Ex Parte Allen et alDownload PDFBoard of Patent Appeals and InterferencesAug 29, 201110349264 (B.P.A.I. Aug. 29, 2011) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE ________________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES ________________ Ex parte KRAM H. ALLEN, LINN J. KROPF, and BRETT GREEN ________________ Appeal 2009-006147 Application 10/349,264 Technology Center 2400 ________________ Before CARLA M. KRIVAK, THOMAS S. HAHN, and BRADLEY W. BAUMEISTER, Administrative Patent Judges. BAUMEISTER, Administrative Patent Judge. DECISION ON APPEAL Appeal 2009-006147 Application 10/349,264 2 SUMMARY Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s rejections of claims 1-28 and 30-33: Claims 1-4, 7-9, 13-15, 18, 19, 23-25, and 30-33 stand rejected under 35 U.S.C. § 103(a) as obvious over Mukaiyama (US 6,631,407 B1; issued Oct. 7, 2003) in view of Schacht (US 6,959,437 B2; issued Oct. 25, 2005); Claims 5, 6, 16, and 17 stand rejected under 35 U.S.C. § 103(a) as obvious over Mukaiyama in view of Schacht and Teng (US 6,327,045 B1; issued Dec. 4, 2001); Claims 10, 11, 20, 21, 26, and 27 stand rejected under 35 U.S.C. § 103(a) as obvious over Mukaiyama in view of Schacht and Hughes (US 6,065,055; issued May 16, 2000); Claims 12, 22, and 28 stand rejected under 35 U.S.C. § 103(a) as obvious over Mukaiyama in view of Schacht and Vong (US 7,030,837 B1; issued Apr. 18, 2006 ). We do not reach the merits of the Examiner’s rejections. Pursuant to our authority under 37 C.F.R. § 41.50(b), we enter a new ground of rejection under 35 U.S.C. § 112, ¶ 2. STATEMENT OF THE CASE Appellants describe their invention as “relat[ing] generally to distributing configuration changes made to a printing device” (Spec. 1). Independent claim 1 is illustrative: Appeal 2009-006147 Application 10/349,264 3 1. A method for actively distributing configuration changes made to a printing device in communication with a printer web server, comprising the steps of: receiving a configuration change made to the printing device in the printer web server; arranging a direct connection between the printer web server located in the printing device and a client web server located on a client device using an electronic communications protocol; sending a formatted message directly from the printer web server to the client web server, and the formatted message alerts the client web server to the configuration change made to the printing device; activating an application on the client device in response to the formatted message from the printer web server to notify a user of changes made to the printing device; and actively updating configuration data via the application for the printing device stored on the client device. (App. Br. 39 (emphasis added)). CONTENTIONS AND ANALYSIS “Before considering the rejections . . ., we must first [determine the scope of] the claims . . . .” In re Geerdes, 491 F.2d 1260, 1262 (CCPA 1974). Towards this end, we start by interpreting the meaning of the claim term, “direct.” Subsequent to the initial filing of the present application on January 21, 2003, Appellants amended the claims to specifically require (1) the connection between the printer web server and the client web server be a Appeal 2009-006147 Application 10/349,264 4 direct connection; and (2) the formatted message that is sent from the printer web server to the client web server, be sent directly (Amendment filed Jan. 10, 2007). The Examiner finds that the added claim term, “directly,” does not appear anywhere in the Specification; the Specification only mentions the term “direct” in the context of “. . . the client devices can wait for a communication directed to them” (Ans. 14, citing Spec. 6:24-25). Based on this usage, the Examiner interprets “the claimed limitation of ‘a direct connection between a printer web server and a client web server’ . . . as a connection that enable[s] communication that is addressed (i.e., directed) to an intended recipient” (Ans. 14). Appellants do not dispute that their Specification fails to expressly employ the word “directly.” Appellants nonetheless contend that “other passages in the specification . . . describe a direct connection with greater clarity” (Reply Br. 4). Appellants contend The specification states “[t]he present system provides peer-to- peer communication between the printer web server and client devices that are located on the network” (Specification page 6, lines 22-23). Inherent in peer-to-peer communication is a direct connection with only network components, like switches, used to relay a message from one computing device to another computing device. The client-server model used by Mukaiyama is distinct from the peer-to-peer model of the present invention, because in the Mukaiyama client-server model, the management server manages and alters message formats between computing devices. (Reply Br. 4-5). Appeal 2009-006147 Application 10/349,264 5 Based on the record and arguments, we find that one or ordinary skill in the art would not be reasonably apprised of the objective meaning of the word, “direct” as used in the present claims. As a threshold matter, neither Appellants nor the Examiner has provided any evidentiary support for their respective interpretations. The Examiner has provided no evidence that one of ordinary skill would understand the words “directly” and “directed” to be synonymous. Appellants have provided no evidence that one of ordinary skill would understand the term “directly” to be synonymous with, or have some relation to, peer-to-peer connections. Evidentiary support aside, we do not find the Examiner’s interpretation of “directly” to be reasonable. Employing the Examiner’s interpretation, an airline passenger scheduled for a two-leg flight on a first plane from Washington D.C. to Chicago and on a second plane from Chicago to Seattle could be deemed to be scheduled on a “direct connection” merely because the passenger is directed, during travel, towards the west coast. Due to the plane change in Chicago, such an interpretation is contrary to commonly accepted usage. Turning now to Appellants’ position, and even ignoring the lack of evidentiary support, Appellants’ arguments are likewise unpersuasive because Appellants’ position is not reasonably clear. It initially appears that Appellants are arguing that the claim language “direct connection” is intended to be synonymous with a peer-to-peer connection” (see Reply Br. 4-5). However, if this is what Appellants actually intended, they could have Appeal 2009-006147 Application 10/349,264 6 alternatively drafted claim 1 to recite “arranging a peer-to-peer connection between the printer [and client servers].” Not only would such hypothetical claim language have been less ambiguous, it would have been supported by the Specification. The fact that Appellants have opted to claim a “direct connection” instead of a “peer-to-peer connection” evidences that Appellants intend the claim’s scope to somehow differ from a “peer-to-peer” connection. However, it is unclear what difference in meaning is specifically intended. On the one hand, Appellants may be intending “direct connection” to be broader than peer-to-peer connections; i.e., intending “direct connection” to include “peer-to-peer connections” without necessarily being limited to peer-to-peer connections. Appellants’ statement, “[i]nherent in peer-to-peer communication is a direct connection” (Reply Br. 4), seems to support this interpretation because the statement implies that direct connections may also be used for communications other than peer-to-peer communications. Alternatively, Appellants may be intending “direct connection” to have a meaning that is narrower than peer-to-peer connections. For example, Appellants argue that Mukaiyama’s client-server model does not possess a direct connection because “the management server manages and alters message formats between computing devices” (Reply Br. 5). According to this assertion, Appellants’ position may be that a connection cannot be deemed to be a direct one if the connection includes any Appeal 2009-006147 Application 10/349,264 7 component that alters message formats between computing devices. This would seem to preclude some wireless and optical connections, including wireless peer-to-peer connections, because such connections respectively convert the message formats from electrical signals to electromagnetic and optical waves. That is, Appellants’ position could reasonably be interpreted as being that “direct connections” are limited to hardwired cables and conductors. 35 U.S.C. § 112, ¶ 2 requires that the specification of a patent “conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.” Because claims delineate the patentee’s right to exclude, the patent statute requires that the scope of the claims be sufficiently definite to inform the public of the bounds of the protected invention, i.e., what subject matter is covered by the exclusive rights of the patent. Otherwise, competitors cannot avoid infringement, defeating the public notice function of patent claims. (“[T]he primary purpose of the requirement is ‘to guard against unreasonable advantages to the patentee and disadvantages to others arising from uncertainty as to their [respective] rights.’”) The Supreme Court has stated that “[t]he statutory requirement of particularity and distinctness in claims is met only when [the claims] clearly distinguish what is claimed from what went before in the art and clearly circumscribe what is foreclosed from future enterprise.” Halliburton Energy Servs., Inc. v. M-I LLC, 514 F.3d 1244, 1249 (Fed. Cir. 2008) (citations omitted) (brackets in original). [T]he patent drafter is in the best position to resolve the ambiguity in the patent claims, and it is highly desirable that Appeal 2009-006147 Application 10/349,264 8 patent examiners demand that applicants do so in appropriate circumstances so that the patent can be amended during prosecution rather than attempting to resolve the ambiguity in litigation. Id. at 1255. Moreover, “[I]f a claim is amenable to two or more plausible claim constructions, the USPTO is justified in requiring the applicant to more precisely define the metes and bounds of the claimed invention by holding the claim unpatentable under 35 U.S.C. § 112, second paragraph, as indefinite.” Ex parte Miyazaki, 89 USPQ2d 1207, 1211 (BPAI 2008) (precedential), available at http://www.uspto.gov/web/offices/dcom/bpai/prec/fd073300.pdf. As noted above, the language of independent claim 1, “arranging a direct connection between [servers]” and “sending a formatted message directly from the printer web server to the client web server,” is amenable to two or more plausible claim constructions. Independent claims 13, 23, 30, and 32 have also been amended to include the terms “direct” and “directly” in similar recitations. For the reasons set forth in the cited legal precedents, we hold claims 1-28 and 30-33 to be indefinite under 35 U.S.C. § 112, ¶ 2. Because the independent claims are so indefinite that “considerable speculation as to [the] meaning of the terms employed and assumptions as to the scope of such claims” is needed, we do not address the merits of the Examiner’s rejections under 35 U.S.C. § 103(a). See In re Steele, 305 F.2d 859, 862 (CCPA 1962) (holding that the Examiner and the Board were Appeal 2009-006147 Application 10/349,264 9 wrong in relying on what at best were speculative assumptions as to the meaning of the claims and basing a prior-art rejection thereon.) CONCLUSIONS We do not reach the merits of the Examiner’s rejections under 35 U.S.C. § 103(a). Pursuant to our authority under 37 C.F.R. § 41.50(b), we enter a new ground of rejection under 35 U.S.C. § 112, ¶ 2 for claims 1-28 and 30-33. DECISION A new ground of rejection for claims 1-28 and 30-33 is entered. FINALITY OF DECISION Regarding the affirmed rejections, 37 C.F.R. § 41.52(a)(1) provides that “Appellant may file a single request for rehearing within two months of the date of the original decision of the Board.” This decision contains new grounds of rejection pursuant to 37 C.F.R. § 41.50(b) (2007). This regulation states that “[a] new ground of rejection pursuant to this paragraph shall not be considered final for judicial review.” Furthermore, 37 C.F.R. § 41.50(b) also provides that Appellants, WITHIN TWO MONTHS FROM THE DATE OF THE DECISION, must exercise one of the following two options with respect to the new grounds of rejection to avoid termination of the appeal as to the rejected claims: Appeal 2009-006147 Application 10/349,264 10 (1) Reopen prosecution. Submit an appropriate amendment of the claims so rejected or new evidence relating to the claims so rejected, or both, and have the matter reconsidered by the examiner, in which event the proceeding will be remanded to the examiner. . . . (2) Request rehearing. Request that the proceeding be reheard under § 41.52 by the Board upon the same record. . . . Should Appellants elect to prosecute further before the Examiner pursuant to 37 C.F.R. § 41.50(b)(1), in order to preserve the right to seek review under 35 U.S.C. §§ 141 or 145 with respect to the affirmed rejections, the effective date of the affirmance is deferred until conclusion of the prosecution before the Examiner unless, as a mere incident to the limited prosecution, the affirmed rejections are overcome. If Appellants elect prosecution before the Examiner and this does not result in allowance of the application, abandonment, or a second appeal, this case should be returned to the Board of Patent Appeals and Interferences for final action on the affirmed rejection, including any timely request for rehearing thereof. Appeal 2009-006147 Application 10/349,264 11 No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED 37 C.F.R. § 41.50(b) rwk Copy with citationCopy as parenthetical citation