Ex Parte Beyer et al

Board of Patent Appeals and Interferences

Mar 17, 2011

09853961 (B.P.A.I. Mar. 17, 2011)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
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APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO. I
091853,961 0511012001 Dirk M. Beyer 10013654-1 6594
22879 7590 03/21/2011
HEWLETT-PACKARD COMPANY
Intellectual Property Administration
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Mail Stop 35
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EXAMINER
CHAMPAGNE, DONALD
r ARTUNIT 1 PAPERNUMBER 1
Please find below andlor attached an Office communication concerning this application or proceeding.
NOTIFICATION DATE
The time period for reply, if any, is set in the attached communication.
DELIVERY MODE
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
03/21/2011 ELECTRONIC
JERRY .SHORMA @ HP.COM
ipa.mail@hp.com
laura.m.clark@hp.com
PTOL-90A (Rev. 04107)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
Ex parte DIRK M. BEYER,
CIPRIANO A. SANTOS, and
BILAL IQBAL
Appeal 2009-014781
Application 09/853,96 1
Technology Center 3600
Before HUBERT C. LORIN, ANTON W. FETTING, and
BIBHU R. MOHANTY, Administrative Patent Judges.
LORIN, Administrative Patent Judge.
1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. 5 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. 5 41.52, begins to run from the "MAIL DATE"
(paper delivery mode) or the "NOTIFICATION DATE" (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.
Appeal 2009-014781
Application 09/85 3,96 1
STATEMENT OF THE CASE
Dirk M. Beyer et al. (Appellants) seek our review under 35 U.S.C.
5 134 (2010) of the final rejection of claims 1- 10 and 20-30. We have
jurisdiction under 35 U.S.C. 5 6(b) (2010).
SUMMARY OF DECISION
We AFFIRM.
THE INVENTION
This invention is a method and apparatus for "on-line selection of
tasks such that a desired distribution of these tasks is followed."
Specification 1 : 6- 8.
Claim 1, reproduced below, is illustrative of the subject matter on
appeal.
1. A method of task selection comprising the steps
of:
[A] determining a specified distribution of a
plurality of tasks;
[B] assuming a first event in a sequence of
events occurs, each event in said sequence of
events triggering execution of one of said plurality
of tasks;
[C] determining a plurality of hypothetical
distributions of said plurality of tasks for each task
hypothetically selected for execution from said
2 Our decision will make reference to the Appellants' Appeal Brief ("Br.,"
filed Jun. 8, 2007) and to the Examiner's Answer ("Answer," mailed Sep.
20,2007).
Appeal 2009-014781
Application 09/85 3,96 1
plurality of tasks; and
[Dl selecting a first task for execution from
said plurality of tasks, which when selected
provides a corresponding hypothetical distribution
of said plurality of tasks that is closest to said
specified distribution of said plurality of tasks for
implementation of said specified distribution.
THE REJECTION
The Examiner relies upon the following as evidence of
unpatentability :
Cannon US 6,286,005 B1 Sep. 4,2003
The following rejection is before us for review:
1. Claims 1-10 and 20-30 are rejected under 35 U.S.C. 5 102(e) as
being anticipated by Cannon.
ISSUE
The issue is whether claims 1-10 and 20-30 are anticipated under 35
U.S.C. 5 102(e) by Cannon. Specifically, the issue is whether the Appellants
have shown that the Examiner erred in finding that claims 1 and 20 read on
Cannon.
FINDINGS OF FACT
We find that the following finding of fact (FF) is supported by at least
a preponderance of the evidence. Ethicon, Znc. v. Quigg, 849 F.2d 1422,
1427 (Fed. Cir. 1988) (explaining the general evidentiary standard for
proceedings before the Office).
Appeal 2009-014781
Application 09/85 3,96 1
We adopt the Examiner's findings of facts as related to the rejection
of claims 1 and 20 under 35 U.S.C. 5 102 (e) as being anticipated by
Cannon. Answer 3-4.
ANALYSIS
The rejection of claims 1-1 0 and 20-30 under $1 02(e) as being anticipated
by Cannon
The Appellants argue claims 1- 10 and 20-30 as a group. Br. 16- 17.
We select claim 1 as the representative claim for this group, and the
remaining claims 2-10 and 20-30 stand or fall with claim 1. 37 C.F.R.
5 41.37(c)(l)(vii) (2010).
The Appellants argue that each of the recited steps, labeled A-D
above, is not anticipated by Cannon. Br. 1 1 - 17.
As to step A, the Appellants argue that Cannon does not describe this
step. Br. 12- 13. The Appellants argue:
For example, if the plurality of tasks is
advertisement, the specified distribution describes
the overall presentation of the advertisements to a
specific group of customers. . . .
Instead, the Cannon reference teaches a
method for selecting an additional spot for
inclusion within an advertising schedule.
Specifically, the Cannon reference teaches the
selection of one of a plurality of possible
advertising time spots.
Br. 12.
The Examiner agrees with the Appellants' description of the Cannon
reference but argues that when given the broadest reasonable interpretation,
step A reads on Cannon. Answer 5-6. To support their argument, the
Appeal 2009-014781
Application 09/85 3,96 1
Examiner notes that the Specification contains no express definition for any
of the claimed terms and argues that the Appellants are reading limitations
from the Specification into the claims. Answer 5.
We agree with the Examiner. The Appellants argument compares an
example from the Specification to the Cannon reference in order to conclude
that Cannon does not anticipate step A. See Br. 12- 13. However, the issue
is not whether Cannon anticipates an embodiment disclosed in the
Specification, but whether Cannon expressly or inherently describes step A.
"A claim is anticipated only if each and every element as set forth in the
claim is found, either expressly or inherently described, in a single prior art
reference." Verdegaal Bros., Inc. v. Union Oil Co. of Cal., 814 F.2d 628,
631 (Fed. Cir. 1987). The Appellants do not challenge whether Cannon
expressly or inherently describes step A as set forth in the claim.
Further, we note that the Appellants do not challenge whether the
Examiner's construction of step A as broadly encompassing Cannon's
description is reasonable. During examination of a patent application, a
pending claim is given the broadest reasonable construction consistent with
the specification and should be read in light of the specification as it would
be interpreted by one of ordinary skill in the art. In re Am. Acad. of Sci.
Tech Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004).
[W]e look to the specification to see if it provides a
definition for claim terms, but otherwise apply a
broad interpretation. As this court has discussed,
this methodology produces claims with only
justifiable breadth. In re Yamamoto, 740 F.2d
1569, 1571 (Fed. Cir. 1984). Further, as applicants
may amend claims to narrow their scope, a broad
construction during prosecution creates no
Appeal 2009-014781
Application 09/85 3,96 1
unfairness to the applicant or patentee. Am. Acad.,
367 F.3d at 1364.
In re ICON Health and Fitness, Znc., 496 F.3d 1374, 1379 (Fed. Cir. 2007).
Limitations appearing in the specification but not recited in the claim are not
read into the claim. E-Pass Techs., Znc. v. 3Com Corp., 343 F.3d 1364,
1369 (Fed. Cir. 2003). We note that the Appellants did not file a reply brief.
The Examiner has established a prima facie showing that step A is
anticipated by Cannon (see Answer 3 and 5), and we find the Appellants'
argument unpersuasive as to error in the Examiner's showing.
As to step B, similar to their argument to traverse step A above, the
Appellants argue that Cannon does not describe step B by providing an
example from the Specification and comparing the example to Cannon. Br
13-14. The Examiner again responds that the Appellants are reading
limitations from the Specification into the claims and that given the broadest
reasonable construction, step B read on Cannon. Answer 6-7. For the same
reasons as discussed above with regards to step A, we agree with the
Examiner. The Examiner has established a prima facie showing that step B
is anticipated by Cannon (see Answer 3 and 6), and we find the Appellants'
argument unpersuasive as to error in the Examiner's showing.
As to steps C and D, the Appellants again argue that Cannon does not
describe steps C and D by providing an examples from the Specification and
comparing the examples to Cannon. Br. 14-15. For example, the Appellants
argue that "embodiments of the present invention are distinguishable from
the Cannon reference in that scoring is determined from a singular plurality
of tasks, and not from a multiple plurality of possible tasks" (Br. 14) and
"the Cannon reference does not disclose the selection of a task from a
singular and unvarying plurality of tasks used to determine a specified
Appeal 2009-014781
Application 09/85 3,96 1
distribution" (Br. 15). The Examiner again responds that the Appellants are
reading limitations from the Specification into the claims and that given the
broadest reasonable construction, step B read on Cannon. Answer 8- 10.
Further, the Examiner point out that claim 1 does not recite calculating a
hypothetical distribution (Br. 8) or a singular and unvarying plurality of
tasks (Br. 10).
Again, we agree with the Examiner for the reasons discussed above
with regards to step A. The Examiner has established a prima facie showing
that steps C and D are anticipated by Cannon (see Answer 4 and 8-10), and
we find the Appellants' argument unpersuasive as to error in the Examiner's
showing.
Finally, we note that claims 20-30 recite an apparatus, unlike claim 1,
which is directed to a method. "[Alpparatus claims cover what a device is,
not what a device does." Hewlett-Packard Co. v. Bausch & Lomb Znc., 909
F.2d 1464, 1468 (Fed. Cir. 1990). However, the Appellants' rely upon their
same arguments to traverse the rejection of claim 20 made to traverse the
rejection of claim 10. For example, see Br. 12 ("claims 1 and 20 set forth a
method"). For the reasons discussed, above we find that the Examiner has
established a prima facie showing in rejecting claims 20-30 as being
anticipated by Cannon and find that the Appellants' argument unpersuasive
as to error in the Examiner's showing. Further, we note that the Appellants'
argument does not challenge whether the structure required by claim 20 is
anticipated by Cannon.
Filing a Board appeal does not, unto itself,
entitle an appellant to de novo review of all aspects
of a rejection. If an appellant fails to present
arguments on a particular issue - or, more broadly,
Appeal 2009-014781
Application 09/85 3,96 1
on a particular rejection - the Board will not, as a
general matter, unilaterally review those
uncontested aspects of the rejection. . . Thus, the
Board will generally not reach the merits of any
issues not contested by an appellant.
In re Frye, 94 USPQ2d 1072,1075 2009-006013 (BPAI
Accordingly, we find that the Appellants have not overcome the
rejection of claims 1-10 and 20-30 under 35 U.S.C. 5 102(e) as being
anticipated by Cannon.
DECISION
The decision of the Examiner to reject claims 1-10 and 20-30 is
affirmed.
No time period for taking any subsequent action in connection with this
appeal may be extended under 37 C.F.R. 5 1.136(a). See 37 C.F.R.
5 1.136(a)(l)(iv) (2010).
AFFIRMED
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HEWLETT-PACKARD COMPANY
Intellectual Property Administration
3404 E. Harmony Road
Mail Stop 35
FORT COLLINS CO 80528