Ex Parte Scheerer

Patent Trial and Appeal Board

Jun 24, 2013

10942149 (P.T.A.B. Jun. 24, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte OLIVER SCHEERER
____________

Appeal 2011-001882
Application 10/942,149
Technology Center 2100
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Before JEAN R. HOMERE, KRISTEN L. DROESCH, and
MIRIAM L. QUINN, Administrative Patent Judges.

QUINN, Administrative Patent Judge.

DECISION ON APPEAL

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Appellant appeals under 35 U.S.C. § 134(a) (2002) from a final
rejection of claims 1-3, 5-20, and 22. Claims 4 and 21 have been cancelled.
We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

STATEMENT OF THE CASE
The invention relates to data processing and data objects. Spec. 7.1 A
calling application uses information that specifies a group of one or more
instances of one or more business objects, to address the group, on which the
application can perform one or more functions. Spec. Abstract. Details of
the appealed subject matter, with disputed claim language emphasized, are
recited in illustrative representative claim 9, reproduced below from the
Claims Appendix of the Appeal Brief:
9. A computer implemented method comprising:
receiving information specifying an instance of a query
object, the instance of the query object including an interface
having at least a service, the service to provide grouping
information identifying a characteristic according to which one
or more instances of one or more data objects are to be grouped;
receiving from a calling application, a request for
information identifying business objects, the calling application
having one or more functions for implementing one or more
business processes;
sending the request to the service;

1 References to Appellant’s Specification (“Spec.”) are directed to the
Specification filed on September 15, 2004, unless otherwise noted.
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receiving, from the service, the grouping information; and
providing the grouping information to the calling
application, the grouping information enabling the calling
application to retrieve one or more instances of business objects
associated with the characteristic.

As evidence of unpatentability of the claimed subject matter, the
Examiner relies on the following references at pages 3 to 23 of the Answer:
Chang US 6,263,342 B1 Jul. 17, 2001
Cohen US 6,286,028 B1 Sept. 4, 2001
Frey US 6,567,818 B1 May 20, 2003
Steven Haines and Stephen Potts, JAVATM 2 PRIMER PLUS (2003), available
at http://proquest.safaribooksonline.com/0672324156 (follow Chapter 11,
Section: “Collection Classes,” Subsection: “Vector,” ¶¶1-2) [hereinafter
“Haines”].

Chuck Cavaness, PROGRAMMING JAKARTA STRUTS (2002), available at
http://proquest.safaribooksonline.com/0596003285 (follow chapters 6.2, 6.4
and 6.5) [hereinafter “Cavaness”].
The Examiner provides the following grounds of rejection, of which
Appellant seeks review:
(1) Claims 9, 11, 12, 14, 15, and 17 stand rejected under 35 U.S.C.
§ 102(b) as being anticipated by Chang (Ans. 4-8);
(2) Claims 1, 3, 5, 8, and 22 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Chang and Cohen (Ans. 8-14);
(3) Claims 2, 10, and 16 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Chang, Cohen, and Haines (Ans. 15-17);
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(4) Claims 6, 7, 13, and 18 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Chang, Cohen, and Cavaness (Ans. 18-20);
(5) Claim 19 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Chang, Cohen, and Frey (Ans. 20-22); and
(6) Claim 20 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Chang, Cohen, Frey, and Haines (Ans. 23).
ANALYSIS
We have reviewed the Examiner’s rejections in light of Appellant’s
contentions. Further, we have reviewed the Examiner’s response to
Appellant’s arguments. Appellant did not argue separate patentability of
independent claims 15, 19, and 22 and dependent claims 2-8, 10-14, 16-18,
and 20. Therefore, except for our ultimate decision, these claims are not
discussed further herein.
Appellant raises two dispositive issues on appeal as discussed further
below.
ISSUE 1: REJECTION UNDER § 102(b)
Appellant contends that the Examiner erred in rejecting independent
claim 9 under 35 U.S.C. § 102(b) because the “evaluate” method disclosed
in Chang does not meet the limitation of “a service, the service to provide
grouping information identifying a characteristic according to which one or
more instances of one or more data objects are to be grouped.” App. Br. 12-
15. Specifically, Appellant argues that Chang’s “evaluate” method does not
meet the limitation of a “service to provide grouping information.” App. Br.
13. Appellant also argues that by pointing to the “connect” method
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disclosed in Chang, the Examiner has not shown anticipation of the claim
because the rejection relies on the “evaluate” method, not the “connect”
method, meeting the claimed “service” limitation. App. Br. 13-14.
Therefore, even though the Examiner points to the “connect” method to
reject claim 9, the features of that method are, according to Appellant, not
relevant to the requirement that the service provide “grouping information.”
App. Br. 13.
The issue before us is whether the Examiner erred in finding that
Chang describes the limitation of a “service to provide grouping information
identifying a characteristic according to which one or more instances of one
or more data objects are to be grouped,” as recited in claim 9. We are not
persuaded that the Examiner so erred.
Appellant’s arguments fail to persuade us of error for two reasons.
First, while the Examiner relies on Chang’s “evaluate” method for aspects of
the claim directed at the “service,” the Examiner also relies on the “connect”
method in Chang as describing the limitation of “the instance of the query
object including an interface having at least a service, the service to provide
grouping information.” See Ans. 4, 25 (citing Chang, col. 36, ll. 56-67 and
col. 37, ll. 1-25, which describe the “connect” method in the context of a
datastore object). The portions of Chang the Examiner cites clearly refer to
“authentication grouping” and “library access groups,” at a minimum.
Chang, col. 36, l. 66; col. 37, l. 18-20. Appellant’s arguments do not
sufficiently address the Examiner’s finding that the “connect” method
teaches the “service to provide grouping information” to show error therein.
We find no limitation in claim 9 that would lead us to interpret the term “a
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service” to be limited to one method, and not both (or more) of the methods
disclosed in Chang. Indeed, because claim 9 is an open ended claim, the
article “a,” preceding the term “service,” is interpreted in patent parlance to
mean “one or more” absent a contrary definition by Appellant. See Baldwin
Graphic Sys., Inc. v. Siebert, Inc., 512 F.3d 1338, 1342 (Fed. Cir. 2008)
(holding that “an indefinite article ‘a’ or ‘an’ in patent parlance carries the
meaning of ‘one or more’ in open ended claims containing the transitional
phrase comprising” unless a patentee has “‘evidence[d] a clear intent’ to
limit ‘a’ or ‘an’ to ‘one’” (quoting KCJ Corp. v. Kinetic Concepts, Inc., 223
F.3d 1351, 1356 (Fed. Cir. 2000)).
Furthermore, we note Chang discloses that the “evaluate” method and
the “connect” method are included in the datastore object interface. Chang,
col. 30 (describing the interface to the datastore object as including various
methods, such as “connect” and “evaluate”). As part of that interface, the
“connect” method allows the user to specify one or more library access
groups to connect to during the search service. Chang, col. 36, ll. 61-66, col.
37, ll. 13-23. We also note that the datastore object (the claimed query
object) is also used in the Federated Collection embodiment (see Chang, col.
41 (describing the interface “datastorefederated.java”), which the Examiner
also relies on as disclosing “collections” that include specific attributes
according to which one or more instances of one or more data objects are to
be grouped (Ans. 4, 28). Therefore, the “connect” method being the claimed
“service,” describes the limitations of:
a) “providing grouping information” by disclosing that it provides the
library access groups to connect to during the search; and
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b) “identifying a characteristic according to which one or more instances
of one or more objects are to be grouped” by disclosing that the
“collection” results are grouped to preserve the sub-grouping
information from each datastore to allow accessing results by datastore
(or digital library) (Chang, col. 13, ll. 35-38 (cited in Answer at 4)) and
Abstract (cited in Answer at 28)).
As such, we find that the “connect” method is relevant to the disputed
limitation, contrary to Appellant’s argument. Therefore, Appellant’s
arguments – directed to the “evaluate” method and not addressing the
Examiner’s findings concerning the “connect” method – are unpersuasive.
Second, in the Reply, Appellant addresses for the first time the
passages in Chang the Examiner cites as describing the “connect” method
and thereby disclosing the “grouping information.” The passage in Chang
that Appellant addresses in the Reply is the same passage cited in the Final
Rejection (at page 4) and is identical to the findings in the Examiner’s
Answer. Therefore, the “connect” method argument should have been
raised in the Appeal Brief. Appellant identifies no reason why the argument
was not raised in the Appeal Brief, and, therefore, we consider that argument
(Reply 3-5) waived. “Any bases for asserting error, whether factual or legal,
that are not raised in the principal brief are waived.” Ex parte Borden, 93
USPQ2d 1473, 1474 (BPAI 2010) (informative). See also Optivus Tech.,
Inc. v. Ion Beam Appl’ns. S.A., 469 F.3d 978, 989 (Fed. Cir. 2006) (“[A]n
issue not raised by an appellant in its opening brief . . . is waived.”)
(citations and quotation marks omitted).
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Because Appellant has not shown sufficient evidence to persuade us
of error in the Examiner’s findings that the “connect” method meets the
“service” limitation in addition to the “evaluate” method, we sustain the
Examiner’s rejection of independent claim 9 as being anticipated by Chang.
ISSUE 2: REJECTION UNDER § 103(a)
Appellant next contends that the Examiner erred in rejecting
independent claim 1 as being obvious over Chang and Cohen because the
“evaluate” method of Chang does not teach “a service that provides . . .
grouping information . . . identifying a characteristic according to which one
or more instances of one or more data objects are to be grouped.” App. Br.
16. Appellant argues that “the ‘evaluate’ method in Chang does not include
any criteria or logic for grouping one or more instances of one or more data
objects . . . .” Id. Appellant’s argument is not commensurate in scope with
the claim limitations since claim 1 does not recite criteria or logic for
grouping the data objects. To the extent that Appellant argues that the prior
art fails to teach or suggest the “identifying a characteristic” aspect of the
“service” limitation, we are not persuaded that the Examiner so erred for the
same reasons as stated supra with respect to claim 9. The “service”
limitation of claim 1 is commensurate with the scope of the “service”
limitation of claim 9. Therefore, our analysis concerning claim 9 is
incorporated herein in its entirety. Furthermore, to the extent Appellant
argues that the Examiner’s rejection of claim 1 is not based on the “connect”
method, but only the “evaluate” method, we note that the Examiner relies on
the “connect” method in Chang as disclosing the claimed “grouping
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information” and as being relevant to the claim language. Ans. 32.
Appellant did not rebut, in the Reply, the Examiner’s finding of the
applicability of the “connect” method to independent claim 1.
For the foregoing reasons, Appellant has not shown sufficient
evidence to persuade us of error in the Examiner’s findings that the
“connect” method teaches the “service” limitation in addition to the
“evaluate” method. Accordingly, we sustain the Examiner’s rejection of
independent claim 1 as being obvious over Chang and Cohen.

CONCLUSION
We conclude that Appellant has not shown sufficient evidence of error
in the Examiner’s findings and conclusions that independent claim 9 is
anticipated by Chang, and that the subject matter recited in independent
claim 1 is obvious over Chang and Cohen. Therefore, we sustain the
rejection of claim 9 under 35 U.S.C. § 102(b). We group independent claim
15 and dependent claims 10-14 and 16-18 with representative claim 9. See
37 C.F.R. § 41.37(c)(1)(vii)(2011). We also sustain the rejection of claim 1
under 35 U.S.C. § 103(a). We group independent claims 19 and 22 and
dependent claims 2-8 and 20 with representative claim 1. See id.
DECISION
We AFFIRM the Examiner’s decision to reject claims 1-3, 5-20, and
22.
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)(2011).
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AFFIRMED

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