Ex Parte MiyashitaDownload PDFPatent Trial and Appeal BoardMar 29, 201310314235 (P.T.A.B. Mar. 29, 2013) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte KEN MIYASHITA ____________ Appeal 2010-010626 Application 10/314,235 Technology Center 2400 ____________ Before JOSEPH L. DIXON, ST. JOHN COURTENAY III, and CARLA M. KRIVAK, Administrative Patent Judges. DIXON, Administrative Patent Judge. DECISION ON APPEAL Appeal 2010-010626 Application 10/314,235 2 STATEMENT OF THE CASE Appellant appeals under 35 U.S.C. § 134(a) from a rejection of claims 1, 2, 4, 7-24, and 26. Claims 3, 5, 6, and 25 have been canceled. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. INVENTION The claims are directed to a service providing system including information providing apparatuses which allow, for example, a user to communicate with other users in a chat system (Spec. 1:7-12). Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. A service providing system comprising: a first information providing apparatus for providing information via a network; and a plurality of second information processing apparatuses sharing the information provided by the first information providing apparatus with one another, the first information providing apparatus including: first storage means for storing a group to which the second information processing apparatuses belong; second storage means for storing first information and link information when the first information which includes a chat text is received from one of the second information processing apparatuses; third storage means for storing second information when the second information which differs from the first Appeal 2010-010626 Application 10/314,235 3 information is received from one of the second information processing apparatuses; and forwarding means for forwarding, without solicitation from the remaining second information processing apparatuses, the first information, the second information and the link information received from one of the second information processing apparatuses to the remaining second information processing apparatuses belonging to the same group in response to receiving the first information, the second information and the link information from the one of the second information processing apparatuses, and the second information processing apparatuses each including: first presenting means for presenting the first information received from the first information providing apparatus to a user; and second presenting means for presenting the second information received from the first information providing apparatus to the user, wherein when the link information, the first information, and the second information are received from a second information processing apparatus, a visual link is inscribed between the first information and the second information using said link information, and when part of the link information, the first information, and the second information are received from the second information processing apparatus, a visual link is inscribed between part of the first information and the second information using said link information. Appeal 2010-010626 Application 10/314,235 4 REFERENCES The prior art relied upon by the Examiner in rejecting the claims on appeal is: Tuli Takahashi Liwerant Walsh Finn Maurille Eshghi Milkey Halahmi US 6,003,034 US 2002/0035620 A1 US 2002/0056123 A1 US 2002/0107924 A1 US 2002/0128039 A1 US 6,484,196 B1 US 2003/0074394 A1 US 2005/0273514 A1 US 7,039,678 B1 Dec. 14, 1999 Mar. 21, 2002 May 9, 2002 Aug. 8, 2002 Sept. 12, 2002 Nov. 19, 2002 Apr. 17, 2003 Dec. 8, 2005 May 2, 2006 “AOL Instant Messenger 4.3” (available at http://web.archive.org/web/2001063154020/www.aol.com/aim/aim40.html) (hereinafter “AIM”) REJECTIONS Claims 1, 2, 7, 8, 22, and 23 stand rejected under 35 U.S.C. § 112, first paragraph, as failing to comply with the written description requirement. Claims 1, 2, 4, 9-21, 24, and 26 stand rejected under 35 U.S.C. § 112, second paragraph, as being indefinite. Claims 1, 2, 4, 7, 8, 23, and 26 stand rejected under 35 U.S.C. Appeal 2010-010626 Application 10/314,235 5 § 103(a) as being unpatentable over Maurille, Halahmi, AIM, Milkey, and Takahashi. Claims 9-12 and 14-16 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Maurille, Halahmi, AIM, and Takahashi. Claim 13 stands rejected under 35 U.S.C. § 103(a) as being unpatentable over Maurille, Halahmi, AIM, Takahashi, and Finn. Claims 17-19 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Maurille, Halahmi, AIM, Takahashi, and Liwerant. Claim 20 stands rejected under 35 U.S.C. § 103(a) as being unpatentable over Maurille, Halahmi, AIM, Takahashi, Liwerant, and Tuli. Claim 21 stands rejected under 35 U.S.C. § 103(a) as being unpatentable over Maurille, Halahmi, AIM, Takahashi, Liwerant, and Walsh. Claim 22 stands rejected under 35 U.S.C. § 103(a) as being unpatentable over Maurille, Halahmi, AIM, and Milkey. Claim 24 stands rejected under 35 U.S.C. § 103(a) as being unpatentable over Maurille, Halahmi, AIM, Milkey, Takahashi, and Eshghi. ANALYSIS The Written Description Rejection The Examiner rejected claims 1, 2, 7, 8, 22, and 23 as failing to comply with the written description requirement because the “claims recite where the forwarding occurs ‘without solicitation from the remaining second information processing apparatuses’; said language was not described in the specification” (Ans. 5). Appellant contends that Figure 7 and the accompanying description, for example, page 33 in the Specification, Appeal 2010-010626 Application 10/314,235 6 provide written description support for the “without solicitation” limitation in claim 1 (App. Br. 12). 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 banc). Appellant’s Figure 7 is a flow chart that shows communications between a server and clients 3-1 and 3-2. Figure 7 shows that client 3-2 receives, in step S81, chat data and shared information from the server, and does not show a solicitation from the client 3-2 to the server. However, silence in the Specification is not enough to show possession of the claimed exclusion of a solicitation. Rather, it is unclear whether Appellant contemplated any relative advantages for the forwarded chat data and shared information to be either solicited or unsolicited. It is true that an inventor is free to describe alternative elements and decide which element to exclude. See In re Johnson, 558 F.2d 1008, 1017-19 (CCPA 1977). Here, however, Appellant’s Specification neither explicitly describes the negative limitation of excluding a solicitation from the client 3-2 to the server, nor indicates possession of this feature by describing any advantage of excluding a solicitation or disadvantage of including a solicitation. See Santarus, Inc. v. Par Pharm., Inc., 694 F.3d 1344, 1351 (Fed. Cir. 2012) (“Negative claim limitations are adequately supported when the specification describes a reason to exclude the relevant limitation. . . . The claim limitation that the [inventive] formulations contain no sucralfate is adequately supported by statements in the specification expressly listing the disadvantages of using sucralfate.”). Accordingly, Appellant has not identified, and we have not found in the Specification, Appeal 2010-010626 Application 10/314,235 7 such disclosure to reasonably convey to skilled artisans that Appellant possessed the claimed “without solicitation” feature as of the filing date. We are therefore not persuaded that the Examiner erred in rejecting claim 1, and claims 2, 7, 8, 22, and 23 not separately argued, under §112, first paragraph (written description). The Indefiniteness Rejection The Examiner entered a new ground of rejection for claim 1, which recites various means-plus-function limitations, finding the claim indefinite because “the written description fails to clearly link or associate the disclosed structure, material, or acts to the claimed function such that one of ordinary skill in the art would recognize what structure, material, or acts perform the claimed function” (Ans. 5-6). The Examiner rejected claims 2, 4, 9-21, 24, and 26 for similar reasons (Ans. 9). Accordingly, the Examiner required Appellant to: (a) Amend the claim so that the claim limitation will no longer be a means (or step) plus function limitation under 35 U.S.C. 112, sixth paragraph; or (b) Amend the written description of the specification such that it clearly links or associates the corresponding structure, material, or acts to the claimed function without introducing any new matter (35 U.S.C. 132(a)); or (c) State on the record where the corresponding structure, material, or acts are set forth in the written description of the specification that perform the claimed function. For more information, see 37 CFR 1.75(d) and MPEP §§ 608.01 (o) and 2181. Appeal 2010-010626 Application 10/314,235 8 (Ans. 9). Appellant responds by pointing to the “Summary of the Claimed Subject Matter” section of the Appeal Brief to show where the corresponding structure is disclosed in the Specification (see Reply Br. 3). We find that the record shows which corresponding structures are linked to the various functions associated with the “means” limitations of claim 1 that form the basis of the Examiner’s rejection. For clarification, we address each “means” here. Regarding the “first storage means,” Appellant identifies “Figure 1, element 13 and page 16, line 19 to page 19, line 16” (App. Br. 3, footnote 4). Element 13 in Figure 1 is labeled “Database” and is located within an element 2 labeled “Server.” The Specification describes the server 2 as follows: “A ROM (Read Only Memory) 32 stores programs used by a CPU (Central Processing Unit) 31 . . . . The CPU 31 executes various application programs and a basic OS (Operating System) program to perform various processes described below. A RAM (Random Access Memory) 33 stores programs executed by the CPU 31 . . . .” (Spec. 16:4- 10). In other words, the server that includes the database 13 is a general purpose computer programmed with applications for performing its described functions. “In a means-plus-function claim in which the disclosed structure is a computer, or microprocessor, programmed to carry out an algorithm, the disclosed structure is not the general purpose computer, but rather the special purpose computer programmed to perform the disclosed algorithm.” WMS Gaming Inc. v. Int’l Game Tech., 184 F.3d 1339, 1349 (Fed. Cir. 1999). Here, the Specification describes the following algorithm: In response to reception of an instruction to create a new chat room from the client computer 3, the chat room manager 12 creates a region, in the database 13, for managing data Appeal 2010-010626 Application 10/314,235 9 exchanged in the new chat room from this point onward. A chat room ID for identifying the chat room is assigned to the region. (Spec. 16:19-24). Thus, we find that the server programmed to perform the steps of creating a region in the database representing a chat room and assigning a chat room ID for the region is the disclosed structure corresponding to the “first storage means.” Regarding the second and third storage means, Appellant similarly identifies “Figure 1, element 13,” i.e., the database in the server. Further, for the second storage means, Appellant identifies “Figure 7, step S62” and “page 32, lines 11-17” (App. Br. 3, footnote 5), which discloses the following algorithm: In step S62, the chat room manager 12 of the server 2 searches the database 13 for the storage region having the same chat room ID as that attached to the received data and stores the received chat text “I’m free on the following days.” as chat log data having the shared information ID attached thereto in the detected chat log data management region. (Spec. 32:11-17). For the third storage means, Appellant identifies “page 33, lines 4-7” (App. Br. 3, footnote 6), which discloses that “the chat room manager 12 stores the shared information (having the shared information ID attached thereto) received in step S61 in the shared information management region” (Spec. 33:4-7). Accordingly, we find that the server programmed to perform the storing of chat log data and shared information in the respective chat log data management and shared information management regions of the database is the disclosed structure corresponding to the second and third storage means. Appeal 2010-010626 Application 10/314,235 10 Regarding the forwarding means, Appellant identifies “Figure 7, step S63” and “page 33, lines 13-17” (App. Br. 4, footnote 7), which discloses: In step S63, the chat room manager 12 of the server 2 sends the chat log data “I’m free on the following days.” and the shared information stored in the database 13 in step S62 via the communication unit 11 to the client computers 3-1 and 3-2. (Spec. 33:13-17). Thus, we find that the server programmed to perform the sending of the chat log data and shared information to the clients via the communication unit on the server is the disclosed structure corresponding to the “forwarding means.” Regarding the first and second presenting means, Appellant identifies “page 33, line 23 to page 36, line 12” (App. Br. 4, footnote 9). Here, the Specification describes the following: In step S75, as shown in Fig. 10, the chat log manager 68 of the client computer 3-1 displays the chat log data stored in the storage unit 72 in step S74 in the log display area 102. . . . The shared information manager 67 of the client computer 3-1 displays the shared information received in step S74 in the shared-information window 111 displayed on the monitor 71 of the client computer 3-1. (Spec. 33:23-34:8). Accordingly, we find that the client computer programmed to perform the displaying of the chat log data and shared information in the respective log display area and shared-information window on a monitor is the disclosed structure for the first and second presenting means. Thus, the record shows which structures support the corresponding means-plus-function limitations of claim 1. We are therefore constrained by Appeal 2010-010626 Application 10/314,235 11 the record to conclude that the Examiner erred in rejecting claim 1, and claims 2, 4, 9-21, 24, and 26 under § 112, second paragraph. The Obviousness Rejections Appellant contends, regarding representative independent claim 2, that “nothing in the combination of Maurille and Milkey describes that first information, second information and link information received from one of the second information processing apparatuses is forwarded to the remaining second information processing apparatuses in the same group without solicitation from the remaining second information processing apparatuses” (App. Br. 15). Appellant also contends that “the combination of AIM, Takahashi and Halahmi does not describe or suggest that when the link information, the first information, and the second information are received from a second information processing apparatus, a visual link is inscribed between the first information and the second information using said link information . . . .” (App. Br. 16). Regarding the forwarding limitation, the Examiner relies on Halahmi for disclosing the second information and link information, and concludes that it would have been obvious to forward the second information and link information along with the first information as disclosed by Maurille (Ans. 15-16, 47-48). Appellant’s argument focuses on Maurille and Milkey, and does not address the Examiner’s reliance on Halahmi (see App. Br. 13-15). Appellant’s attempt to address Halahmi in the Reply Brief is not only too late, see Ex parte Borden, 93 USPQ2d, 1473 (BPAI 2010) (“Informative”), but is also unavailing. Appellant argues that “the information in Halahmi even in combination with Maurille cannot be asserted as being ‘forwarded’ without solicitation from the remaining second information processing Appeal 2010-010626 Application 10/314,235 12 apparatuses. A significant goal of the Halahmi reference is to not forward attachments to the end-user unless the end-user actually requests the attachment.” (Reply Br. 8). However, Appellant does not explain why it would not have been obvious to modify the combination of Maurille and Halahmi to forward the first information, link information, and second information without such a request in view of Milkey, which the Examiner finds discloses the “without solicitation” feature (Ans. 17). Accordingly, Appellant’s arguments fail to persuade us that the references would not have taught the forwarding limitation recited in claim 2. Regarding the inscribed visual link limitation, Appellant argues that Takahashi fails to disclose that a visual link is inscribed between “first information and second information using link information, where the first information includes chat text” (App. Br. 16). Appellant further argues that “the combination of the cited references fails to disclose this feature of the claimed invention because none of the cited references describes that a visual link is inscribed between the first information and the second information using said link information” (App. Br. 16-17). However, the Examiner relies on the collective teachings of the references to disclose this feature (see Ans. 17, 53-56). Appellant has not explained why one would not have been motivated to inscribe a visual link, as disclosed by Takahashi, between the first information and second information in the combination of Maurille and Halahmi using the link information of that combination. Thus, Appellant’s arguments fail to persuade us that the references would not have taught the inscribed visual link limitation recited in claim 2. We are therefore not persuaded that the Examiner erred in rejecting claim 2, and claims 1, 4, 7-24, and 26 not separately argued with specificity. Appeal 2010-010626 Application 10/314,235 13 CONCLUSION The Examiner erred in rejecting claims 1, 2, 4, 9-21, 24, and 26 under 35 U.S.C. § 112, second paragraph. The Examiner did not err in rejecting (1) claims 1, 2, 7, 8, 22, and 23 under 35 U.S.C. § 112, first paragraph; and (2) claims 1, 2, 4, 7-24, and 26 under 35 U.S.C. § 103(a). DECISION For the above reasons: We reverse the rejection of claims 1, 2, 4, 9-21, 24, and 26 under § 112, second paragraph. We affirm the rejections of (1) claims 1, 2, 7, 8, 22, and 23 under § 112, first paragraph; and (2) claims 1, 2, 4, 7-24, and 26 under § 103(a). Because we have affirmed at least one ground of rejection with respect to each claim on appeal, the Examiner’s decision is affirmed. See 37 C.F.R. § 41.50(a)(1). 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). See 37 C.F.R. § 41.50(f). AFFIRMED tkl Copy with citationCopy as parenthetical citation