Ex Parte Achacoso et al

Board of Patent Appeals and Interferences

Oct 12, 2010

10375358 (B.P.A.I. Oct. 12, 2010)

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.
10/375,358 02/28/2003 Theodore B. Achacoso 4895-2 7154
23117 7590 10/12/2010
NIXON & VANDERHYE, PC
901 NORTH GLEBE ROAD, 11TH FLOOR
ARLINGTON, VA 22203
EXAMINER
HAILU, TADESSE
ART UNIT PAPER NUMBER
2173
MAIL DATE DELIVERY MODE
10/12/2010 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 THEODORE B. ACHACOSO and D. WAYNE SILBY
____________________

Appeal 2009-0048911
Application 10/375,358
Technology Center 2100
____________________

Before JEAN R. HOMERE, JAY P. LUCAS, and STEPHEN C. SIU,
Administrative Patent Judges.

HOMERE, Administrative Patent Judge.

DECISION ON APPEAL2

1 Filed February 28, 2003. The real party in interest is Groupserve IP Trust
LLC. (App. Br. 3.)
2 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.

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I. STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) (2002) from the
Examiner’s final rejection of claims 51-57, 65 and 69. Claims 1-50, 58-64
and 66-68 have been canceled. (App. Br. 5-6.) We have jurisdiction under
35 U.S.C. § 6(b) (2008).
We affirm-in-part.
Appellants’ Invention
Appellants invented a method and system for allowing each member
of a group to access only a designated portion of information via a universal
resource locator (URL) associated therewith. (Spec. ¶¶ 21, 43, and 47.)
Illustrative Claim
Independent claim 51 further illustrates the invention. It reads as
follows:
51. A system for facilitating continued group
communications and collaboration over an information
communications network comprising:

a database that supplies information received from a
group having plural participants;

a notice generator that pushes at least one universal
resource locator to at least some group participants over the
network; and

an access channel server that provides access to said
supplied information over said information communication
network in response to activation of said universal resource
locator by group participants, said access channel providing at
least one member of said at least some group participants access
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to a portion of said deposited information that is different from
the information provided to the remainder of said group.

Prior Art Relied Upon
The Examiner relies on the following prior art as evidence of
unpatentability:
Smith US 5,790,790 Aug. 4, 1998
Boyle US 6,119,167 Sep. 12, 2000
Zhu US 2002/0194272 A1 Dec. 19, 2002
Curtis US 650,707 B2 May 6, 2003

Rejections on Appeal
The Examiner rejects the claims on appeal as follows:
1. Claim 69 stands rejected under 35 U.S.C. § 112, 1st paragraph
for failing to comply with the written description requirement.
2. Claims 51-57 and 65 stand rejected under 35 U.S.C. § 102(b)
as being anticipated by Smith.

Appellants’ Contentions3

3 We have only considered those arguments that Appellants actually
raised in the Briefs. Arguments Appellants could have made but chose not
to make in the Briefs have not been considered and are deemed to be
waived. See 37 C.F.R. § 41.37(c)(1)(vii).

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1. Appellants contend that paragraphs 21, 26, 43 and 47 of the
originally filed Specification, as well as original claim 35 support the
limitation of a computing node suppressing access by a first (/ a second)
group participant to information stored in a second (/ a first) portion, as
recited in independent claim 69. (App. Br. 14, Reply Br. 1-2.)
2. Appellants contend that Smith does not teach an access channel
providing to at least one member of at least some group participants access
to a portion of deposited information that is different from the information
provided to the remainder of the group, as recited in independent claim 51.
(Id. at 12.) According to Appellants, Smith teaches providing different users
access to different documents specifically referenced in a data store via
different URLs. (Id.) Further, Appellants argue that Smith does not teach
using a common access channel to supply different information to different
users. (Reply Br. 2.) In particular, Appellants argue that Smith teaches
delivering to the user a URL that references the stored item whereas claim
51 requires a URL that references an access channel, which includes a
queued list of relevant messages selected for the user. (Id.)

Examiner’s Findings and Conclusions
1. The Examiner finds that Appellants’ original disclosure does
not support the limitation of a computing node suppressing access by a first
(/ a second) group participant to information stored in a second (/ a first)
portion, as recited in independent claim 69. (Ans. 3-4, 12).
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2. The Examiner finds that Smith’s disclosure of pushing a URL
to a selected subset of group participants teaches an access channel (defined
as a URL in original claim 21) providing a member of the group access to a
portion of information different from information provided to other members
of the group, as recited in independent claim 51. (Ans. 9-11.)

II. ISSUES
1. Have Appellants shown the Examiner erred in finding that
Appellants’ original disclosure does not support the limitation of a
computing node suppressing access by a first (/ a second) group participant
to information stored in a second (/ a first) portion, as recited in independent
claim 69?
2. Have Appellants shown that the Examiner erred in finding that
Smith teaches an access channel providing a member of a group access to an
information portion different from the information portion provided to other
members of the group, as recited in independent claim 51?

III. FINDINGS OF FACT
The following Findings of Fact (FF) are shown by a preponderance of
the evidence.

1a. Appellants’ Specification states the following:
[A] notice generator triggered by an information input
from an inputting member directed to a receiving member, the
notice generator generating a notice for the receiving member,
and pushing the notice to the peripheral device of the receiving
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member only if the member is one to whom the associated
information input was directed.

(Spec. ¶ 21.) Emphasis added.

1b. The access channel is preferably a hyperlink URL in an
e-mail embodiment of the invention.

(Spec. ¶ 22.)

1c. The first information input is typically directed to a
plurality of other members, and the second information input
may be directed to the first member, another member, or a
plurality of members. The method may further comprise
allowing a person to join as a member of the group by forming
a link with the person, and inviting a person to join as a
member of the group.

(Spec. ¶ 26.)

1d. Throughout, the agent identifies and pushes the
appropriate URLs to the appropriate people.

(Spec. ¶ 43.)
1e. Members do not receive notices of their own
inputs…[T]he members for whom there is relevant information
are not…shown only information relevant to them.

(Spec. ¶ 47.)
2. As shown in Figures 1 and 4, Smith discloses an electronic
document delivery system (10) having a binary file server (12) that, upon
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receiving a selected document from a client (44), stores the received
document in a data store (42) while notifying the intended recipient (22) of
the document via e-mail. The intended recipient (22) then downloads the
document from the data store using a local protocol. (Abstract, col. 3, ll. 26-
31, col. 4, ll. 3-14, col. 5, ll. 15-16.)
3. The notification e-mail sent to the intended recipient (22)
includes a URL that identifies the stored document (48) in the data store
(42). Upon receiving the e-mail, the intended recipient may download the
document by clicking on the URL. (Col. 8, ll. 29-61.)

IV. ANALYSIS
Written Description Rejection
Claim 69 recites in relevant-parts (1) a computing node suppressing
access by a first group participant to information stored in a second portion,
and (2) a computing node suppressing access by a second group participant
to information stored in a first portion. (Br. 17, App’x.) The claim
requires that a computing node allows a group participant to access only
information stored in a certain portion to which they are authorized thereby
preventing the group participant from accessing other information portions
to which they are not authorized. Appellants’ Specification indicates that a
first information input may be associated with a first group participant while
a second information input may be associated with another group such that
notification of information is sent with a URL only to a recipient or a group
associated therewith. (FF. 1a, 1c, 1d.) The Specification discloses that
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members are only shown relevant information that is not their own
information input. (FF. 1e.) We find that the cited portions of the
Specification support at least that each group participant having received a
notification with a URL is capable of accessing only the information portion
associated therewith. While the Specification does not particularly discuss
restricting access of certain group participants to certain information
portions, we find that one of ordinary skill in the art4 would have readily
ascertained from the cited portions that group participants can only access
the information portions associated with the received URLs, and their access
would thereby be suppressed for portions for which they did not receive a
notification along with the URL. Consequently, we find that Appellant’s
originally filed disclosure supports the limitation of a computing node

4 “To fulfill the written description requirement [under 35 U.S.C. § 112], the
patent specification must describe an invention in sufficient detail that one
skilled in the art can clearly conclude that the inventor invented what is
claimed.” Kao Corp. v. Unilever U.S., Inc., 441 F.3d 963, 967-968 (Fed. Cir.
2006) (quoting Cordis Corp. v. Medtronic AVE, Inc., 339 F.3d 1352, 1364
(Fed. Cir. 2003)). Our reviewing court has cautioned, however, that “[t]he
disclosure as originally filed does not . . . have to provide in haec verba
support for the claimed subject matter at issue.” Cordis Corp. v. Medtronic
AVE, Inc., 339 F.3d at 1364 (internal citation omitted). “Although [the
applicant] does not have to describe exactly the subject matter claimed, the
description must clearly allow persons of ordinary skill in the art to
recognize that [he or she] invented what is claimed.” In re Gosteli, 872 F.2d
1008, 1012 (Fed. Cir. 1989) (citations omitted). Put another way, “the
applicant must . . . convey with reasonable clarity to those skilled in the art
that, as of the filing date sought, he or she was in possession of the
invention.” Vas-Cath, Inc. v. Mahurkar, 935 F.2d 1555, 1563-64 (Fed. Cir.
1991) (emphasis in original).
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suppressing access by a first group participant to information stored in a
second portion, and (2) a computing node suppressing access by a second
group participant to information stored in a first portion, as recited in claim
69. It follows that Appellants have shown that the Examiner erred in finding
that claim 69 fails to comply with the written description requirement under
35 U.S.C. § 112, 1st paragraph.

Anticipation Rejection
Independent claim 51 requires, inter alia, an access channel providing
a member of a group access to a portion of information different from
information provided to other members of the group. (Br. 15, Claims
App’x.)
"[T]he words of a claim 'are generally given their ordinary and
customary meaning.'" Phillips v. AWH Corp., 415 F.3d 1303, 1312 (Fed.
Cir. 2005) (internal citations omitted). "[T]he ordinary and customary
meaning of a claim term is the meaning that the term would have to a person
of ordinary skill in the art in question at the time of the invention, i.e., as of
the effective filing date of the patent application." Id. at 1313. "[T]he PTO
gives claims their 'broadest reasonable interpretation.'" In re Bigio, 381 F.3d
1320, 1324 (Fed. Cir. 2004) (quoting In re Hyatt, 211 F.3d 1367, 1372 (Fed.
Cir. 2000)). "Moreover, limitations are not to be read into the claims from
the specification." In re Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993)
(citing In re Zletz, 893 F.2d 319, 321 (Fed. Cir. 1989)).
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Upon reviewing Appellants’ Specification, we find that the access
channel is preferably a URL. (FF. 1b.) Therefore, the claim requires at least
two group participants, each using a URL to access different information
portions. As set forth in the Findings of Fact section, Smith discloses, upon
receiving an e-mail notification with a URL referencing the location of an
information in a data store, each intended recipient can download the
information associated with the received URL. (FF. 2-3.) We thus find that
since each URL points to a different portion of the data store to retrieve the
information associated therewith, a first group participant having received a
first URL will access an information portion in the data store that is different
from that of another group participant that has received another URL. We
do not agree with Appellants’ argument that the claimed invention allegedly
distinguishes over Smith because it uses a common access channel that
references different portions of information whereas Smith uses a URL to
retrieve different documents. As discussed above, we find no distinction
between the disputed limitations and Smith’s disclosure since as pointed out
by the Examiner, the claimed access channel is merely a URL that is used to
retrieve an information portion associated therewith. It follows that
Appellants have not shown that the Examiner erred in finding that Smith
anticipates claim 51.
Regarding claim 57, Appellants reiterate the same arguments raised
for the patentability of claim 51. (App. Br. 7-9.) These arguments are not
persuasive for the reasons set forth in our discussion of claim 51 above.
Further, Appellants have not presented separate patentability arguments for
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claims 52-55 and 65. Therefore, claims 52-55, 57 and 65 fall with claim 51
in accordance with 37 C.F.R. § 41.37(c)(1)(vii).

Regarding claim 56, Appellants argue that Smith does not teach an
access channel server including a narrowcasting server providing streaming
content. (App. Br. 13.) The Examiner responds that Smith discloses the
narrowcasting server since, similarly to Appellants’ invention, Smith
discloses a server that pushes data over the network. (Ans. 11.) While we
agree with the Examiner that Smith’s pushing of data to the network
constitutes narrowcasting, it is silent as to whether it is capable of streaming
data. Since the Examiner failed to even address the data streaming limitation
recited in the claim, we find the Examiner did not properly establish a prima
facie case of anticipation against claim 56. Therefore, we will not sustain
that rejection.
V. SUMMARY
1. Appellants have not established that the Examiner erred in rejecting
claims 52-55 and 65 under 35 U.S.C. § 102(e) as being anticipated by Smith.
We therefore affirm this rejection.
2. Appellants have established that the Examiner erred in rejecting
claim 69 under 35 U.S.C. § 112, 1st paragraph as failing to comply with the
written description requirement. We therefore reverse this rejection.
3. Appellants have established that the Examiner erred in rejecting
claims 56 under 35 U.S.C. § 102(e) as anticipated by Smith. We therefore
reverse this rejection.
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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) (2009).

AFFIRMED-IN-PART

Vsh

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901 NORTH GLEBE ROAD, 11TH FLOOR
ARLINGTON VA 22203