12336900 (P.T.A.B. Nov. 6, 2014)

Ex Parte Rasmussen et al

Patent Trial and Appeal BoardNov 6, 2014

12336900 (P.T.A.B. Nov. 6, 2014)

UNITED STATES PATENT AND TRADEMARKOFFICE 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. 12/336,900 12/17/2008 Glenn D. Rasmussen CA920085190US1 2748 45725 7590 11/07/2014 Walder Intellectual Property Law PC 17304 Preston Road Suite 200 Dallas, TX 75252 EXAMINER YEN, SYLING ART UNIT PAPER NUMBER 2166 MAIL DATE DELIVERY MODE 11/07/2014 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 GLENN D. RASMUSSEN, DAVID DEWAR, and KATHERINE WALLACE ___________ Appeal 2012-004770 Application 12/336,900 Technology Center 2100 ____________ Before JEAN R. HOMERE, CARL W. WHITEHEAD JR., and CATHERINE SHIANG, Administrative Patent Judges. WHITEHEAD JR., Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellants are appealing the final rejection of claims 1, 2, 4–15, 17, 21, 22, 24–31, and 33–40 under 35 U.S.C. § 134(a). Claims 3, 16, 18–20, 23, and 32 have been canceled. Appeal Brief 2. We have jurisdiction under 35 U.S.C. § 6(b) (2012). We affirm-in-part. Introduction The invention is directed to a target drill-through metadata manager having a target drill-through metadata handler and a target specification processor. Specification ¶ 10. Appeal 2012-004770 Application 12/336,900 2 Representative Claim (disputed limitations emphasized) 1. A target drill-through metadata manager comprising: a computer; and a computer memory storing instructions, wherein the instructions, when executed by the computer, cause the computer to: define and manage, by a target drill-through metadata handler, target drill-through metadata in a metadata model for one or more model constructs that are drill-through target constructs; and process, by a target specification processor, a target report definition using the target drill-through metadata to locate a data item that refers to a drill-through target construct or part of the drill-through target construct, and automatically add one or more target filters associated with the drill- through target construct to a target report. Rejections on Appeal Claims 1, 2, 4–15, 17, and 33–40 stand rejected under 35 U.S.C. § 112, second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter, which Appellants regards as the invention. Answer 4. Claims 1, 4–7, 13, 15, 21, 24–26, 33, and 35–38 stand rejected under 35 U.S.C. § 102(b) as being anticipated by Carlson (US Patent Application Publication Number 2007/0233666 A1; published October 4, 2007). Answer 5–13. Claims 2, 14, 22, and 34 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Carlson and Colossi (US Patent Application Publication Number 2004/0215626 A1; published October 28, 2004). Answer 13–16. Appeal 2012-004770 Application 12/336,900 3 ANALYSIS Rather than reiterate the arguments of Appellants and the Examiner, we refer to the Appeal Brief (filed September 29, 2011), the Answer (mailed November 23, 2011) and the Reply Brief (filed January 17, 2012) for the respective details. We have considered in this Decision only those arguments Appellants actually raised in the Briefs. Any other arguments which Appellants could have made but chose not to make in the Briefs are deemed to be waived. See 37 C.F.R. § 41.37(c)(1)(vii). We adopt the Examiner’s findings in the Answer and the Final Office Action as our own, except as to those findings that we expressly overturn or set aside in the analysis as follows. 35 U.S.C. § 112, second paragraph rejection Appellants contend the 35 U.S.C. § 112, second paragraph rejection is improper because “the antecedent basis is clear, because the alternative language provides either a drill-through target construct or part of a drill- through target construct” and “No matter which alternative one chooses to interpret the claim, the claim only provides one antecedent basis for ‘the drill-through target construct.’” Appeal Brief 5–6. We find Appellants’ arguments to be persuasive and therefore, we do not sustain the Examiner’s indefiniteness rejection. 35 U.S.C. § 102 rejection Appellants argue Carlson does not specifically teach metadata having drill-through target constructs because Carlson’s ad hoc reports do not make the distinction between drill-through target constructs and other constructs. Id. at 7. Appellants further argue “in Carlson any data element can be a Appeal 2012-004770 Application 12/336,900 4 drill-through target; there is no need in Carlson to include a drill-through target construct in the metadata.” Id. Appellants cite to the Specification (paragraphs 19, 20, 22–24, and 26) for support of the claimed drill-through target constructs. Appeal Brief 3. The Specification states “[t]he target drill-through metadata handler 620 allows the modeler 60 to select a model construct, and mark it as a drill- through target construct,” wherein the marking may utilize a Boolean property or flag to indicate a drill-through target construct. Specification ¶ 26. The Specification does not provide a definition for the terminology “drill-through target construct” recited in claim 1 that distinguishes over Carlson’s disclosure of constructs. Consequently, Appellants’ argument that Carlson does not require a drill-through target construct because every element in Carlson can be a drill-through target is not persuasive because the Examiner’s broad interpretation of the claim is reasonable in light of the Specification’s disclosure or lack thereof.1 See Answer 5–7. Therefore, we sustain the Examiner’s anticipation rejection of independent claim 1 and independent claims 21 and 33 not separately argued, as well as, dependent claims 5, 6, 15, 24, 25, 36, and 37 also not separately argued for the reasons articulated above. Appellants argue in regard to dependent claims 4 and 35, the Examiner “provides no analysis or technical reasoning as to why this portion of Carlson [33–34] somehow teaches a metadata service that generates the 1 During examination of a patent application, a claim is given its broadest reasonable construction “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) (citations omitted) (internal quotation marks omitted). Appeal 2012-004770 Application 12/336,900 5 one or more target filters when no metadata service is even mentioned.” Appeal Brief 10. Appellants also argue in regard to dependent claims 7, 26, and 38; Carlson makes no mention of a metadata service. Id. at 10-11. We do not find Appellants’ arguments to be persuasive because the Examiner finds “the process described in Fig. 5 is part of the overall drill-through (e.g. drill down) process described in Carlson [0016]-[0018] & Fig. 1, where the rich metadata 100 clearly provide metadata services through the drill- through process.” Answer 25. Therefore, we sustain the Examiner’s rejection of dependent claims 4, 7, 26, 35, and 38 for the reasons articulated above. Appellants further argue the Examiner failed to “address claim 13; therefore, the Final Office Action does not establish a prima facie case of anticipation for claim 13.” Appeal Brief 11. We find Appellants’ argument to be persuasive and therefore, we do not sustain the Examiner’s anticipation rejection of claim 13. 35 U.S.C. § 103 rejection Appellants argue Carlson fails to teach the invention disclosed in dependent claims 2, 22, and 34. However, the Examiner did not rely upon the teachings of Carlson alone, the Examiner cited Colossi in conjunction with Carlson to establish a prima facie case of obviousness. See Answer 13–16. We do not find Appellants’ arguments to be persuasive.2 Therefore, we sustain the Examiner’s obviousness rejections of claims 2, 22, and 34. 2 “Non-obviousness cannot be established by attacking references individually where the rejection is based upon the teachings of a Footnote continued on the next page. Appeal 2012-004770 Application 12/336,900 6 Appellants argue the combination of Carlson and Colossi would not disclose the features disclosed in dependent claims 13 and 14. Appeal Brief 13. We find Appellants’ arguments to be persuasive because claim 14 is dependent upon claim 13 and claim 13 was not properly rejected in the anticipation rejection as indicated above. Therefore, we do not sustain the Examiner’s obviousness rejection of claim 14. DECISION The Examiner’s 35 U.S.C. § 112, second paragraph rejection of claims 1, 2, 4–15, 17, and 33–40 is reversed. The Examiner’s 35 U.S.C. § 102(b) rejection of claims 1, 4–7, 15, 21, 24–26, 33, and 35–38 is affirmed. The Examiner’s 35 U.S.C. § 102(b) rejection of claim 13 is reversed. The Examiner’s 35 U.S.C. § 103(a) rejection of claims 2, 22, and 34 is affirmed. The Examiner’s 35 U.S.C. § 103(a) rejection of claim 14 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)(1)(iv). See 37 C.F.R. § 41.50(f). AFFIRMED-IN-PART3 rwk combination of references.” In re Merck, 800 F.2d 1091, 1097 (Fed. Cir. 1986) (citing In re Keller, 642 F.2d 413, 425 (Fed. Cir. 1981)). 3 Judge Homere concurs in the result only, but not the analysis in support thereof.