11135460 (B.P.A.I. Apr. 19, 2011)

Ex Parte Anspach et al

Board of Patent Appeals and InterferencesApr 19, 2011

11135460 (B.P.A.I. Apr. 19, 2011)

UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES ____________ Ex parte MARK S. ANSPACH, EVELYN L. WILLIAMS, ROCK D. BARNEY, and ROBERT RAYMOND ____________ Appeal 2009-009801 Application 11/135,460 Technology Center 2100 ____________ Before ST. JOHN COURTENAY III, CAROLYN D. THOMAS, and DEBRA K. STEPHENS, Administrative Patent Judges. COURTENAY, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE This is a decision on appeal under 35 U.S.C. § 134(a) from the Examiner’s final rejection of claims 1-29. We have jurisdiction under 35 U.S.C. § 6(b). We Affirm. Appeal 2009-009801 Application 11/135,460 2 Invention Appellants’ invention relates generally to a method and system for presenting actions associated with a managed object in a task context. “According to an exemplary method, access to a plurality of task domains associated with the object is provided through a shared user interface. A portion of the actions associated with the object directly related to a task domain is identified. The portion of the actions directly related to the task domain is presented using a first element of the user interface. A software link is provided between the first element and a second element of the user interface configured to present a remaining portion of the actions associated with the object.” (Spec. para. [0006]). Representative Claim 1. A method for presenting actions associated with a managed object in a task context, the method comprising: providing access to a plurality of task domains associated with the object through a shared user interface; identifying a portion of the actions associated with the object directly related to a first task domain; presenting the portion of the actions directly related to first task domain using a first element of the user interface; and providing a software link between the first element and a second element of the user interface configured to present a second portion of the actions associated with the object directly related to one or more of the plurality of task domains that differ from the first task domain. Appeal 2009-009801 Application 11/135,460 3 Rejection 1. Claims 1-29 stand rejected under 35 U.S.C. § 102(b) as anticipated by Williams (US 6,344,862 B1). ISSUE (1) Based upon our review of the administrative record, we have determined that the following issue is dispositive in this appeal: Under § 102, did the Examiner err in finding that Williams discloses: providing a software link between the first element and a second element of the user interface configured to present a second portion of the actions associated with the object directly related to one or more of the plurality of task domains that differ from the first task domain, within the meaning of representative claim 1? FINDINGS OF FACT 1. Appellants Specification discloses that “[a] software link is provided between the first element and a second element of the user interface configured to present a remaining portion of the actions associated with the object.” (Spec. para. 6, ll. 6-9). CLAIM GROUPING Based on Appellants’ arguments in the Briefs, we will decide this appeal on the basis of representative claim 1. See 37 C.F.R. § 41.37(c)(1)(vii). Appeal 2009-009801 Application 11/135,460 4 ANALYSIS Appellants contend that the claimed “providing a software link” is not disclosed by Williams. (App. Br. 5). In particular, Appellants disagree with the Examiner’s finding that William’s “tabs, such as Hours, Availability, and Support tabs, and the link in Help button in Fig. 3a of the Williams et al. patent correspond to providing the software link, as described in claim 1.” (Id.). In the rejection of claim 1, the Examiner finds that a software link, as claimed, is provided by the dotted-line hierarchical link shown in Williams’ Figure (3a) that links the first element “Modify Service” with the second element “Assign Service.” (Ans. 4). The Examiner specifically responds to Appellants’ argument that none of Williams’ tabs provides the claimed software link (App. Br. 5): “the [E]xaminer points out that the selected first element 'Modify Service' is one of the many different elements or tasks under the Service Definition Tasks; and by clicking on the second element 'Create Service' user will be able to see [] the portions of actions in pane 16, Fig. 3a, belonging to second element 'Create Service'. Clearly the second context of properties or actions of pane 16 is not the same as first context properties or actions.” (Ans. 11, ¶1). We begin our analysis by looking to Appellants’ Specification for context. Appellants point to the Specification at paragraph 6, lines 7-9 and element 308 of Figure 3 as providing support for the disputed software link. (App. Br. 3). We observe that this portion of the Specification broadly discloses that “[a] software link is provided between the first element and a second element of the user interface configured to present a remaining Appeal 2009-009801 Application 11/135,460 5 portion of the actions associated with the object.” (FF 1). We further observe that the text within element 308 merely restates the aforementioned sentence within the flow chart depicted in Appellants’ Figure 3. On this record, we conclude that a broad but reasonable interpretation of claim 1 places no limitation on the disputed software link, other than it must link first and second elements of a user interface. In particular, we broadly but reasonably construe the “configured to [perform function]” language of claim 1 as a statement of intended use. Within the context of a method claim, the functional language (“present a second portion of the actions . . .”) is not positively recited as actually occurring, this functional language following “providing a software link . . . configured to [perform function].” (emphasis added). “An intended use or purpose usually will not limit the scope of the claim because such statements usually do no more than define a context in which the invention operates.” Boehringer Ingelheim Vetmedica, Inc. v. Schering-Plough Corp., 320 F.3d 1339, 1345 (Fed. Cir. 2003). Although “[s]uch statements often . . . appear in the claim's preamble,” In re Stencel, 828 F.2d 751, 754 (Fed. Cir. 1987), a statement of intended use or purpose can appear elsewhere in a claim. Id. This reasoning is applicable here. Therefore, we conclude that nothing in the language of claim 1 precludes the Examiner’s broader claim interpretation, particularly in light of the express guidance in Appellants’ Specification that “[t]he presently disclosed embodiments are considered in all respects to be illustrative and not restrictive. The scope of the invention is indicated by the appended claims, rather than the foregoing description, Appeal 2009-009801 Application 11/135,460 6 and all changes that come within the meaning and range of equivalence thereof are intended to be embraced.” (Spec. para. [0044]) (emphasis added). While the Examiner’s broader reading may not comport with Appellants’ argued claim scope, we note that “[a]nticipation of a patent claim requires a finding that the claim at issue ‘reads on’ a prior art reference.” Atlas Powder Co.v. IRECO, 190 F.3d 1342, 1346 (Fed. Cir. 1999). Because “applicants may amend claims to narrow their scope, a broad construction during prosecution creates no unfairness to the applicant or patentee.” In re ICON Health and Fitness, Inc., 496 F.3d 1374, 1379 (Fed. Cir. 2007) (citing In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004)). Moreover, we decline Appellants’ invitation in the Reply Brief (see paragraph bridging pages 5 and 6) to read specific argued limitations from the Specification into the claims. 1 We also note that “the reply brief [is not] an opportunity to make arguments that could have been made in the principal brief on appeal to rebut the Examiner's rejections, but were not.” See Ex parte Borden, 93 USPQ2d 1473, 1474 (BPAI 2010) (informative). 1 “[A]lthough the specification often describes very specific embodiments of the invention, we have repeatedly warned against confining the claims to those embodiments. . . . [C]laims may embrace different subject matter than is illustrated in the specific embodiments in the specification.” Phillips v. AWH Corp., 415 F.3d 1303, 1323 (Fed. Cir. 2005) (en banc) (citations and internal quotation marks omitted). Appeal 2009-009801 Application 11/135,460 7 For these reasons, we find Appellants have not met their burden of showing reversible error in the Examiner’s finding of anticipation regarding representative claim 1. 2 Accordingly, we sustain the §102 rejection of independent claim 1 and claims 2-29 which fall therewith. See 37 C.F.R. § 41.37(c)(1)(vii). DECISION We affirm the § 102 rejection of claims 1-29. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). ORDER AFFIRMED pgc 2 See In re Jung, No. 2010-1019, 2011 WL 1235093 at 7 (Fed. Cir. 2011)(“Jung argues that the Board gave improper deference to the examiner’s rejection by requiring Jung to ‘identif[y] a reversible error’ by the examiner, which improperly shifted the burden of proving patentability onto Jung. Decision at 11. This is a hollow argument, because, as discussed above, the examiner established a prima facie case of anticipation and the burden was properly shifted to Jung to rebut it. . . . ‘[R]eversible error’ means that the applicant must identify to the Board what the examiner did wrong . . . .”).