Ex Parte Bhasker et al

Patent Trial and Appeal Board

Jul 16, 2013

10888265 (P.T.A.B. Jul. 16, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte SAPAN BHASKER, SUSAN COHAN,
and PETER G. McCULLOUGH
____________________

Appeal 2010-005366
Application 10/888,265
Technology Center 2100
____________________

Before ALLEN R. MacDONALD, SCOTT R. BOALICK, and
BARBARA A. BENOIT, Administrative Patent Judges.

MacDONALD, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF CASE
Appellants appeal under 35 U.S.C. § 134(a) from a rejection of claims
1, 2, 4, 5, 7, 8, 10, and 12-19. Claims 3, 6, 9, and 11 have been cancelled.
We have jurisdiction under 35 U.S.C. § 6(b).
Exemplary Claims
Exemplary claims 1 and 10 under appeal read as follows (emphasis
added):
1. A method for providing metadata information for display in a
graphical format, comprising:
receiving from a web browser a request for information relating to a
platform-specific application, the request for information comprising a
request for dependency information of the platform-specific application on a
particular software program;
transmitting to a first platform-specific configuration and change
management ("CCM") application, a request for a first set of metadata
representing the requested information;
receiving the first set of metadata from the first platform-specific
CCM application in a non platform-specific format;
combining the first set of metadata and viewing instructions with a
second set of metadata received from a second platform-specific CCM
application, for creating a graphical representation of the metadata; and
outputting the combined metadata and viewing instructions.
10. A computer-readable storage medium encoded with the
processing instructions for presenting metadata information in a graphical
format, the processing instructions for directing a computer to perform the
steps of:
receiving from a web browser a request for information relating to a
platform-specific application, the request for information comprising a
request for dependency information of the platform-specific application on a
particular software program;
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transmitting to a first platform-specific configuration and change
management ("CCM") application, a request for a first set of metadata
representing the requested information;
receiving the first set of metadata from the first platform-specific
CCM application in a non platform-specific format;
combining the first set of metadata and viewing instructions with a
second set of metadata received from a second platform-specific CCM
application, for creating a graphical representation of the metadata; and
outputting the combined metadata and viewing instructions.

Rejections on Appeal
1. The Examiner rejected claims 1, 2, 4, 5, 7, 8, 10, 12-14, and
17-19 as being unpatentable under 35 U.S.C. § 103(a) over the combination
of O'Farrell (US 2004/0224674 Al), Chaney (WO 01/90949 Al), applicant’s
admission of prior art (“AAPA”), and Mayer (US 2002/0019864 Al).
2. The Examiner rejected claim 15 as being unpatentable under
35 U.S.C. § 103(a) over the combination of O'Farrell, Chaney, AAPA,
Mayer, and Tsukakoshi (US 5,926,623).
3. The Examiner rejected claim 16 as being unpatentable under
35 U.S.C. § 103(a) over O'Farrell, Chaney, AAPA, Mayer, and Gottsacker
(US 2004/0135805 Al).
Issues on Appeal
Did the Examiner err in rejecting claims 1, 2, 4, 5, 7, 8, 10, and 12-19
as being obvious?
Appellants’ Contention
Appellants contend that the Examiner erred in rejecting claims 1, 2, 4,
5, 7, 8, 10, and 12-19 under 35 U.S.C. § 103(a) because:
None of the O'Farrell citations discloses requesting, or
receiving, a first set of metadata from a first platform-specific
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CCM application in a non platform-specific format. To the
contrary, the cited sections of O'Farrell indicate that "business
data" (not metadata) is transferred from an enterprise source in
its native format, i.e., a platform-specific format, and not a
non platform-specific format.
(App. Br. 11).
ANALYSIS
We agree with the Appellants’ above recited contention.

NEW GROUND OF REJECTION
35 U.S.C. § 112, First Paragraph, Written Description
Pursuant to our authority under 37 C.F.R. § 41.50(b), we reject claims
1, 2, 4, 5, 7, 8, 10, and 12-19 under 35 U.S.C. § 112, first paragraph as
failing to comply with the written description requirement.
The claims contain subject matter which was not described in the
specification in such a way as to reasonably convey to one skilled in the
relevant art that the inventors, at the time the application was filed, had
possession of the claimed invention.
The first paragraph of 35 U.S.C. § 112 contains a written description
requirement that is separate and distinct from the enablement requirement.
Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1340 (Fed. Cir. 2010)
(en banc). The purpose of the written description requirement is to “ensure
that the scope of the right to exclude, as set forth in the claims, does not
overreach the scope of the inventor’s contribution to the field of art as
described in the patent specification.” Id. at 1353-54 (citation omitted). This
requirement “ensures that the public receives a meaningful disclosure in
exchange for being excluded from practicing an invention for a period of
time.” Id.
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To satisfy the written description requirement, the specification must
describe the claimed invention in sufficient detail that one skilled in the art
can reasonably conclude that the inventor had possession of the claimed
subject matter as of the filing date. Vas-Cath Inc. v. Mahurkar, 935 F.2d
1555, 1562-63 (Fed. Cir. 1991). Specifically, the specification must describe
the claimed invention in a manner understandable to a person of ordinary
skill in the art and show that the inventor actually invented the claimed
invention. Id.; Ariad, 598 F.3d at 1351. The written description requirement
does not demand any particular form of disclosure; however, “a description
that merely renders the invention obvious does not satisfy the requirement.”
Ariad, 598 F.3d at 1352 (citations omitted). The written description
requirement of 35 U.S.C. § 112, first paragraph, applies to all claims
including original claims that are part of the disclosure as filed. Id. at 1349.
Original claim language does not necessarily satisfy the written description
requirement for the claimed subject matter. Id.
First Rejection - Claims 1, 2, 4, 5, 7, 8, 10, and 12-19
Each of Appellants’ claims recites either:
(a) “receiving . . . in a non platform-specific format” (claims 1
and 10);
(b) “receive . . . in a non platform-specific format” (claim 7); or
(c) “operative to respond . . . in a non platform-specific format”
(claim 4).
Appellants’ originally filed Specification states:
The platform-specific CCM application 222 responds with a
query result including impact analysis metadata relating to the
software supported by the platform.
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(Spec. [0028] as filed). Beyond this Appellants have provided no written
description indicating that a non platform-specific format is to be used. We
note that Appellants amended the Specification to insert “in CSV format” 1
into paragraphs [0028], [0029], and [0030] as the format to be used for
returning query results.2 Beyond an indication that “CVS” was a known data
file format (Appendix I – page 91; provisional application 60/487,061;
incorporated by reference at page 1 of this application), we find that
Appellants’ Specification as originally filed is silent as to using a
non platform-specific format as the query result format.
Because Appellants’ disclosure, as originally filed, does not convey to
an ordinarily skilled artisan that Appellants had possession of the claimed
invention, we conclude that claims 1, 4, 7, and 10 do not have sufficient
written description support to satisfy 35 U.S.C. § 112, first paragraph.
All of Appellants’ claims share this same problem.
Second Rejection - Claims 1, 2, 4, 5, 7, 8, 10, and 12-19
Each of Appellants’ claims recites either:
(a) “combining the first set of metadata and viewing instructions with
a second set of metadata received from a second platform-specific
CCM application, for creating a graphical representation of the
metadata” (claims 1 and 10);

1 CSV is the well-known Comma Separated Values data format.
2 To the extent Appellants might have relied on this amendment to the
Specification (filed Sept. 19, 2007), which adds “CSV” as the query result
format in the Specification, such amendments constitute new matter and do
not provide evidence of written description support as originally filed in
2004.
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(b) “combine the first set of metadata information and viewing
instructions with a second set of metadata information received
from a second platform-specific CCM application” (claim 4); or
(c) “combine the first set of metadata and viewing instructions with a
second set of metadata received from a second platform-specific
CCM application, for creating a graphical representation of the
metadata” (claim 7).
Appellants’ originally filed Specification states (emphasis added):
In response, after obtaining the requested metadata and
combining it with viewing instructions, as described in greater
detail below, web server 150 transmits the requested metadata
and appropriate viewing instructions back to computer 110.
(Spec. [0020] as filed). Beyond this and several conclusory statements3, we
find no portion of Appellants’ Specification that provides a written
description of the “combining” which is claimed. We note that Appellants’
Specification incorporates numerous other applications by reference. Our
review of those applications also does not find the required written
description of the “combining” which is claimed. We find that Appellants’

3 “The embedded graphical viewer 212 includes the ability to collect and
combine data from several data sources, including relational databases,
multi-dimensional data sources, or flat files, for example, and present the
combined data in a single location.” (Spec. [0026] as filed).
“The server application 250 may combine the received metadata with
metadata obtained from other platform-specific CCM applications and
provides the processed query result to client web browser 210 for
presentation to the user.” (Spec. [0028] as filed).
“At block 315, metadata from each of the relevant platform-specific
applications is received by the server application, and the metadata results
are combined with viewing instructions for creating a graphical
representation of the results, as shown by block 320.” (Spec. [0033] as
filed).
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Specification as originally filed is essentially silent as to the “combining”
which is claimed. Because Appellants’ disclosure, as originally filed, does
not convey to an ordinarily skilled artisan that Appellants had possession of
the claimed invention, we conclude that claims 1, 4, 7, and 10 do not have
sufficient written description support to satisfy 35 U.S.C. § 112, first
paragraph.
All of Appellants’ claims share this same problem.4

NEW GROUND OF REJECTION
35 U.S.C. § 112, First Paragraph, Enablement
Pursuant to our authority under 37 C.F.R. § 41.50(b), we reject claim
10 under 35 U.S.C. § 112, first paragraph as failing to comply with the
enablement requirement.
The enabling disclosure of Appellants’ Specification is not
commensurate in scope with claim 10.
Claim 10
To avoid confusion, we begin by discussing what Appellants’ claim
10 is not. Claim 10 is not a standard Beauregard-type computer program

4 This panel contemplated whether the functionally defined elements to
“combine” of system and apparatus claims 4, 5, 7, and 8, should be
construed as “means-plus-function” elements and rejected under
35 U.S.C. § 112, second paragraph, as indefinite for failing to have
corresponding structure as required under 35 U.S.C. § 112, sixth paragraph.
Ultimately, the panel deemed such a rejection to be redundant as the current
rejection gives Appellants sufficient notice of the deficiency of the
Specification which forms the basis for either rejection under
35 U.S.C. § 112.
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product claim.5 The claims set forth in Beauregard’s patent were structured
as a combination of plural so-called means-plus-function elements.6 In
contrast, Appellants’ claim 10 recites (emphasis added):
A computer-readable storage medium encoded with the
processing instructions for presenting metadata information in a

5 [T]he Board rejected Beauregard’s computer program product
claims on the basis of the printed matter doctrine. Beauregard
appealed. The Commissioner now states “that computer
programs embodied in a tangible medium, such as floppy
diskettes, are patentable subject matter under 35 U.S.C. § 101
and must be examined under 35 U.S.C. §§ 102 and 103.” The
Commissioner states that he agrees with Beauregard's position
on appeal that the printed matter doctrine is not applicable.
Thus, the parties are in agreement that no case or controversy
presently exists.
In re Beauregard, 53 F.3d 1583, 1584 (Fed. Cir. 1995).

6 Beauregard et al (US 5,710,578), claim 1 (emphasis added).
An article of manufacture comprising:
a computer usable medium having computer readable program code
means embodied therein for causing a polygon having a boundary
definable by a plurality of selectable pels on a graphics display to be
filled, the computer readable program code means in said article of
manufacture comprising:
computer readable program code means for causing a computer to
effect, with respect to one boundary line at a time, a sequential
traverse of said plurality of selectable pels of each respective said
boundary line;
computer readable program code means for causing the computer to
store in an array during said traverse a value of an outer pel of said
boundary of said plurality of selectable pels for each one of a plurality
of scan lines of said polygon; and
computer readable program code means for causing the computer to
draw a fill line, after said traverse, between said outer pels having said
stored values, for each said one of said scan lines.
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graphical format, the processing instructions for directing a
computer to perform the steps of:
receiving . . .;
transmitting . . .;
receiving . . .;
combining . . .; and
outputting . . . .
The scope of claim 10 encompasses any and all (present and future)
processing instructions for directing a computer to perform the claimed
steps. Yet, Appellants’ Specification discloses at most only those processing
instructions known to the inventor. Our reviewing court has concluded that
such all-encompassing claims do not comply with the enablement
requirement of 35 U.S.C. § 112, first paragraph.
Because the count at issue purports to cover all DNAs that code
for <>–IF, it is also analogous to a single means claim,
which has been held not to comply with the first paragraph of
section 112. See In re Hyatt, 708 F. 2d 712, [714]
(Fed. Cir. 1983) (“the enabling disclosure of the specification
[must] be commensurate in scope with the claim under
consideration.”) Claiming all DNA’s that achieve a result
without defining what means will do so is not in compliance
with the description requirement; it is an attempt to preempt the
future before it has arrived.
Fiers v. Revel, 984 F.2d 1164, 1171 (Fed. Cir. 2004)(emphasis added).
The proper statutory basis for the rejection of a single means
claim is the requirement of the first paragraph of § 112 that the
enabling disclosure of the specification be commensurate in
scope with the claim under consideration.
The long-recognized problem with a single means claim
is that it covers every conceivable means for achieving the
stated result, while the specification discloses at most only
those means known to the inventor. See O’Reilly v. Morse, 56
U.S. (15 How.) 62, 112, 14 L.Ed. 601 (1853).
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In re Hyatt, 708 F.2d 712, 714 (Fed. Cir. 1983)(footnotes omitted).
We note that claims in the standard Beauregard-type computer
program product means-plus-function format avoid this enablement
problem.
The final paragraph of § 112 saves combination claims
drafted using means-plus-function format from this problem by
providing a construction of that format narrow enough to avoid
the problem of undue breadth as forbidden by the first
paragraph. But no provision saves a claim drafted in means-
plus-function format which is not drawn to a combination, i.e.,
a single means claim.
Hyatt, 708 F.2d at 715.

37 C.F.R. § 41.50(b)
This decision contains a new ground of rejection pursuant to 37
C.F.R. § 41.50(b). 37 C.F.R. § 41.50(b) provides “[a] new ground of
rejection pursuant to this paragraph shall not be considered final for judicial
review.”
37 C.F.R. § 41.50(b) also provides that Appellants, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new grounds of rejection to
avoid termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new evidence relating
to the claims so rejected, or both, and have the matter
reconsidered by the examiner, in which event the proceeding
will be remanded to the examiner. . . .
(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same record. . . .
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CONCLUSIONS
(1) We reject claims 1, 2, 4, 5, 7, 8, 10, and 12-19 under 35 U.S.C.
§ 112, first paragraph, as failing to comply with the written description
requirement.
(2) We reject claim 10 under 35 U.S.C. § 112 first paragraph, as
failing to comply with the enablement requirement.
(3) Claims 1, 2, 4, 5, 7, 8, 10, and 12-19 are not patentable.

DECISION
The Examiner’s rejections of claims 1, 2, 4, 5, 7, 8, 10, and 12-19 are
reversed and new rejections are entered for claims 1, 2, 4, 5, 7, 8, 10, and
12-19.

REVERSED
37 C.F.R. § 41.50(b)

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