Ex Parte Allen et al

Board of Patent Appeals and Interferences

Aug 29, 2011

10349264 - (D) (B.P.A.I. Aug. 29, 2011)

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

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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:
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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
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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).
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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
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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
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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
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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
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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:
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(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
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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). See 37 C.F.R.
§ 1.136(a)(1)(iv).

AFFIRMED
37 C.F.R. § 41.50(b)

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