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):
docketing@crgolaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte GEETIKA T. LAKSHMANAN and MARTIN A. OBERHOFER
Appeal2014-006715
Application 13/117,065
Technology Center 2400
Before ST. JOHN COURTENAY III, DAVID M. KOHUT, and
KAMRAN JIVANI, Administrative Patent Judges.
COURTENAY, Administrative Patent Judge.
DECISION ON REQUEST FOR REHEARING
Appellants filed a Request for Rehearing ("Request") under 37 C.F.R.
§ 41.52(a)(l) for reconsideration of our Decision on Appeal, mailed June 1,
2016 ("Decision"). The Decision affirmed the Examiner's rejection A of
claims 13-18 under 35 U.S.C. § 101, as being directed to non-statutory
subject matter. Our Decision also affirmed rejections B, C, and D under
§ 103(a) of claims 1-18. In the Request, Appellants further contest rejection
A under § 101, and additionally contest § 103 rejection A of representative
claim 1.
We have reconsidered our Decision, in light of Appellants' arguments
in the Request, and are not persuaded that we misapprehended or overlooked
Appeal2014-006715
Application 13/117,065
any points in rendering our Decision. We decline to change or modify our
prior Decision for the reasons discussed infra.
ANALYSIS
Rejection A under 35 U.S. C. § 1 OJ
Independent claim 13 is reproduced below (emphasis added):
13. A computer program product for automated social
networking for e-meetings, the computer program product
comprising:
a computer readable storage medium having computer readable
program code embodied therewith, the computer readable
program code comprising:
computer readable program code for monitoring content
provided to an e-meeting managed by an e-meeting server
executing in memory of a host computer;
computer readable program code for detecting a name in the
monitored content;
computer readable program code for comparing the detected
name to names in a contact list for a social networking system
executing externally to thee-meeting;
and,
computer readable program code for triggering generation of a
social networking introduction for the name to different
participants to the e-meeting in response to matching the detected
name to a name in the contact list.
In our Decision ( 6), we found PT AB precedential opinion Ex parte
Mewherter, 107 USPQ2d 1857, 1862 (PTAB 2013), directly on point, and
controlling regarding the contested "computer readable storage medium"
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recited in claim 13. Under Mewherter, the scope of a "computer readable
storage medium" was held to encompass transitory media such as signals or
carrier waves, where the Specification does not expressly disclaim transitory
forms.
In the Request (3--4), Appellants urge we have misapprehended or
overlooked the issue of whether the Specification expressly disclaims
transitory forms of the "computer readable storage medium" recited in claim
13. Appellants refer to the Appeal Brief (5), and contend, inter alia:
In the Decision, however, the Board appears to have
overlooked the argument of the Appeal Brief wherein it was
noted that paragraph [0021] definitively excludes the "signal
medium" from the "storage medium", the "storage medium" and
not the "signal medium" having been claimed by Appellants in
claim 13. Indeed, paragraph [ 0021] "expressly disclaim[ s]
transitory forms" as required by the jurisprudence of Ex parte
Mewherter 1 as noted by the Board. Accordingly, in light of the
"express disclaim[ er]" of paragraph [0021] of the originally filed
specification, Appellants seek rehearing on the matter of the
rejections under 35 U.S.C. § 101.
(Request 3--4).
Issue: Under § 101, does the Specification expressly disclaim
transitory forms of the "computer readable storage medium" recited in
independent claim 13?
Under a broad but reasonable interpretation, the scope of the
"computer program product" recited in the preamble of claim 13 covers
(under the open-ended term "comprising") at least one "computer readable
1 See Mewherter, 107 USPQ2d at 1862.
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storage medium having computer readable program code embodied
th "th "2 3 erew1 . . . . ,
In the Request (3), Appellants urge the Specification (i-f 21) expressly
disclaims transitory forms, because "paragraph [0021] definitively excludes
the 'signal medium' from the 'storage medium', the 'storage medium' and
not the 'signal medium' having been claimed by Appellants in claim 13."
However, we find paragraph 21 of the Specification does not
expressly and unambiguously disclaim transitory forms of storage mediums.
Instead, paragraph 21 broadly describes a "computer readable storage
medium" using exemplary, non-limiting language: "A computer readable
2 See e.g., Genentech, Inc. v. Chiron Corp., 112 F.3d 495, 501 (Fed. Cir.
1997) ("Comprising" is a term of art used in claim language which means
that the named elements are essential, but other elements may be added and
still form a construct within the scope of the claim.) (Emphasis added).
[T]his court has repeatedly emphasized that an indefinite article "a" or "an"
in patent parlance carries the meaning of "one or more" in open-ended
claims containing the transitional phrase "comprising." SanDisk Corp. v.
Kingston Technology Co., Inc., 695 F.3d 1348, 1360 (Fed. Cir. 2012) (citing
Baldwin Graphic Systems, Inc. v. Siebert, 512 F.3d 1338, 1342 (Fed. Cir.
2008)).
3 See also Spec. i127 ("Finally, the terminology used herein is for the
purpose of describing particular embodiments only and is not intended to be
limiting of the invention. As used herein, the singular forms 'a', 'an' and
'the' are intended to include the plural forms as well, unless the context
clearly indicates otherwise. It will be further understood that the terms
11 comprises11 and/ or 11 comprising, 11 when used in this specification, specify
the presence of stated features, integers, steps, operations, elements, and/or
components, but do not preclude the presence or addition of one or more
other features, integers, steps, operations, elements, components, and/or
groups thereof." (Emphasis added).
[
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storage medium may be, for example, but not limited to, an electronic,
magnetic, optical, electromagnetic, infrared, or semiconductor system,
apparatus, or device, or any suitable combination of the foregoing."
(Emphasis added).
We find the exemplary language in the Specification (i-f 21) (i.e., "may
be, for example, but not limited to") is open-ended, and therefore fails to
provide the artisan with notice of a limiting definition, or an express,
unambiguous disclaimer. We additionally find paragraph 21 of the
Specification, as cited by Appellants (Request 3), is silent regarding any
mention of "non-transitory," as are claims 13-18 on appeal.
However, paragraph 22 of the Specification further describes: "A
computer readable signal medium may be any computer readable medium
that is not a computer readable storage medium and that can communicate,
propagate, or transport a program for use by or in connection with an
instruction execution system, apparatus, or device." (Emphasis added).
Thus, paragraph 22 (and not paragraph 21) appears to be the basis for
the purported disclaimer argued by Appellants in the Request (3). To the
extent that paragraph 22 of the Specification excludes computer readable
signal mediums from being a computer readable storage medium, Appellants
conclude that transitory forms of storage mediums are expressly disclaimed
in the Specification under Mewherter. (Request 3).
We give the claim limitations the broadest reasonable interpretation
consistent with the Specification. See In re Morris, 127 F.3d 1048, 1054
(Fed. Cir. 1997). In considering whether the portions of the Specification
cited by Appellants (i-fi-f 21-22) expressly disclaim all transitory mediums
from the scope of the "computer readable storage medium" recited in claim
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13, we must also weigh the additional open-ended description in paragraph
28 that appears to contravene such disclaimer: "The description of the
present invention has been presented for purposes of illustration and
description, but is not intended to be exhaustive or limited to the invention in
the form disclosed." (Spec. i-f 28). (Emphasis added). 4 Additionally, we are
unable to find in the entirety of Appellants' Specification (including the
claims and drawings) any mention of the term "non-transitory" that would
be the basis for an express disclaimer clearly and unambiguously excluding
all transitory forms of mediums from the scope of the claims.
Although Appellants ground their purported disclaimer on the
description of the "computer readable signal medium" described in
paragraph 22 of the Specification, we particularly note claim 13 is silent
regarding any mention of a "computer readable signal medium." (Emphasis
added). Our reviewing court guides: "[i]t is the claims that measure the
invention." See SRI Int'! v. Matsushita Elec. Corp. of Am., 775 F.2d 1107,
1121 (Fed. Cir. 1985) (en bane) (citations omitted); In re Hiniker Co., 150
F.3d 1362, 1369 (Fed. Cir. 1998) ("[T]he name of the game is the claim.").
"We have cautioned against reading limitations into a claim from the
preferred embodiment described in the specification, even if it is the only
embodiment described, absent clear disclaimer in the specification." In re
4 Accord Williamson v. Citrix Online, LLC, 792 F.3d 1339, 1346-47 (Fed.
Cir. 2015) ("This court has repeatedly 'cautioned against limiting the
claimed invention to preferred embodiments or specific examples in the
specification."') (quoting Teleflex, Inc. v. Ficosa N. Am. Corp., 299 F.3d
1313, 1328 (Fed. Cir. 2002)).
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Am. Acad. ofScience Tech Ctr., 367 F.3d 1359, 1369 (Fed. Cir. 2004)
(emphasis added).
Here, we find no clear "non-transitory" disclaimer in the Specification
or claims. Given the open-ended, non-limiting descriptions found in
paragraphs 21 and 28 of the Specification, and because claim 13 is silent
regarding any mention of a computer readable signal medium (Spec. i-f 22),
and particularly because claim 13 does not positively recite a non-transitory
"computer readable storage medium," on this record, we are not persuaded
the Examiner erred. 5 For at least these reasons, we find Appellants'
Specification, and Appellants claims 13-18, do not expressly and
unambiguously disclaim all transitory forms of the recited "computer
readable storage medium." (Claim 13).
We find a preponderance of the evidence supports the Examiner's
finding that the cited portions of the Specification (i-fi-f 21-22) do "not limit
the 'computer readable storage medium' [recited in claim 13] to non-
transitory entities." (Final Act. 23). Thus, we agree with the Examiner's
5 A simple amendment to claim 13 adding "non-transitory" before
"computer readable storage medium" would appear to cure the § 101
problem, consistent with current USPTO policy. We refer Appellants to the
February 23, 2010 "Subject Matter Eligibility of Computer Readable Media
" policy statement by former PTO Director David J. Kappos, as published in
the Official Gazette of the United States Patent and Trademark Office
(USPTO), 1351 Off. Gaz. Pat. Office 212 (Feb. 23, 2010), available at:
http://www.uspto.gov/web/offices/com/sol/og/2010/week08/TOC.htm#ref20
We leave this issue to the Appellants and the Examiner in the event of
further prosecution.
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broader reading that the scope of the claim also covers non-statutory
transitory mediums: "[The] Examiner's broadest reasonable interpretation
of 'computer readable storage medium' would include a signal per se." 6
(Id.).
As indicated in our Decision (6), under Mewherter, the scope of a
"computer readable storage medium" was held to encompass transitory
media such as signals or carrier waves, where, as here, the Specification
does not expressly disclaim transitory forms. Therefore, we reaffirm our
holding that Mewherter is on point and controlling regarding claims 13-18,
as rejected by the Examiner under§ 101. See Decision (6).
This panel is bound under agency authority by the precedential
holding of Mewherter, which was approved by the Director of the USPTO,
and by a majority of the judges of the Board.7 Accordingly, on this record,
and by a preponderance of the evidence, we are not persuaded we
misapprehended or overlooked any points in rendering our Decision
regarding the Examiner's§ 101 rejection A of claims 13-18.
6 Because "applicants 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) (citation omitted).
7 We note the Director of the US PTO is also a member of the Board under
35 U.S.C. § 6(a) ("The Director, the Deputy Director, the Commissioner for
Patents, the Commissioner for Trademarks, and the administrative patent
judges shall constitute the Patent Trial and Appeal Board.").
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Rejection B of Claim 1under§103(a)
In the Request ( 6), Appellants assert the Board established a claim
construction of a "social networking system" as a "contact list" for an
"instant messaging system." Appellants urge the Board's claim construction
is a new ground of rejection:
The findings of the Board, however, extend the arguments
from the equating of a "contact list" to a social networking
system executing externally to an e-meeting as claimed and
argued by Appellants at pages 8 and 9 of the Reply Brief, to a
contact list provided by an instant messaging system. The
Board's findings appear to be an "undesignated new ground of
rejection" under 37 C.F.R. § 41.50(c). As such, Appellants
respectfully request the Board to designate the findings of fact of
page 10 of the Decision a "new grounds of rejection" in so far as
to this point, the Examiner appears only to have compared a
"contact list" to the claimed "social networking system executing
externally to thee-meeting".
(Request 6).
We disagree with Appellants' contention that our claim interpretation
rises to the level of a new ground of rejection, because claim interpretation is
the first step in any meaningful analysis, consistent with our statutory
responsibility as a Board to "review adverse decisions of [E]xaminers upon
applications for patents pursuant to section 134(a)" 35 U.S.C. § 6 (b )(1 ). 8
8 A determination that a claim is obvious involves two analytical steps
(assuming the references have been properly combined under§ 103). First,
we must interpret the claim language, where necessary. Because the PTO is
entitled to give claims their broadest reasonable interpretation, a court's
review of the Board's claim construction is limited to determining whether it
was reasonable. In re Morris, 127 F.3d 1048, 1055 (Fed. Cir. 1997).
Secondly, the Board must compare the construed claim to one or more prior
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Our review necessarily requires construing and reading the contested
claim limitations on the corresponding features found by the Examiner in the
prior art. The issue of proper claim interpretation under BRI is a preliminary
consideration for review of each claim limitation contested by Appellants.
To require claim construction by the Board to be designated a new ground of
rejection would frustrate the purpose of the Administrative Procedure Act
(AP A), and any meaningful PT AB administrative review of the claim terms
contested on appeal. Further, Appellants do not specifically explain how the
Board's claim interpretation changed the thrust of the rejection based upon
the prior art teachings cited by the Examiner.
Our reviewing court recognizes the Board need not recite and agree
with the Examiner's rejection in haec verba to avoid issuing a new ground
of rejection:
Under the Act [APA], an applicant for a patent who appeals a
rejection to the Board is entitled to notice of the factual and legal
bases upon \vhich the rejection \Vas based. 5 U.S.C. § 554(b )(3).
The Board's rules are in accord and provide that when the Board
relies upon a new ground of rejection not relied upon by the
examiner, the applicant is entitled to reopen prosecution or to
request a rehearing. See 37 C.F.R. § 41.50(b). The Board need
not recite and agree with the examiner's rejection in haec verba
to avoid issuing a new ground of rejection. "[T]he ultimate
criterion of whether a rejection is considered 'new' in a decision
by the [B]oard is whether [applicants] have had fair opportunity
to react to the thrust of the rejection." In re Kronig, 539 F.2d
1300, 1302-03 (CCPA 1976) (holding no new ground of
rejection when the Board relied on the same statutory basis and
the same reasoning advanced by the examiner).
art references and make factual findings regarding the limitations contested
by Appellants. Cf In re Crish, 393 F.3d 1253, 1256 (Fed. Cir. 2004).
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Jn re Leithem, 661F.3d1316, 1319 (Fed. Cir. 2011).
This reasoning is applicable here. Therefore, we find Appellants'
arguments unpersuasive that our claim interpretation in the Decision rises to
the level of a new ground of rejection.
Turning to the record (Final Act. 5), we note the Examiner finds
Appleman teaches or suggest all of the limitations of claim 1, except:
"Appleman does not explicitly teach comparing the detected name to names
in a contact list for a social networking system executing externally to the e-
meeting."
As stated in our Decision (10):
The Examiner finds the contact list taught by Deeds (i-f 4 7,
Fig. 3) teaches or suggests a "contact list for a social networking
system," because it relates to screen names in an Instant
Messaging system. (Ans. 7).
Because 1A .. ppellants have not provided a definition for
"social networking system " in the claim or Specification, or
rebuttal evidence properly entered and considered by the
Examiner in the record, we are not persuaded the Examiner's
reading of the claim term "social networking system" is overly
broad, unreasonable, or inconsistent with Appellants'
Specification. 9
In the Response to Arguments (Ans. 4), the Examiner notes the lack
of a definition: "Applicant's specification only discusses 'externally to an e-
9 Because "applicants 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) (citation omitted).
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meeting' in paragraphs [0006] and [0007]. No explicit definition of what
external would include or not include is presented." Given the lack of a
definition in the Specification, the Examiner broadly but reasonably
interprets the claim 1 language "externally to thee-meeting" and finds:
Examiner points to paragraphs [004 7] of Deeds which
teaches "After all communication identifiers within the received
email message have been identified, the next step typically would
be to compare each of these communication identifiers to the
user's contact list to identify matches, as shown in block 104 of
FIG. 3. A user would typically have a contact list stored in the
memory of the user's communication terminal or in a remote
memory, such as in a server accessible by the terminal. A
contact list typically comprises a number of individual contacts,
with each individual contact typically comprising specific
contact information for one person or other entity (e.g., corporate
entity)."
(Ans. 4, emphasis added).
As reproduced above, the Examiner made a specific finding in bold
type regarding the "social networking system executing externally to the e-
meeting" (claim 1 ): "A user would typically have a contact list stored in the
memory of the user's communication terminal or in a remote memory,
such as in a server accessible by the terminal." (Ans. 4). The Examiner
additionally points to paragraph 69 of Deeds, and finds:
This section clearly teaches that a "contact list" is a social
networking list because a contact list is a collection of screen
names of people in a network which would be a social network
list/system. Furthermore, the contact list can be local to the user
terminal or on a remote server and therefore can be located
external to the e-meeting. No matter whether the e-meeting is
local or remote to the terminal, the "contact list" could be the
opposite and therefore external to the e-meeting. It is clear then
that the prior art of record teaches "contact list for a social
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networking system executing externally to thee-meeting" along
with all other limitations of the claimed invention.
(Ans. 5, emphasis added).
In the Reply Brief ( 6), Appellants reproduce the record, but do not
substantively traverse the Examiner's specific findings:
In the Examiner's Answer, Examiner responded to Appellants'
specific basis of distinction by first arguing that the term
"externally" is somehow ambiguous and difficult to understand
and therefore requires a specific definition within the
specification. Examiner further repeats the content of paragraph
[0047] of Deeds notwithstanding Appellants observation that
paragraph [0047] of Deeds refers only to a contact list locally or
remotely stored in memory.
Regarding Appellants' underlying premise that the Board established
a new claim construction for a "social networking system" (claim 1 ), by
reading this term as encompassing a "contact list" for an "instant messaging
system" (Request 6), we conclude our construction at least comports with
Appellants' own proffered interpretation of a social networking system:
"Whereas, a system is something substantially more: a collection of
components working together to achieve some goal." (Reply Br. 8,
emphasis added).
We find a "contact list" and "instant messaging system" are a
collection of components that work together to achieve a "social
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networking" goal, and therefore at least suggest the "social networking
system" recited in claim 1. 10
Moreover, the Supreme Court guides the obviousness "analysis need
not seek out precise teachings directed to the specific matter of the
challenged claim, for a court can take account of the inferences and creative
steps that a person of ordinary skill in the art would employ." KSR Int 'l Co.
v. Teleflex Inc., 550 U.S. 398, 418 (2007). The operative question is
"whether the improvement is more than the predictable use of prior art
elements according to their established functions." Id. at 417.
Here, given the evidence relied upon by the Examiner (Ans. 2-7), we
answer that question in the negative. On this record, we are not persuaded
the Examiner's proffered combination of Appleman and Deeds would have
been uniquely challenging or difficult for one of ordinary skill in the art. See
Leapfrog Enters., Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1162 (Fed. Cir.
2007) (citing KSR, 550 U.S. at 418). Therefore, on this record, we are not
persuaded of error regarding the Examiner's underlying factual findings and
ultimate legal conclusion of obviousness for all claims rejected under § 103.
CONCLUSION
We have considered all of the arguments raised by Appellants in the
Request, but Appellants have not persuaded us that we misapprehended or
overlooked any points in rendering our Decision.
10 "[T]he question under 35 U.S.C. § 103 is not merely what the references
expressly teach but what they would have suggested to one of ordinary skill
in the art at the time the invention was made." Merck & Co., Inc. v. Biocraft
Laboratories, Inc., 874 F. 2d 804, 807-808 (Fed. Cir. 1989).
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DECISION
We have granted Appellants' request to the extent that we have
reconsidered our Decision, but we deny the Request with respect to making
any changes therein.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See also 37 C.F.R.
§ 41.52(b).
REQUEST FOR REHEARING DENIED
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