Ex Parte Beaton et al

Patent Trial and Appeal Board

May 31, 2016

12266448 (P.T.A.B. May. 31, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/266,448 11/06/2008
46320 7590 06/02/2016
CRGOLAW
STEVEN M. GREENBERG
7900 Glades Road
SUITE 520
BOCA RATON, FL 33434
FIRST NAMED INVENTOR
Murray J. Beaton
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
CA920080040US1 (096) 4109
EXAMINER
PRATT, EHRINLARMONT
ART UNIT PAPER NUMBER
3629
NOTIFICATION DATE DELIVERY MODE
06/02/2016 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):
docketing@crgolaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
ExparteMURRAY J. BEATON, CHRISTINAP. LAU, and
SCOTT P. PEDDLE
Appeal2013-002563
Application 12/266,448
Technology Center 3600
Before: MICHAEL W. KIM, NINA L. MEDLOCK, and
JAMES A. WORTH, Administrative Patent Judges.
KIM, Administrative Patent Judge.
DECISION ON REQUEST FOR REHEARING
Appeal2013-002563
Application 12/266,448
In response to our Decision on Appeal mailed February 5, 2016
(hereinafter "Dec."), the Appellants filed a Request for Rehearing on
April 5, 2016 (hereinafter "Req."). Essentially, the Appellants assert that
"BPM asset" 1 should be construed "an activity that needs to be
accomplished within a defined period of time or by a deadline to work
towards work-related goals" (Req. 6 (emphasis added)), and that Carlson's
"functions from a list" cannot correspond properly to the recited "BPM
asset," because it does not meet the aforementioned "time" aspect of "BPM
asset."
The Appellants' assertions are misplaced, because we are
unpersuaded that a proper construction of "BPM asset" requires a "time"
aspect. Specifically, although the Appellants provide a purported definition
of "BPM asset," that definition does not mention anything about time.
Furthermore, the Appellants have not identified any disclosure in the
Specification to support their position concerning "time." Indeed, as noted
at page 4 of the Decision, the main reference to "BPM asset" is at
paragraph 4 of the Specification, and that paragraph recites that "BPM
assets" can include one or more "tasks, activities, actors, elements," but does
not include a "time" aspect for "BPM asset." Indeed, other than it needing
to include one or more of "tasks, activities, actors, elements," we are unable
1 We note that although the Appellants appear to argue "BPM task,"
independent claims 1, 4, and 9 each recites "BPM asset," and not "BPM
task." Accordingly, we treat the Appellants' assertions as being directed to
the recited claim language, "BPM asset," and not "BPM task," for, as
disclosed at paragraph 4 of the Specification, a "BPM asset" can consist of
one "BPM task."
2
Appeal2013-002563
Application 12/266,448
to identify in the Specification any further limitations on "BPM assets" at
all.
Given that we are unpersuaded that "BPM asset" requires a "time"
aspect, we are unpersuaded that Carlson's "functions from a list" cannot
correspond properly to the recited "BPM asset." For example,
paragraph 143 and Figure 12 of Carlson disclose that an "asset" may include
a function "GetResidenceAddress( ). " We are unclear how this function
cannot be considered one or more "tasks, activities, ... elements."
Insofar as we have addressed Appellants' arguments herein,
Appellants' Request for Rehearing is granted. In all other respects,
Appellants' Request for Rehearing is denied.
DENIED
3