Ex Parte Mishra et al

Patent Trial and Appeal Board

Jun 4, 2018

12628773 (P.T.A.B. Jun. 4, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/628,773 12/01/2009 SUJEET MISHRA
73109 7590 06/06/2018
Cuenot, Forsythe & Kim, LLC
20283 State Road 7
Ste. 300
Boca Raton, FL 33498
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.
IN920090083US 1
8152-0166
CONFIRMATION NO.
6560
EXAMINER
BELCHER, HERMAN A
ART UNIT PAPER NUMBER
2448
NOTIFICATION DATE DELIVERY MODE
06/06/2018 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):
ibmptomail@iplawpro.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte SUJEET MISHRA, RUCHIR P. IHA, and
LOHITASHWA THYAGARAJ
Appeal2018-000470
Application 12/628,773 1
Technology Center 2400
Before JOHN A. EVANS, CATHERINE SHIANG, and
SCOTT B. HOWARD, Administrative Patent Judges.
HOWARD, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Final Rejection
of claims 33-50, which constitute all of the claims pending in this
application. Claims 1-32 have been cancelled. App. Br. 2. We have
jurisdiction under 35 U.S.C. § 6(b ).
We reverse and institute a new ground of rejection under the
provisions of 37 C.F.R. § 41.50(b).
1 Appellants identify IBM Corporation as the real party in interest. App. Br.
1.
Appeal2018-000470
Application 12/628,773
THE INVENTION
The disclosed and claimed invention is directed to a method of
recalling a message. Abstract.
Claim 33, reproduced below with the relevant limitations emphasized,
is illustrative of the claimed subject matter:
33. A method, performed within and by a
publish/subscribe server, comprising:
identifying a plurality of durable subscribers;
sending a message, from the publish/subscribe server, to
the identified plurality of durable subscribers;
receiving, from a publisher of the message, a message
recall request identifying the message;
identifying, using a communication to the plurality of
durable subscribers to which the message was sent, durable
subscribers that have not consumed the message; and
instructing each identified durable subscriber that have
not consumed the message to delete the message.
REFERENCES
The prior art relied upon by the Examiner as evidence in rejecting the
claims on appeal is:
Cullen
Kay
US 2008/0256553 Al Oct. 16, 2008
US 2008/0317228 Al Dec. 25, 2008
REJECTION
Claims 33-50 stand rejected under pre-AIA 35 U.S.C. § 103(a) as
being unpatentable over Cullen in view of Kay. Final Act. 6-23.
ANALYSIS
We have reviewed the Examiner's rejection in light of Appellants'
arguments that the Examiner erred. In reaching this decision, we have
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considered all evidence presented and all arguments made by Appellants.
We are persuaded by Appellants' arguments regarding the pending claims.
However, for the reasons set forth below, we enter a new ground of
rejection.
Section 103 Rejection
Appellants argue the Examiner erred in finding the combination of
Cullen and Kay teaches the identifying and instructing steps recited in claim
33. App. Br. 8-12; Reply Br. 4--8. Specifically, Appellants argue the
identifying and instructing steps require two separate communications
between the publish/subscribe server and the plurality of durable
subscribers:
As previously argued on page 8, line 22 through page 9, line 3
of the Appeal Brief, the claims require "two separate
communications" that are "from the publish/subscribe server
to the durable subscribers. " The Examiner asserts that "the
recall request to the given set of intended recipients to be a first
communication and the delete message or instruction to storage
to be a second communication." However, Kay does not teach
a separate "delete message or instruction to storage," as alleged
by the Examiner.
Reply Br. 5 (emphasis added); see also App. Br. 8-9.
The Examiner finds Kay teaches the disputed limitations. Final Act.
7-8 (citing Kay i-f 11, Fig. IA); Ans. 5---6 (citing Kay i-fi-14, 11). According to
the Examiner:
Kay discloses (par. 0004), a request to recall a particular
message is sent to given set of intended recipients and (par.
0011, fig. 1) the message is recalled at step 18 for the intended
recipient ... message can be deleted from storage. The
Examiner considers the recall request to the given set of
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intended recipients to be a second communication, thus two
separate communications.
Ans. 5---6 (emphasis added).
During prosecution, claims must be given their broadest reasonable
interpretation while reading claim language in light of the specification as it
would be interpreted by one of ordinary skill in the art. In re Am. Acad. of
Sci. Tech Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). Under this standard,
we interpret claim terms using "the broadest reasonable meaning of the
words in their ordinary usage as they would be understood by one of
ordinary skill in the art, taking into account whatever enlightenment by way
of definitions or otherwise that may be afforded by the written description
contained in the applicant's specification." In re Morris, 127 F.3d 1048,
1054 (Fed. Cir. 1997). Additionally, it is improper to read a specific order
of steps into method claims unless "as a matter of logic or grammar, they
must be performed in the order written" or if the specification "directly or
implicitly requires such a narrow construction." Altiris Inc. v. Symantec
Corp., 318 F.3d 1363, 1369, 1371 (Fed. Cir. 2003) (internal citation and
quotation omitted).
Based on the words recited in claim 33, we agree with Appellants that
the broadest reasonable interpretation of the claim requires separate
communications for the identifying and instructing steps.
The instructing step requires the publish/subscribe server "using a
communication to the plurality of durable subscribers to which the message
was sent" for the purpose of "identifying ... durable subscribers that have
not consumed the message." See App. Br. 15 (Claims App.). That is the
first communication.
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The claim further recites "instructing each identified durable
subscriber that have not consumed the message to delete the message." See
id. That deletion communication is a second communication. Additionally,
because the instructing step requires the deletion message to be sent to the
users identified in the identifying steps, logic requires that the steps be
followed in sequential order.
Furthermore, we agree with Appellants that Kay teaches a single
communication. A recall message is sent from the server to all users. Kay
i-fi-1 4, 11. That message determines if the message has been accessed by the
user, and if not, the recall message instructs that the original message is to be
deleted. Id. Accordingly, a single communication is used to both identify
and instruct.
Therefore, we agree with Appellants that the Examiner's finding that
Cullen in view of Kay teaches the disputed limitation is in error because it is
not supported by a preponderance of the evidence. See In re Caveney, 761
F.2d 671, 674 (Fed. Cir. 1985) (Examiner's burden of proving non-
patentability is by a preponderance of the evidence); see also In re Warner,
379 F.2d 1011, 1017 (CCPA 1967) ("The Patent Office has the initial duty
of supplying the factual basis for its rejection. It may not, because it may
doubt that the invention is patentable, resort to speculation, unfounded
assumptions or hindsight reconstruction to supply deficiencies in its factual
basis."). Because we agree with Appellants regarding this dispositive issue,
we need not consider Appellants' remaining arguments.
Accordingly, we are constrained on this record to reverse the
Examiner's rejection of claim 33, along with the rejections of claims 39 and
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45, which recite limitations commensurate in scope to the disputed
limitations discussed above, and dependent claim 34--38, 40-44, and 46-50.
New Ground of Rejection
Pursuant to 35 U.S.C. § 112, paragraph 1, "[t]he specification shall
contain a written description of the invention, and of the manner and process
of making and using it, in such full, clear, concise, and exact terms as to
enable [a PHOSITA] to which it pertains ... to make and use the same." To
satisfy the written description requirement, the disclosure must reasonably
convey to skilled artisans that Appellant possessed the claimed invention as
of the filing date. Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336,
1351 (Fed. Cir. 2010) (en bane). Specifically, the description must "clearly
allow persons of ordinary skill in the art to recognize that [the inventor]
invented what is claimed." Id. (alteration in original) (quoting Vas-Cath Inc.
v. Mahurkar, 935 F.2d 1555, 1563 (Fed. Cir. 1991)).
[T]he test requires an objective inquiry into the four comers of
the specification from the perspective of a person of ordinary
skill in the art. Based on that inquiry, the specification must
describe an invention understandable to that skilled artisan and
show that the inventor actually invented the invention claimed.
Id. "[T]he hallmark of written description is disclosure." Id. "This
inquiry ... is a question of fact," which "var[ ies] depending on the context"
and "requires an objective inquiry into the four comers of the specification
from the perspective of a [PHO SITA]." Id. (citations omitted).
Demonstrating adequate written description "requires a precise definition"
of the invention. Id. at 1350. However, the claimed invention need not be
recited in haec verba in the original specification in order to satisfy the
written description requirement. Id. at 1352.
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Having reviewed the Specification, we cannot find any disclosure of
two separate communications from the subscribe/publish server that
corresponds to the communications recited in the identifying and instructing
steps. Instead, similar to the prior art, the Specification describes a single
communication that acts to identify those messages that have not been
consumed and then instructs them to be deleted:
The message cleanup agent 145 determines those durable
subscribers 125 in which the message to be recalled may be
queued for consumption. Specifically, the message cleanup
agent 145 uses the topic id of the message recall request to
query the broker 130 for the subscribers 115 that are subscribed
to the topicid and the durable subscribers 125 that the message
to be deleted was sent to. The message cleanup agent 145 then
pops or deletes all messages matching the messageid from the
identified durable subscribers. If the message has already been
consumed by the subscriber instance 120, the message cannot
be recalled.
Spec. i-f 23; 2 see also Fig. 2 (showing a single communication between the
server and the user after the publisher requests a recall).
As discussed above, claim 33 recites two separate communications for
the identifying and instructing steps. See App. Br. 15 (Claims App.)
Similarly, claim 39 requires a hardware processor configured to perform
those step and claim 45 requires computer-usable program code which
causes the publish/subscribe server to perform those steps. See App. Br. 16-
18 (Claims App.). Because the Specification does not convey to a person
having ordinary skill in the art the publish/subscribe server performing two
separate and distinct communications for the identifying and instructing
2 Appellants identify paragraph 23 for both the identifying and instructing
limitations in the summary of claimed subject matter. App. Br. 2-3
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steps, claims 33-50 and unpatentable 35 U.S.C. § 112, paragraph 1 for not
complying with the written description requirement.
DECISION
For the above reasons, we reverse the Examiner's decisions rejecting
claims 33-50.
We enter a new ground of rejection for claims 33-50 under 35 U.S.C.
§ 112, first paragraph as failing to comply with the written description
requirement.
This decision contains a new ground of rejection pursuant to 37
C.F.R. § 41.50(b). Section 41.50(b) provides "[a] new ground of rejection
pursuant to this paragraph shall not be considered final for judicial review."
Section 41.50(b) also provides:
When the Board enters such a non-final decision, the appellant,
within two months from the date of the decision, must exercise
one of the following two options with respect to the new ground
of rejection to avoid termination of the appeal as to the rejected
claims:
( 1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new Evidence relating to
the claims so rejected, or both, and have the matter reconsidered
by the examiner, in which event the prosecution will be
remanded to the examiner. The new ground of rejection is
binding upon the examiner unless an amendment or new
Evidence not previously of Record is made which, in the opinion
of the examiner, overcomes the new ground of rejection
designated in the decision. Should the examiner reject the
claims, appellant may again appeal to the Board pursuant to this
subpart.
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(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same Record. The
request for rehearing must address any new ground of rejection
and state with particularity the points believed to have been
misapprehended or overlooked in entering the new ground of
rejection and also state all other grounds upon which rehearing
is sought.
Further guidance on responding to a new ground of rejection can be
found in the Manual of Patent Examining Procedure§ 1214.01.
REVERSED
37 C.F.R. § 41.50(b)
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