Ex Parte Paul et al

Patent Trial and Appeal Board

Feb 24, 2017

12012064 (P.T.A.B. Feb. 24, 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.
12/012,064 01/31/2008 Thanabalan Thavittupitchai Paul PU070294 1776
24336 7590 02/28/2017
TUTUNJIAN & BITETTO, P.C.
401 Broadhollow Road, Suite 402
Melville, NY 11747
EXAMINER
OSMAN, RAMY M
ART UNIT PAPER NUMBER
2457
NOTIFICATION DATE DELIVERY MODE
02/28/2017 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):
patents@tb-iplaw.com
sandy@tb-iplaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte THANABALAN THAVITTUPITCHAI PAUL,
JOHN ALAN GERVAIS, and XIAO WEI XU
Appeal 2016-005548
Application 12/012,0641
Technology Center 2400
Before JOHN A. JEFFERY, CARL L. SILVERMAN, and
JOHN D. HAMANN, Administrative Patent Judges.
SILVERMAN, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
Final Rejection of claims 1, 5, 7, 9-15, 17—25, and 27—32, which are the
only claims pending. We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.
1 The real party in interest is identified as THOMSON LICENSING. App.
Br. 3.
Appeal 2016-005548
Application 12/012,064
STATEMENT OF THE CASE
The invention relates to a boot process. Abstract; Spec. H 13, 20;
Fig. 2. Claim 1, reproduced below, is exemplary of the subject matter on
appeal (disputed limitations emphasized):
1. A system, comprising:
an acquisition component that operates within a boot
process and acquires status information in connection with the
boot process from a plurality of distinct boot components in
accordance with acquisition preferences set by an end-user that
define which boot components to acquire status information
from; and
a reporting component that operates within the boot
process and uses a processor to dynamically relay the status
information acquired from the plurality of distinct boot
components in connection with the boot process as a sequence
of digits on a graphical user interface, each of said digits
corresponding to the status information of a respective boot
component.
App. Br. 21 (Claims Appendix).
THE REJECTIONS
Claims 1, 4—7, 10—15, 17—19, 21—23, 25, and 27—30, and 32* 2 stand
rejected under pre-AIA 35 U.S.C. § 103(a) as being unpatentable over
Rothman et al. (US 2004/0267708 Al, pub. Dec. 30, 2004) (“Rothman”) in
view of Prus et al. (US 2005/0144651 Al, pub. June 30, 2005) (“Prus”).
2 Although the Examiner includes claim 31 in the statement of this rejection
in the Final Rejection, the Examiner nonetheless omits that claim in the
corresponding discussion, as well as the restatement of the rejection on page
2 of the Examiner’s Answer. See Final. Act. 4—5. Accordingly, we present
the correct claim listing here for clarity, and treat the Examiner’s error as
harmless.
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Appeal 2016-005548
Application 12/012,064
Final Act. 4—5. As stated by the Examiner, claims 14, 15, 17—23, 25, and 28
correspond to claims 1, 4—7, 9-13, 27, 29, 30, and 32 and are slight
variations thereof and, therefore, claims 14, 15, 17—23, 25, and 28 stand
rejected based upon the same rationale as given for claims 1, 4—7, 9-13, 27,
29, 30, and 32. Final Act. 6.
Claims 9, 20, and 31 stand rejected under pre-AIA 35 U.S.C. § 103(a)
as being unpatentable over Rothman, Prus, and Tabi (US 2005/0015601 Al,
pub. Jan. 20, 2005). Final Act. 6.
ANALYSIS
Appellants argue, inter alia, the Examiner errs in finding Rothman
and Prus teach the claim 1 limitation as a sequence of digits on a graphical
user interface, each of said digits corresponding to the status information of
a respective boot component. App. Br. 13—15. According to Appellants,
Prus teaches an arbitrary error code which does not teach a “correspondence
between each digit and a respective boot component.” Id. at 14. In
particular, Appellants argue:
“The claims only require that each digit corresponds to a boot
component.” The Examiner is clearly incorrect and entirely
neglects to address the fact that the claims recite that each digit
corresponds to the status information of a respective boot
component. In other words, each digit corresponds with one
specific boot component. This is the plain meaning of the term
"respective" and is described in detail in paragraph 20 of the
present specification.
Id. at 14.
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Appeal 2016-005548
Application 12/012,064
The Examiner states that the claims are given their broadest reasonable
interpretation and:
In this case for example, an error code that is two or more digits
in length, and that relays status/error information of a single boot
component is seen to satisfy the broadly worded claims. As is
old and well known in the art of error codes, an error code of
"01" can mean that one component has malfunctioned; and an
error code of "02" can mean that a different component has
malfunctioned; etc. Therefore, each of the digits in a code are
seen as part of the code that refers to a component.
Ans. 7.
The Examiner finds Appellants assert a narrow interpretation of the
claim to justify the allegation that each single digit corresponds to a boot
component different from the component that the other digits correspond to
and the features of the Specification are not read into the claims. Id. at 8.
In Reply, Appellants argue the Examiner does not follow the actual
language in the claim. Reply Br. 6—7. According to Appellants:
[T]he Examiner conjures these example error codes out of
nothing, providing no support whatsoever from the art. In the
second place, the Examiner's own example fails to support the
Examiner's position. The Examiner asserts that, "Therefore, each
of the digits in a code are seen as part of the code that refers to a
component." (emphasis added.) Clearly then, it is not each digit
that corresponds to a respective component in Prus, but instead
it is the entire sequence that reflects the state of the component
in question
The Examiner has made no effort to address the explicitly recited
relationship between each digit in a sequence and the respective
boot components.
Id. at 7.
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Appeal 2016-005548
Application 12/012,064
We are persuaded by Appellants’ arguments. The disputed limitation
plainly recites “<2 sequence of digits . . . each of said digits corresponding to
the status information of a respective boot component.'1'’ The limitation
requires a sequence of digits (more than one digit) with each digit (of the
sequence of digits) corresponding to the status information of a respective
boot component. Assuming arguendo there is basis for the Examiner
proffered error codes 01 and 02, each of these error codes constitutes a
sequence, namely 01 and 02. However, each of the digits in the sequence
does not correspond to the status information of a respective boot
component. For example, the digit 0 in the sequences is not shown as
corresponding to a respective boot component, or any boot component. The
Examiner’s finding that “each of the digits in a code are seen as part of the
code that refers to a component” does not constitute each of the digits
corresponding to the status information.
Our discussion supra is guided by the plain and ordinary meaning of
the claim as would be understood by one or ordinary skill in the art and
consistent with the broadest reasonable interpretation. Claim terms in a
patent application are given the broadest reasonable interpretation consistent
with the specification, as understood by one of ordinary skill in the art.
In re Crish, 393 F.3d 1253, 1256 (Fed. Cir. 2004).
In view of the above, we do not sustain the rejection of claim 1, and
independent claims 14, 25, and 27—29 which recite the disputed limitation.
For similar reasons, and because the cited secondary reference does not cure
the foregoing deficiencies, we also do not sustain the rejection of dependent
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Appeal 2016-005548
Application 12/012,064
claims 5, 7, 9—13, 15, 17—24,3 and 30—32. Cf. In reFritch, 972 F.2d 1260,
1266 (Fed. Cir. 1992) (“[Dependent claims are nonobvious if the
independent claims from which they depend are nonobvious . . . .”).
Because our decision with regard to the disputed limitation is dispositive of
the rejection of all pending claims, we do not address additional arguments
raised by Appellants.4
DECISION
We reverse the Examiner’s decision rejecting claims 1, 5, 7, 9-15,
17-25, and 27-32.
REVERSED
3 We agree with Appellants that there is no articulated basis in the record for
rejecting claim 24, which depends from independent claim 14 discussed
supra. See App. Br. 5; Reply Br. 5; Office Action Summary 1. Therefore,
we reverse this rejection based on35U.S.C. § 132.
4 We note in passing that the system claims are replete with active method
steps (e.g., “acquisition component that operates . . . and acquires . . . ,”
“reporting component that operates . . . and uses . . . ,” in claim 1, “reporting
component obtains . . .” in claim 5, etc.) which raises the question whether
these claims are definite under 112(b). Notably, apparatus claims reciting
active method steps have been held indefinite under § 112(b), for such
claims raise the question of whether they are infringed by devices that are
merely capable of performing the recited function, or that they must actually
perform that function. See IP XL Holdings, L.L.C. v. Amazon.com, Inc., 430
F.3d 1377, 1384 (Fed. Cir. 2005); see also Rembrandt Data Technologies,
LPv. AOL, LLC, 641 F.3d 1331, 1339 (Fed. Cir. 2011) (data transmitting
device held indefinite for reciting transmitting method step). We, therefore,
leave this question to the Examiner to consider after this opinion.
6