Ex Parte Muller et al

Patent Trial and Appeal Board

Jul 15, 2013

11040395 (P.T.A.B. Jul. 15, 2013)

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.
11/040,395 01/21/2005 Michael Muller LOT920040125US1 (081) 3516
46321 7590 07/15/2013
CAREY, RODRIGUEZ, GREENBERG & O''''KEEFE, LLP
STEVEN M. GREENBERG
7900 Glades Road
SUITE 520
BOCA RATON, FL 33434
EXAMINER
LE, THU NGUYET T
ART UNIT PAPER NUMBER
2162
MAIL DATE DELIVERY MODE
07/15/2013 PAPER
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.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte MICHAEL MULLER and ANDREW L. SCHIRMER
1

____________________

Appeal 2010-011102
Application 11/040,395
Technology Center 2100
____________________

Before ELENI MANTIS MERCADER, DAVID M. KOHUT, and
LARRY J. HUME, Administrative Patent Judges.

HUME, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a) of the Final
Rejection of claims 8-13. Appellants have previously canceled claims 1-7
and 14-19. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1
The Real Party in Interest is IBM Corporation. (App. Br. 1.)
Appeal 2010-011102
Application 11/040,395

2
STATEMENT OF THE CASE
2

The Invention
Appellants’ invention relates to the field of collaborative computing
and more particularly to the publication of activity tasks in a collaborative
computing environment. Spec. ¶ [0001] (“Statement of the Technical
Field”).
Exemplary Claim
Claim 8 is an exemplary claim representing an aspect of the invention
which is reproduced below:
8. A method for publishing activity tasks in a
collaborative environment, the method comprising the steps of:
selecting one or more activity tasks in an activity
displayed in an activity list view of a unified activity manager,
the activity view comprising a visual rendering of properties for
an activity selected in the unified activity manager; and,
publishing on request of a publishing collaborator the
selected activity tasks for status viewing by other collaborators
in the collaborative environment.

2
Our decision refers to Appellants’ Appeal Brief (“App. Br.,” filed
Mar. 30, 2009); Reply Brief (“Reply Br.,” filed Jul. 13, 2010); Examiner’s
Answer (“Ans.,” mailed May 13, 2010); Final Office Action (“FOA,”
mailed Oct. 28, 2008); and the original Specification (“Spec.,” filed
Jan. 21, 2005).
Appeal 2010-011102
Application 11/040,395

3
Prior Art
The Examiner relies upon the following prior art in rejecting the
claims on appeal:
Boden US 5,930,512 Jul. 27, 1999
Rejection on Appeal
3

Claims 8-13 stand rejected under 35 U.S.C. § 102(b) as being
anticipated by Boden. Ans. 3.
ISSUE
Appellants argue (App. Br. 5-7; Reply Br. 2-6) that the Examiner’s
rejection of claim 8 under 35 U.S.C. § 102(b) as being anticipated by Boden
is in error. These contentions present us with the following issue:
Did the Examiner err in finding that Boden discloses all the
limitations of Appellants’ claimed method for publishing activity tasks in a
collaborative environment, as recited in claim 8?
ANALYSIS
We have reviewed the Examiner’s rejections in light of Appellants’
arguments that the Examiner has erred. We disagree with Appellants’
conclusions with respect to claim 8, and we adopt as our own (1) the
findings and reasons set forth by the Examiner in the action from which this

3
If further prosecution of this application should ensue, we leave it to the
Examiner to determine whether the subject matter of claim 8 encompasses
an unpatentable, mental process. We note that the claimed steps of
“selecting” and “publishing” can be performed in the human mind or by a
human using a pen and paper without computer assistance.
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4
appeal is taken and (2) the reasons and rebuttals set forth by the Examiner in
the Examiner’s Answer in response to Appellants’ Arguments. However,
we highlight and address specific findings and arguments regarding claim 8
for emphasis as follows.
Appellants contend that Boden is silent with respect to the claimed
“selecting one or more activity tasks in an activity . . . ,” where the activity is
“displayed in an activity list view of a unified activity manager . . . .” App.
Br. 5; Reply Br. 2.
In response, the Examiner finds, and we agree, that Boden teaches the
disputed limitations. In particular, we agree with the Examiner that Boden’s
teaching of the user clicking on button 440 to select an activity (equated by
the Examiner to “activity tasks”) in a pull down display in the Workflow
Process Model (equated by the Examiner to the “unified activity manager”)
discloses the recited “selecting” limitation. Ans. 5. Additionally, Boden’s
teaching of a summary display (equated by the Examiner to “visual
rendering of properties”) that includes a number of activities, connectors,
data organizations, and people involved with the selected process, e.g. New
Employee process, (equated by the Examiner to “activity selected”) in the
Workflow Process Model, teaches the recited “publishing” limitation. Ans.
6 (citing Boden Figs. 11, 12; and col. 24:14-32); and see Ans. 5 (“Term
equivalent”).
Further, Appellants contend “Boden does not address the publication
of only selected tasks for an activity for status viewing by other
collaborators in a collaborative environment.” App. Br. 6.
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Application 11/040,395

5
The Examiner finds, and we agree, that Boden’s disclosure of
selective authorization of various staff members to control, execute, and
view the process on various work lists of persons or groups assigned to
perform a particular process meets the additional limitation in dispute, i.e.,
“publishing on request of a publishing collaborator the selected activity tasks
for status viewing by other collaborators in the collaborative environment.”
Ans. 7-10 (citing Boden Figs. 4, 5; col. 10:1-20, and col. 12:51-56). We find
that the selective authorization results in “publishing” the process so that
other collaborators may view the status of the process.
Appellants further contend that the Examiner’s claim construction of
“activity” is erroneous because Boden’s workflow process is not equivalent
to the activities of Appellants’ invention in light of Appellants’ statement in
the Specification that “[a]n activity, unlike a typical project or workflow,
refers to objects, actions, and persons in the real world, and provides a
computerized representation of selected aspects of those objects, actions, and
persons.” Reply Br. 3 (citing Spec. ¶ [0009]; emphasis omitted).
We disagree with Appellants’ contentions in this regard because we
find that Boden’s processes also refer to “objects, actions, and persons in the
real world, and [which] provides a computerized representation of selected
aspects of those objects, actions, and persons.” For example, Boden’s
Figure 5 refers to “[a] person[] in the real world,” (e.g., see “BROWN
ARTHUR ALBERT” in section 302 “ENTER INFORMATION FOR
PROPOSED INSURED”), in addition to an “action in the real world” (e.g.,
see “DATABASE SEARCH FOR CLIENT” in section 412 “WORK
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LIST”). Boden Fig. 5. Thus, we find that Boden’s disclosure also meets the
narrow definition argued by Appellants based on their Specification.
Finally, Appellants contend that the Examiner has not properly
construed the claim term “properties for an activity selected,” because
Appellants’ Specification provides a definition of this term which includes,
inter alia, a detailed listing of collaborators and collaborator roles. Reply
Br. 4 (citing Spec. ¶ [0024]).
We note that during examination, a claim must be given its broadest
reasonable interpretation consistent with the Specification, as would be
interpreted by one of ordinary skill in the art. Since Applicants have the
opportunity to amend claims during prosecution, giving a claim its broadest
reasonable interpretation will reduce the possibility that the claim, once
issued, will be interpreted more broadly than is justified. In re Yamamoto,
740 F.2d 1569, 1571 (Fed. Cir. 1984); In re Zletz, 893 F.2d 319, 321 (Fed.
Cir. 1989) (“During patent examination the pending claims must be
interpreted as broadly as their terms reasonably allow.”).
We further note that although claims are interpreted in light of the
specification, limitations from the specification are not read into the claims.
In re Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993). On the record
before us, the Specification paragraph cited by Appellants provides multiple
instances of permissive language, e.g., “[t]he activity view 120 further can
include a detailed listing of the properties . . . .” Spec. ¶ [0024] (emphasis
added). The claim language does not require or even mention the detailed
properties associated with a selected activity, such that Appellants’
arguments are not commensurate with the scope of the claim.
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Accordingly, Appellants have not provided sufficient evidence or
argument to persuade us of any reversible error in the Examiner’s
characterization of the cited art and related claim construction. Therefore,
we sustain the Examiner’s anticipation rejection of independent claim 8.
Claims 9-13 fall with claim 8 (App. Br. 3), so that we similarly sustain the
Examiner’s anticipation rejection of these claims under 35 U.S.C. § 102(b).
CONCLUSION
The Examiner did not err in rejecting claims 8-13 as being anticipated
by Boden, and the rejection is sustained.
DECISION
The decision of the Examiner to reject claims 8-13 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)(1)(iv).
AFFIRMED

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