Ex Parte Bertin et al

Patent Trial and Appeal Board

Feb 3, 2016

12444962 (P.T.A.B. Feb. 3, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/444,962 0410912009 Olivier Bertin
56436 7590 02/05/2016
Hewlett Packard Enterprise
3404 E. Harmony Road
Mail Stop 79
Fort Collins, CO 80528
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.
82223756 4045
EXAMINER
CHOU,ALANS
ART UNIT PAPER NUMBER
2451
NOTIFICATION DATE DELIVERY MODE
02/05/2016 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):
hpe.ip.mail@hpe.com
mkraft@hpe.com
chris.mania@hpe.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte OLIVIER BERTIN, JEAN-PHILIPPE CARADEC,
and MARC LAMBERTON
Appeal2014-003143
Application 12/444,962 1
Technology Center 2400
Before ST. JOHN COURTENAY III, THU A. DANG, and
LARRY J. HUME, Administrative Patent Judges.
HUME, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a) of the final
rejection of claims 1-20. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 According to Appellants, the real party in interest is Hewlett-Packard
Development Company, LP. App. Br. 3.
Appeal2014-003143
Application 12/444,962
STATEMENT OF THE CASE2
The Invention
Appellants' disclosed and claimed invention relates to a data
processing system and method. Spec. if 2.
Exemplary Claims
Claims 1 and 12, reproduced below, are representative of the subject
matter on appeal (emphases added to contested limitations):
1. A method of managing access to address data that
is accessible via a plurality of communication devices, the
method comprising:
accessing and/or establishing at least one access rule,
associated with at least one communication device of the
plurality of communication devices, for influencing access to
the address data; and
controlling access to the address data according to the at
least one access rule associated with the at least one
communication device.
12. A communications system, comprising:
a plurality of communication devices;
means for storing address data accessible via the plurality
of communication devices;
means for accessing and/or establishing at least one
access rule, associated with at least one communication device
of the plurality of communication devices, for influencing
access to the address data; and
2 Our decision relies upon Appellants' Appeal Brief ("App. Br.," filed
June 10, 2013); Reply Brief ("Reply Br.," filed Jan. 6, 2014); Examiner's
Answer ("Ans.," mailed Nov. 4, 2013); Final Office Action ("Final Act.,"
mailed Jan. 11, 2013); and the original Specification ("Spec.," filed
Apr. 9, 2009).
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means for controlling access to the address data
according to the at least one access rule associated with the at
least one communication device,
wherein the address data comprises a first user's contact
list, wherein the first user's contact list includes a plurality of
contacts for different users and an address for each contact,
and the at least one access rule includes a unique rule ID, the
contact list and access rights for the different users to access the
first user's contact list.
Prior Art
The Examiner relies upon the following prior art as evidence in
rejecting the claims on appeal:
McDowell et al. ("McDowell") US 2002/0035605 Al Mar. 21, 2002
Bobde et al. ("Bobde") US 2003/0217142 Al Nov. 20, 2003
Rejections on Appeal
RI. Claims 1, 2, 5, 7, 8, 12, and 16 stand rejected under 35 U.S.C.
§ 102(b) as being anticipated by Bobde. Final Act. 3.
R2. Claims 3, 4, 6, 9-11, 13-15, and 17-20 stand rejected under
35 U.S.C. § 103(a) as being unpatentable over the combination of Bobde and
McDowell. Final Act. 7.
CLAIM GROUPING3
Based on Appellants' arguments (App. Br. 6-15), we decide the
appeal of Rejection RI of claims 1, 2, 5, 7, and 8 on the basis of
3 We note Appellants incorrectly argued against the rejection of claims 5
and 7 under § 103 (Rejection R2), while the rejection of these claims is
actually under§ 102 (Rejection RI). We group these claims accordingly.
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representative claim 1. We decide the appeal of Rejection R 1 of separately
argued independent claims 12 and 16 on the basis representative of claim 12.
We address remaining claims 3, 4, 6, 9-11, 13-15, and 17-20 in
Rejection R2, not argued separately, infra.
ISSUES AND ANALYSIS
In reaching this decision, we consider all evidence presented and all
arguments actually made by Appellants. We do not consider arguments
which Appellants could have made but chose not to make in the Briefs so
that we deem any such arguments as waived. 37 C.F.R. § 41.37(c)(l)(iv).
We disagree with Appellants' arguments with respect to all argued
claims, and we incorporate herein and adopt as our own: ( 1) the findings
and reasons set forth by the Examiner in the action from which this appeal is
taken, and (2) the reasons and rebuttals set forth in the Examiner's Answer in
response to Appellants' arguments. We incorporate such findings, reasons,
and rebuttals herein by reference unless otherwise noted. However, we
highlight and address specific findings and arguments regarding claims 1
and 12 for emphases, as follows.
1. § 102(b) Rejection RI of Claims 1, 2, 5, 7, and 8
Issue 1
Appellants argue (App. Br. 6-8; Reply Br. 4---6) the Examiner's
rejection of claim 1 under 35 U.S.C. § 102(b) as being anticipated by Bobde
is in error. These contentions present us with the following issue:
Did the Examiner err in finding Bobde discloses a method that
includes, inter alia, the limitation of "controlling access to the address data
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according to the at least one access rule associated with the at least one
communication device," as recited in claim 1?
Analysis
Appellants contend, "Bobde does not teach that the presence
information includes address data or any type of address. Hence, Bobde
does not teach controlling access to address data according to at least one
access rule associated with at least one communication device," as recited in
claim 1. App. Br. 7.
Appellants further contend:
The Examiner also asserts Bobde discloses computer
devices are accessed through network telephony (see page 3
section [0023]) by network addresses .... Paragraph 23,
however, does not disclose address data or an access rule to
control access to network addresses. Accordingly, Bobde fails
to teach "controlling access to address data according to the at
least one access rule associated with the at least one
communication device."
App. Br. 8.
The Examiner finds Bobde's access control list (ACL) teaches
"controlling access to address data" of a particular group of users. Ans. 2
(citing Bobde i-fi-1 31, 46). The Examiner also finds Bobde's URI and
network address teach claim 1 's claim term "address." Ans. 2 (citing Bobde
i130).
We note Appellants' Specification does not provide an explicit
definition of the claim term "address data." The Specification discloses
"[t]he representation of groups and contact lists is an embodiment of address
data ... embodiments of address data are not limited thereto." Spec. i137.
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We find Appellants' exemplary, non-limiting embodiments of "address data"
in the Specification (id.) do not provide an explicit definition per se, and
thus do not preclude the Examiner's broader interpretation. 4 Thus, we find
the Examiner's interpretation of the term "address data" to be reasonable
and, under the broadest reasonable interpretation in light of the specification
standard, we conclude the scope of the recited "address list" does not
preclude Bobde's presence information.
During examination, a claim must be given its broadest reasonable
interpretation consistent with the Specification as it would be interpreted by
one of ordinary skill in the art. Because the applicant has the opportunity to
amend claims during prosecution, giving a claim its broadest reasonable
interpretation will reduce the possibility that the claim, once issued, will be
interpreted more broadly than is justified. In re Yamamoto, 740 F.2d 1569,
1571 (Fed. Cir. 1984); In re Zletz, 893 F.2d 319, 321 (Fed. Cir. 1989)
4 /\ny special meaning assigned to a tenn "must be sufficiently clear in the
specification that any departure from common usage would be so understood
by a person of experience in the field of the invention." Multiform
Desiccants Inc. v. Medzam Ltd., 133 F.3d 1473, 1477 (Fed. Cir. 1998); see
also Helmsderfer v. Bobrick Washroom Equip., Inc., 527 F.3d 1379, 1381
(Fed. Cir. 2008) ("A patentee may act as its own lexicographer and assign to
a term a unique definition that is different from its ordinary and customary
meaning; however, a patentee must clearly express that intent in the written
description.") (citation omitted). See also Phillips v. AWH Corp., 415 F.3d
1303, 1323 (Fed. Cir. 2005) ("[A]Hhough the specification often describes
very specific embodiments of the invention, we have repeatedly vvarned
against confining the claims to those embodiments .... In particular~ we
have expressly rejected the contention that if a patent describes only a single
ernbodiment, the claims of the patent must be construed as being limited to
that embodiment") (citations omitted).
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("During patent examination the pending claims must be interpreted as
broadly as their terms reasonably allow.").
In addition, Appellants contend, in regards to claim 5:
McDowell does not disclose at least one access rule that
includes the contact list and access rights for different users in
the contact list to access the contact list. McDowell also does
not disclose at least one access rule includes access rights for
the different users on the access list to access the first user's
contact list.
App. Br. 14.
We are not persuaded by Appellants' arguments because Appellants
are arguing a reference not relied upon for Rejection RI, i.e., the Examiner
cites Bobde, not McDowell, in rejecting claim 5. Final Act. 3; and see supra
note 3. Appellants make similar arguments with respect to claim 7, and we
repeat our findings regarding claim 5 as being applicable to claim 7. See
App. Br. 15.
We are not persuaded of Appellants' contention because Appellants
merely assert, without elaboration or specific criticism of the Examiner's
findings that the reference does not disclose features recited in claims 5
and 7. Cf In re Lovin, 652 F.3d 1349, 1357 (Fed. Cir. 2011) ("[W]e hold
that the Board reasonably interpreted Rule 41.37 to require more substantive
arguments in an appeal brief than a mere recitation of the claim elements and
a naked assertion that the corresponding elements were not found in the
prior art.").
Accordingly, based upon the findings above, on this record, we are
not persuaded of error in the Examiner's reliance on the disclosure of the
cited prior art to disclose the disputed limitation of claim 1, nor do we find
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error in the Examiner's resulting finding of anticipation. Therefore, we
sustain the Examiner's anticipation rejection of independent claim 1, and
grouped claims 2, 5, 7, and 8 which fall therewith. See Claim Grouping,
supra.
2. § 102(b) Rejection RI of Claims 12 and 16
Issue 2
Appellants argue (App. Br. 8-12; Reply Br. 6-8) the Examiner's
rejection of claim 12 under 35 U.S.C. § 102(b) as being anticipated by
Bobde is in error. These contentions present us with the following issue:
Did the Examiner err in finding Bobde discloses a communication
system that includes, inter alia, the limitations of "means for controlling
access to the address data according to the at least one access rule associated
with the at least one communication device" and, wherein, (1) "the address
data comprises a first user's contact list, wherein the first user's contact list
includes a plurality of contacts for different users and an address for each
contact," and (2) "the at least one access rule includes a unique rule ID, the
contact list and access rights for the different users to access the first user's
contact list," as recited in claim 12?
Analysis
Appellants contend Bobde fails to disclose the contested "means for
controlling" limitation, "[fJor the reasons stated above with respect to
claim 1." App. Br. 8. For the same reasons set forth above with respect to
claim 1, Issue 1, we are not persuaded the Examiner erred in reading the
contested "means for controlling" limitation onto the cited portions of
Bobde. See Final Act. 5 (citing Bobde i-f 31 ); and see Ans. 2.
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Appellants also contend:
The Examiner asserts the buddy list disclosed in paragraph 5 of
Bobde is the claimed first user's contact list . . . paragraph 7
appears to discuss that the presence information of each device
of a particular user being watched is determined and presented
to the watcher (the watcher appears to be the person having the
buddy list) in the compound document. However, Bobde does
not disclose the compound document includes a user's entire
contact list. In particular, Bobde does not teach the compound
document or any information provided to the watcher includes a
first user's contact list, wherein the first user's contact list
includes a plurality of contacts for different users and an
address for each contact, as recited in claims 12 and 16.
App. Br. 9-10 (emphasis omitted).
We agree with the Examiner's finding that Bobde's access control list,
which provides access rights to a subscriber on a contact list (Ans. 3 (citing
Bobde i-fi-1 29, 31) ), teaches the "user's contact list" limitation, as recited in
claim 12.
Furthermore, in regards to the "wherein" clause in claim 12 ("wherein
the address data comprises a first user's contact list, wherein the first user's
contact list includes a plurality of contacts for different users and an address
for each contact, and the at least one access rule includes a unique rule ID,
the contact list and access rights for the different users to access the first
user's contact list. "), the determination of whether recitations or clauses
introduced by terms such as "wherein" result in affirmative claim limitations
which are to be given patentable weight depends on the specific facts of the
case. See, e.g., Griffin v. Bertina, 285 F.3d 1029, 1034 (Fed. Cir. 2002)
(finding that a "wherein" clause limited a process claim where the clause
gave "meaning and purpose to the manipulative steps"). In re Hoffer v.
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Microsoft Corp., 405 F.3d 1326, 1329 (Fed. Cir. 2005), the court held that
when a '"whereby' clause states a condition that is material to patentability, it
cannot be ignored in order to change the substance of the invention."
However, the court noted that a "whereby clause in a method claim is not
given weight when it simply expresses the intended result of a process step
positively recited." Id. (quoting Minton v. Nat'! Ass 'n of Securities Dealers,
Inc., 336 F.3d 1373, 1381 (Fed. Cir. 2003)).
Here, we find the clause that recites, "wherein the first user's contact
list includes a plurality of contacts for different users and an address for each
contact ... " merely expresses the content or type of the data without
affecting the structure or function of the claimed system, such that we do not
give any patentable weight to the limitation. We, therefore, find Appellants'
arguments are not commensurate with the scope of the claims, as claims 12
and 16's system and storage, respectively, are not affected by the content or
type of the data.
Moreover, Appellants' Specification, again, provides no explicit
definition for the claimed "contact list." We agree with the Examiner's
findings and teachings of Bobde cited above, as well as the Examiner's
finding of anticipation, because under a broad but reasonable interpretation,
Bobde's Access Control List discloses a "contact list." Accordingly,
Appellants have not provided sufficient evidence or argument to persuade us
of any reversible error in the Examiner's reading of the contested limitations
on Bobde.
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Therefore, we sustain the Examiner's anticipation rejection of
independent claim 12 under 35 U.S.C. § 103(a), and grouped claim 16 which
falls therewith. See Claim Grouping, supra.
2. § 103(a) RejectionR2 of Claims 3, 4, 6, 9-11, 13-15, and 17-20
Appellants summarily contend "McDowell fails to cure the
deficiencies of Bobde" and "claims 3-7, 9-11, 13-15, and 17-20 should be
reversed at least for the reasons the rejection of independent claims 1, 12 and
16 should be reversed." App. Br. 13.
Mere attorney arguments and conclusory statements unsupported by
factual evidence are entitled to little probative value. In re Geisler, 116 F.3d
1465, 1470 (Fed. Cir. 1997); see also In re De Blauwe, 736 F.2d 699, 705
(Fed. Cir. 1984); and Ex parte Belinne, No. 2009-004693, slip op. at 7-8
(BP AI Aug. 10, 2009) (informative), available at http://www.uspto.gov/
web/offices/dcom/bpai/its/fd09004693.pdf. See In re Lovin, 652 F.3d at
1357 ("[W]e hold that the Board reasonably interpreted Rule 41.37 to
require more substantive arguments in an appeal brief than a mere recitation
of the claim elements and a naked assertion that the corresponding elements
were not found in the prior art."); cf In re Baxter Travenol Labs., 952 F.2d
388, 391 (Fed. Cir. 1991) ("It is not the function of this court to examine the
claims in greater detail than argued by an appellant, looking for [patentable]
distinctions over the prior art."). Arguments not made are therefore waived.
See 37 C.F.R. § 41.37(c)(l)(iv).
Accordingly, Appellants have not provided sufficient evidence or
argument to persuade us of any reversible error in the Examiner's reading of
the contested limitations on the cited prior art, or in the legal conclusion of
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obviousness. Therefore, we sustain the Examiner's obviousness Rejection
R2 of claims 3, 4, 6, 9-11, 13-15, and 17-20.
REPLY BRIEF
To the extent Appellants may advance new arguments in the Reply
Brief (Reply Br. 4--12) not in response to a shift in the Examiner's position
in the Answer, we note arguments raised in a reply brief that were not raised
in the appeal brief or are not responsive to arguments raised in the
Examiner's Answer will not be considered except for good cause, which
Appellants have not shown. See 37 C.F.R. § 41.41(b)(2).
CONCLUSIONS
(1) The Examiner did not err with respect to anticipation Rejection
RI of claims 1, 2, 5, 7, 8, 12, and 16 under 35 U.S.C. § 102(b) over the cited
prior art, and we sustain the rejection.
(2) The Examiner did not err with respect to obviousness Rejection
R2 of claims 3, 4, 6, 9-11, 13-15, and 17-20 under 35 U.S.C. § 103(a) over
the cited prior art combination of record, and we sustain the rejection.
DECISION
We affirm the Examiner's decision rejecting claims 1-20.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED
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