Ex Parte Muller et al

Board of Patent Appeals and Interferences

Aug 30, 2012

11336180 (B.P.A.I. Aug. 30, 2012)

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.
11/336,180 01/20/2006 Michael Muller CAM20060002US1
(17321-130
1114
46321 7590 08/31/2012
CAREY, RODRIGUEZ, GREENBERG & O''KEEFE, LLP
STEVEN M. GREENBERG
950 PENINSULA CORPORATE CIRCLE
SUITE 2022
BOCA RATON, FL 33487
EXAMINER
LIAO, JASON G
ART UNIT PAPER NUMBER
2156
MAIL DATE DELIVERY MODE
08/31/2012 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte MICHAEL MULLER, ANDREW L. SCHIRMER,
PAUL B. MOODY, and MARTIN T. MOORE
____________

Appeal 2010-006001
Application 11/336,180
Technology Center 2100
____________

Before KEVIN F. TURNER, THOMAS L. GIANNETTI, and JENNIFER S.
BISK, Administrative Patent Judges.

GIANNETTI, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF THE CASE

Appellants appeal under 35 U.S.C. § 134 from a rejection of all
pending claims, 1-7, 9-13, and 15-18. We have jurisdiction under 35 U.S.C.
§ 6(b).
We affirm.

The Invention
As summarized in Appellants’ Brief:

Appellants have invented a method, system and computer program
product for end-user based processing of different attributes for a
commonly shared artifact in a collaborative environment. In
Appellants’ invention, shared artifacts within a collaborative
environment each can be assigned different attributes selected based
upon the identity of an end user accessing the shared artifact. In this
regard, the attributes can range from the name of the shared artifact to
the type of shared artifact. Of note, a decorator can be retrieved and
applied for each of the attributes. Each decorator can indicate that a
nickname has been applied to the artifact in lieu of an originally
assigned name for the artifact. Thus, in accordance with Appellants’
invention, the name of a shared artifact in a collaborative environment
can vary from end user to end user, as can the type of shared artifact.

App. Br. 2 (emphasis added).

Claim 7 is exemplary:

7. A method for end-user based processing of different attributes for a
commonly shared artifact in a collaborative environment, said method
comprising:

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assigning different attributes to a commonly shared artifact in a
collaborative environment, each of the different attributes
corresponding to a different end user;

assigning different attributes to a commonly shared artifact in a
collaborative environment, comprises [sic] assigning a different
nickname to a commonly shared artifact in a collaborative
environment, each different nickname corresponding to a different
end user; and,

rendering a view of the commonly shared artifact for each different
end user utilizing an assigned different attribute corresponding to the
different end user and further rendering a decorator in the view for
each of the different attributes, each decorator indicating that a
nickname has been applied to a corresponding one of the different
artifacts in lieu of an originally assigned name for the corresponding
one of the different artifacts.

Claims Appendix (App. Br. 15; emphasis added).

Rejections on Appeal

1. Claims 1-7, 9, 11-13, 15, 17, and 18 are rejected under 35
U.S.C. § 102(b) as anticipated by Dourish, “Extending Document
Management Systems with User-Specific Active Products,” ACM
TRANSACTIONS ON INFORMATION SYSTEMS, Vol. 18, No.2, pp.140-70 (April
2000).
2. Claims 10 and 16 are rejected under 35 U.S.C. § 103(a) as obvious
over Dourish and Lamping, “Building Bridges: Customization and Mutual
Intelligibility in Shared Category Management,” PROCEEDINGS OF THE
INTERNATIONAL ACM SIGGROUP CONF. ON SUPPORTING GROUP WORK,
pp.11-20 (November 1999).
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3. Claims 13 and 15-18 are rejected under 35 U.S.C. § 101 as directed
to non-statutory subject matter.

Issues

1. Did the Examiner err in construing the term “decorator” in rejecting
the claims over Dourish?

2. Does the Examiner’s interpretation of “a computer-readable
medium” in claim 13 support the non-statutory subject matter rejection?

ANALYSIS

Anticipation Rejection of Claims 1-7, 9, 11-13, 15, 17, and 18

These claims are rejected under 35 U.S.C. § 102(b) as anticipated by
Dourish. Appellants elect to have the anticipation rejection of dependent
claims 2-6, 9-12, and 15-18 stand or fall together with independent claims 1,
7, and 13, respectively. App. Br. 9.
Dourish describes a document storage and management system that is
based on document properties rather than document locations. Dourish 142.
Document properties are the features of a document that are meaningful to
users rather than to the system. Id. Documents can have any number of
properties, reflecting the different features that might be relevant to users at
different times and in different contexts. Id. To emphasize the difference
between using document properties and the more traditional approach of
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using document locations, Dourish calls the system “placeless documents.”
Id. Some examples of document properties are indications of the relation of
the document to a particular user’s activity, such as “topic = budget.” Id. at
144. In that sense, properties attached to documents play the same role as
filenames. Id.
Dourish explains that most documents that are of any interest have
more readers than writers. Dourish 148. Thus the concept of placeless
documents supports two types of documents (referred to as “document
objects”). Id. Those types are base documents, containing content, and
document references, which contain a pointer to a base document. See
Dourish Fig. 1, reproduced below:

Both base documents and document references have a set of
properties, which are said to be “attached” to the document. Dourish calls
the properties attached to base documents “universal properties,” while those
attached to document references are “personal properties.” Dourish 149.
Features that are universally true of the document, such as its format and
length, are universal properties and are attached to the base document held
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by Fiona as shown in Fig. 1. They can be seen by anyone holding a
reference to the document such as Jonathan, assuming access control allows
it. On the other hand, Jonathan’s annotations to the document are essentially
personal. They are properties attached to Jonathan’s document reference
and will not affect the view of other people holding references to Fiona’s
document. Id.
The Examiner finds each element of the Appellants’ claims 1, 7, and
13 present in Dourish. Ans. 4-11. Appellants challenge this finding,
asserting the absence in Dourish of the “decorator” element recited in all
claims. App. Br. 10. The meaning of the term “decorator” is thus central to
this appeal.
The Examiner finds the “decorator” element in Dourish’s description
of properties attached to document references and base documents. Ans. 5.
Appellants contend that the Examiner errs in construing the term “decorator”
as reading on Dourish. Appellants construe “decorator” as requiring a
“visual element decorating another visual element.” App. Br. 11. They find
support for this “ordinary meaning” of the term in a “simple” Google search
(without revealing the results). Id. Additionally, they point to the one
reference in their Specification to a “decorator icon.” Id. The Specification
states that such an icon “can be rendered along with the activity in a view for
the end user to indicate that a nickname has been assigned to the activity in
lieu of the activity of the originally assigned name for the activity.” App.
Br. 11, quoting Spec. ¶ [0022].1
The Examiner responds that a decorator is not necessarily a visual
element. Ans. 15. According to the Examiner, a “decorator” is an element

1 Incorrectly cited as ¶ [0024].
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that “decorates” another element either visually or in any other means. Id.
The Examiner points out that although Appellants’ Specification refers in
one place to a decorator icon, the claims themselves recite “decorator.” The
Examiner determines that while decorator icon “may imply” a visual
element, recitation of “a decorator” does not. Id. Thus the Examiner finds
that Dourish’s teaching of a property (e.g., “topic = budget”) attached to a
document reference meets the claim limitation calling for a decorator. Id.
We are not persuaded by Appellants of any error in either the
Examiner’s broad but reasonable construction of “decorator” or the
Examiner’s finding that this element is present in Dourish. To begin with,
the only support Appellants provide for their assertion that the “ordinary
meaning” of a decorator requires that it be visual is reference to a Google
search. See Reply 5. But the search details and results were not made of
record, even after the Examiner challenged the adequacy of Appellants’
proofs: “Appellant fails to support this suggestion with any evidence.” Ans.
15.
Secondly, while Appellants refer in their brief to “decorator icon” as
the Examiner notes the claims themselves recite “decorator.” The term
“decorator icon” appears only once in the Specification. See ¶ [0022]. The
term “decorator” appears several times, viz., ¶¶ [0017], [0021], and Figs. 1
and 3. Nowhere does the Specification equate the two terms. The use of
different terms by Appellants suggests different meanings for decorator and
decorator icon. See, e.g., CAE Screenplates Inc. v. Heinrich Fiedler GmbH
& Co. KG, 224 F.3d 1308, 1317 (Fed. Cir. 2000) (presumption that use of
different terms in claims connotes different meanings). The distinction
between the terms is further supported by Appellants’ Fig. 1, where
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“decorators” (160A, B, and C) are shown separate from “views” seen by the
users (150A, B, and C).
In further confirmation, the one place in Appellants’ Specification
where the term “decorator icon” appears (¶ [0022]) refers to neither of the
two figures showing decorators. It simply states: “Once a nickname has
been applied by an end user, a decorator icon can be rendered along with the
activity in a view for the end user to indicate that a nickname has been
assigned to the activity in lieu of the originally assigned name for the
activity.”
Appellants further argue that Dourish does not teach “critical” aspects
of claims 1, 7, and 13, namely, that the decorator must indicate that a
nickname has been applied to an artifact “in lieu of” the originally assigned
name. App. Br. 12. We disagree. The Examiner’s finding that this
recitation is met is more than adequately supported in Dourish’s description
of personal properties (e.g., “topic = budget”) that “will not affect the view
of other people holding references” to a base document. Ans. 5 (citing
Dourish 144, 149).
In summary, we are not persuaded of error in the Examiner’s
construction of “decorator.” We further conclude that the Examiner’s
finding of anticipation of these claims by Dourish is supported by the record.

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Obviousness Rejection of Claims10 and 16

Appellants’ position on these claims is based on their assertion of a
“flawed” claim construction of decorator discussed supra in connection with
anticipation. App.Br. 13. No additional arguments are presented. Claims
10 and 16 therefore stand or fall with the anticipation rejections of claims 7
and 13 from which they depend. For the reasons stated above we are not
persuaded of any error in the Examiner’s construction of “decorator” or in
the obviousness rejection of these claims.

Statutory Subject Matter Rejection of Claims 13 and 15-18

Initially the Examiner contended that these claims were directed to
“software per se” and thus not patentable. Final Rej. 2-3. This basis for
rejection is no longer being advanced. Ans. 12-13. The Examiner now
focuses on the words “propagate” and “propagation medium” in the
definition of “computer-readable medium” in the Specification. Ans. 3-4.
According to the Examiner this refers to a propagating signal which is not
patentable subject matter under In re Nuijten, 500 F.3d 1346 (Fed Cir 2007).
Ans. 14.
Appellants contend that this is a new ground of rejection. Reply 2.
Appellants are incorrect. The Final Rejection states that “[p]ropagation
medium do not constitute a statutory subject matter within the meaning of 35
U.S.C. 101.” Final Rej. 2. On the merits Appellants contend that a storage
medium is an apparatus and not a signal. Reply 4. We agree. As used in
the Specification the term “propagation medium” does not refer to an
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electrical signal; it refers an apparatus. See Spec. ¶ [0026]. We therefore
reverse the Examiner’s rejection of claims 13 and 15-18 under 35 U.S.C. §
101.

CONCLUSION

The Examiner’s rejection under 35 U.S.C. § 102(b) of claims 1-7, 9,
11-13, 15, 17, and 18 and rejection under 35 U.S.C. § 103(a) of claims 10
and 16 are affirmed.
The Examiner’s rejection under 35 U.S.C. § 101 of claims 13 and 15-
18 is reversed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R § 1.136(a).

AFFIRMED

KMF