Ex Parte Arora et al

Patent Trial and Appeal Board

Feb 21, 2017

13562756 (P.T.A.B. Feb. 21, 2017)

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.
13/562,756 07/31/2012 Puneet Kumar Arora 82969831 1884
22879
HP Tnr
7590 02/23/2017 EXAMINER
3390 E. Harmony Road
Mail Stop 35
YUN, CARINA
FORT COLLINS, CO 80528-9544 ART UNIT PAPER NUMBER
2194
NOTIFICATION DATE DELIVERY MODE
02/23/2017 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
ipa.mail@hp.com
barbl@hp.com
y vonne.bailey @ hp. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte PUNEET KUMAR ARORA and DIANE R. HAMMERSTAD
Appeal 2016-005779
Application 13/562,756
Technology Center 2100
Before BRUCE R. WINSOR, LINZY T. McCARTNEY, and
NATHAN A. ENGELS, Administrative Patent Judges.
PER CURIAM.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the final rejection of
claims 1—20. We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.
STATEMENT OF THE CASE
The Invention
Appellants’ invention relates to a computer system and method “to
enable a computer user to easily create, maintain, and retrieve, highly
specific and easily understood procurement lists that are associated with
defined events.” Spec. 111. Claims 1, 14, and 20 are independent. Claim 1
is illustrative of the subject matter on appeal:
Appeal 2016-005779
Application 13/562,756
1. A non-transitory computer-readable storage medium
containing instructions, the instructions when executed by a
processor causing the processor to:
receive at a first computer system, via a network, event
data descriptive of an event to occur at an event time;
receive via the network, reminder data descriptive of a
reminder time to occur on or before the event time;
at a time after receipt of the event data, receive via the
network article data descriptive of an article to be associated with
the event, the article data created during an electronic scanning
operation; and
at the reminder time send via the network a reminder
message describing the event and the article to a second
computer system, for presentation at the second computer
system.
See App. Br. (Claims App’x).
Rejections on Appeal
Claims 1—3, 5—14, 17, and 18 stand rejected under 35 U.S.C. § 103(a)
as unpatentable over Liu et al. (US 2009/0168607 Al; published July 2,
2009) (“Liu”) and Crucs (US 2012/0226779 Al; published Sept. 6, 2012).
See Ans. 3—7.
Claim 4 stands rejected under 35 U.S.C. § 103(a) as unpatentable over
Liu, Crucs, and Smith (US 2012/0114891 Al; published May 10, 2012).
See id. at 7—8.
Claims 15, 16, 19, and 20 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Liu, Crucs, and Shirai (US 2006/0044594 Al; published
Mar. 2, 2006). See id. at 8—11.
2
Appeal 2016-005779
Application 13/562,756
ISSUE
Does the Examiner err by interpreting “an article to be associated with
the event” as any information associated to the event in any manner or form?
ANALYSIS
Claim 1 recites “at a time after receipt of the event data, receive via
the network article data descriptive of an article to be associated with the
event, the article data created during an electronic scanning operation” (see
supra (emphasis added)). The Examiner interprets the claim term “an
article” as “any information associated to the event in any manner or form”
(Ans. 12). See also id. at 3; Final Act. 4. Appellants contend “the
Examiner’s interpretation of the term “article” as recited in claim 1 is
erroneous.” Reply Br. 2. In support of their position, Appellants refer to the
Specification’s disclosure that “article data ... is descriptive of an article to
be procured, and the article is associated with the event” {id. (citing
Spec. 111)). Appellants further refer to the Specification’s disclosure of
exemplary articles, including a sweater, equipment to be brought to a game,
food items, a cake, birthday decorations, a pinata, and a bicycle. See Reply
Br. 2 (citing Spec. H 21, 32); App. Br. 7. In view of these disclosures of
Appellants’ Specification, Appellants interpret “an article” as “a physical
item, not ‘any information’ as asserted by the [Examiner].” Id. Appellants
argue that “[b]y interpreting ‘article’ to mean ‘any information,’ the
Examiner has completely disregarded the description relating to an ‘article’
that is provided in the Specification.” Id. at 2—3.
Although we decline to adopt Appellant’s interpretation of the term
“an article” as being limited to a physical item, we agree with Appellants
3
Appeal 2016-005779
Application 13/562,756
that the Examiner’s interpretation of “an article” is impermissibly broad.
Claim interpretation is an issue of law that we review de novo. Cordis Corp.
v. Boston Scientific Corp., 561 F.3d 1319, 1331 (Fed. Cir. 2009). During
prosecution, a recitation is to be accorded its broadest reasonable
interpretation in light of Appellants’ Specification, see In re Morris, YU
F.3d 1048, 1054 (Fed. Cir. 1997), without importing limitations from the
Specification, see In re Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993).
A pertinent definition of “article” is “/?. 1. [a]n individual thing in a
class; an item: an article of clothing.” THE AMERICAN HERITAGE
DICTIONARY, SECOND COLLEGE EDITION 130 (2d ed. 1982). In
addition, as cited by Appellants, the Specification provides that “an article”
is an item “to be procured . . . and is associated with the event” (Spec. 111).
See also id. Ill (disclosing “items to be procured”); Fig. 3. The
Specification also provides examples of “an article,” including an “item[] in
the user’s garage or sports equipment room ... to be brought to the soccer
game” (Spec. 121), “food items to be brought, or purchased and brought, to
the family reunion” {id.), and “cake, birthday decorations, a pinata, and a
present (a bicycle)... to be associated with ‘Julie’s Birthday’ event 236”
{id. 132).
Accordingly, we conclude the broadest reasonable interpretation of
the term “article data,” in light of Appellants’ Specification, encompasses
data, in addition to the “event data descriptive of the event,” which may be
descriptive of an item that is to be procured, and that is associated with the
event. The Examiner’s interpretation of “an article” as any information
associated to the event in any manner or form is impermissibly broader than
the broadest reasonable interpretation of “article data.” Under the
4
Appeal 2016-005779
Application 13/562,756
Examiner’s interpretation of “article,” the recited “article” and the recited
“article data descriptive of [the] article” could be one and the same, thereby
impermissibly reading the words “data descriptive of an article” out of the
claim. See In re Wilson, 424 F.2d 1382, 1385 (CCPA 1970).
In view of the foregoing, because the Examiner incorrectly interprets
the term “an article,” we conclude the Examiner errs in the rejection of claim
1. Accordingly, we do not sustain the rejection of claim 1, as well as the
rejection of independent claims 14 and 20, and dependent claims 2—13 and
15—19, each of which recites “an article” and is rejected based on the same
erroneous interpretation discussed above for the rejection of claim 1. See
App. Br. (Claims App’x) i—iv; Ans. 4—13; Final Act. 5—12.
DECISION
The decision of the Examiner to reject claims 1—20 is reversed.
REVERSED
5