11099203 (P.T.A.B. Mar. 21, 2017)

Ex Parte Lakshminath et al

Patent Trial and Appeal BoardMar 21, 2017

11099203 (P.T.A.B. Mar. 21, 2017)

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. 11/099,203 04/04/2005 Anand Lakshminath 50277-2716 6733 42425 7590 03/23/2017 HTPKMAN PAT F.RMO RFFTCFR RTNOTTAM/OR AFT F EXAMINER 1 Almaden Boulevard SAEED, USMAAN Floor 12 SAN JOSE, CA 95113 ART UNIT PAPER NUMBER 2169 NOTIFICATION DATE DELIVERY MODE 03/23/2017 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): usdocket@h35g.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte ANAND LAKSHMINATH, BENNY SOUDER, JAMES W. STAMOS, LIK WONG, and HUNG TRAN Appeal 2014-008566 Application 11/099,2031 Technology Center 2100 Before ELENI MANTIS MERCADER, JOHN P. PINKERTON, and SCOTT E. BAIN, Administrative Patent Judges. BAIN, Administrative Patent Judge. DECISION ON REQUEST FOR REHEARING 1 Appellants identify Oracle International Corporation as the real party interest. App. Br. 1. Appeal 2014-008566 Application 11/099,203 STATEMENT OF THE CASE Appellants have filed a Request for Rehearing concerning the Decision on Appeal (“Decision”) dated December 2, 2016, which affirmed the Examiner’s decision rejecting claims 1—3, 5—14, 16, 17, 35, 41—56, and 59-62. ANALYSIS The Request for Rehearing concerns all pending claims, including independent claims 1 and 41 drawn to a machine-implemented method and storage media storing instructions, respectively, for managing a versioned tablespace repository. App. Br. 26-40 (Claims App’x). The Examiner rejected all of the pending claims under pre-AIA 35 U.S.C. § 112, first paragraph, as failing to comply with the written description requirement, and under pre-AIA 35 U.S.C. § 112, second paragraph, as being indefinite. Final Act. 8—16. The Examiner also rejected claims 1—3, 10, 35, 37, 41—43, 49, 56, 57, and 59-62 under pre-AIA 35 U.S.C. § 102(b) as anticipated by Scott et al. (“Scott”), and rejected the remaining claims under pre-AIA 35 U.S.C. § 103(a) as unpatentable over Scott and various additional references. Final Act. 16-41. The Board sustained the Examiner’s rejections. Decision 5—12. Appellants argue the Board’s Decision overlooked or misapprehended Appellants’ arguments regarding virtually every issue raised in the Appeal Brief. Req. Reh’g 2—9. Appellants contend none of the disputed limitations are indefinite, all of the disputed limitations are supported in the written description, Scott does not disclose any of the disputed limitations in the independent claims, and Scott does not teach the disputed limitations in 2 Appeal 2014-008566 Application 11/099,203 dependent claims 61 and 62. Id. We have considered Appellants’ arguments in the Request for Rehearing, but we are not persuaded any points were misapprehended or overlooked by the Board in our Decision. Appellants contend the Board cannot sustain the indefmiteness rejection because there is only a single “particular file group” recited in the claims, and the various recitations to “file group versions” include the modifiers “plurality” and “set of one or more.” Req. Reh’g 2. The point remains, however, that giving the claims their broadest reasonable construction in light of the Specification (as we must), the independent claims’ recitations of “file groups,” “file group versions,” and “particular file group” are susceptible to varied scope and meaning. Ans. 23—24; Dec. 5—6. Appellants bear the burden of precisely defining the scope of the invention, and we are not persuaded the Examiner erred in requiring Appellants to clarity the relationship between these similar and potentially-overlapping terms appearing throughout the claims. Ans. 23—24; Dec. 5—6; Ex parte Miyazaki, 89 USPQ2d 1207, 1211-12 (BPAI 2008) (precedential). Furthermore, we note that claim 1 does not recite the term “single,” Req. Reh’g 2, but rather the article “a” (see claim 1). The indefinite article “a” means “one or more” in open-ended claims containing the transitional term “comprising.” See Harari v. Lee, 656 F.3d 1331, 1341 (Fed. Cir. 2011). We further note that to the extent that the Specification describes a single particular file group, in construing the meaning of claim terms, caution must be taken not to import limitations from the specification as “[i]t is the claims that measure the invention.” See SRIInt 7 v. Matsushita Elec. Corp. of Am., 775 F.2d 1107, 1121 (Fed. Cir. 1985) (enbanc) (citations omitted); see also Superguide Corp. v. DirecTV Enterprises, Inc., 358 F.3d 3 Appeal 2014-008566 Application 11/099,203 870, 875 (Fed. Cir. 2004) (“Though understanding the claim language may be aided by explanations contained in the written description, it is important not to import into a claim limitations that are not part of the claim.”); In re Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993). During ex parte prosecution, claims must be interpreted as broadly as their terms reasonably allow since Applicants have the power during the administrative process to amend the claims to avoid the prior art. See In re Zletz, 893 F.2d 319, 322 (Fed. Cir. 1989). With regard to the written description rejection, Appellants contend the Board overlooked paragraph 23 of the Specification describing the “second mapping” as recited in claim 1. Req. Reh’g 4. As Appellants acknowledge, however, id., the Appeal Brief did not argue paragraph 23 provides support for the disputed element, nor did the Reply Brief. The Decision did address Appellants’ argument regarding paragraph 22. Dec. 6— 7. Moreover, we are not persuaded paragraph 23 of the Specification supports Appellants’ argument. Claim 1 requires “a” mapping that maps two sets of file group versions to their respective sets of items. Ans. 7. Paragraph 23 of the Specification, like paragraph 22, describes various mappings of file group versions to various items, and discloses a “single item” can “belong to multiple versions,” but does not describe the claimed mapping. Spec. 123 (emphasis added). The Board’s Decision similarly addresses Appellants’ remaining arguments regarding the written description rejection. Dec. 6—8. Finally, regarding the prior art rejections, the Request for Rehearing repeats many of the arguments made in the Appeal Brief, Req. Reh’g 7—9, and we are not persuaded the Board overlooked or misapprehended these 4 Appeal 2014-008566 Application 11/099,203 arguments. Appellants further contend they “intended” to argue in the Appeal Brief that “no two records in object versions table 300 [of Scott] will ever point to the same object version from different branches,” as required by claim 1. Id. Aside from the fact that Appellants made a different argument in the Appeal Brief, on the record before us we agree with the Examiner’s findings that one of ordinary skill in the art would understand Scott’s Figures 3 and 4, and the accompanying descriptions, as disclosing the disputed limitation. Ans. 25—27; Dec. 10-11; see also In re Bond, 910 F.2d 831, 832 (Fed. Cir. 1990) (difference in labeling is not dispositive, as anticipation is not an “ipsissimis verbis” test); In re Preda, 401 F.2d 825, 826 (CCPA 1968) (“it is proper to take into account not only specific teachings of the reference but also the inferences which one skilled in the art would reasonably be expected to draw therefrom.”). Appellants also cursorily argue the Board’s Decision and the Examiner’s Answer overlook Appellants’ argument that Scott does not disclose “after the storing of the metadata and the first and second mappings, receiving a request that requires identification of all items that belong to the first file group version,” as recited in claim 1. Req. Reh’g 8. This argument, however, even if it had been made in Appellants’ Appeal Brief, is not sufficiently developed to persuade us of error. A mere assertion that the prior art does not teach a particular element with no meaningful explanation is unpersuasive. See In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011); see also In re Lovin, 652 F.3d 1349, 1357 (Fed. Cir. 2011) (“the Board reasonably interpreted Rule 41.37 to require more substantive arguments in an appeal brief than a mere recitation of the claim elements and a naked assertion that the corresponding elements were not found in the prior art”). 5 Appeal 2014-008566 Application 11/099,203 Accordingly, we are not persuaded the Board overlooked or misapprehended Appellants’ argument. DECISION Appellants’ Request for Rehearing is granted to the extent that the Decision has been reconsidered in light of the arguments made in the Request for Rehearing, but is denied in all other respects. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). DENIED 6