Ex Parte Burckart et alDownload PDFPatent Trial and Appeal BoardAug 30, 201812820051 (P.T.A.B. Aug. 30, 2018) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 12/820,051 06/21/2010 84986 7590 09/04/2018 GRASSOPLLC 1818 LIBRARY STREET, SUITE 500 RESTON, VA 20190 FIRST NAMED INVENTOR Erik John Burckart 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. RSW920100049US 1 1440 EXAMINER ROSTAMI, MOHAMMAD S ART UNIT PAPER NUMBER 2154 NOTIFICATION DATE DELIVERY MODE 09/04/2018 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): admin@grassoip.com vromme@grassoip.com fgrasso@grassoip.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte ERIK JOHN BURCKART, CURTISS JAMES HOWARD, ANDREW IVORY, and AARON KYLE SHOOK Appeal2017-001067 Application 12/820,051 1 Technology Center 2100 Before JEAN R. HOMERE, BARBARA A. BENOIT, and JOHN R. KENNY, Administrative Patent Judges. KENNY, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE This is an Appeal under 35 U.S.C. § 134 from a final rejection of claims 1-8 and 17-34, which constitute all pending claims. Final Act. 1. We have jurisdiction under 35 U.S.C. § 6(b ). We AFFIRM-IN-PART. 1 According to Appellants, the real party in interest is International Business Machines Corporation. App. Br. 4. Appeal2017-001067 Application 12/820,051 CLAIMED INVENTION Appellants' claimed invention relates to the population and concealment of user data in multiuser input environments. Spec. ,r 1. Claim 1 is exemplary and reads: 1. An article of manufacture comprising: a non-transitory computer readable medium, the computer readable medium storing instructions thereon for managing the completion of an electronic form by more than one user, the instructions, which when executed by a processor, compnse: displaying a multi-user electronic form to a first user, the multi-user electronic form having a plurality of fields, some of the fields having a first confidentiality designation and some of the fields having a second confidentiality designation; receiving population data for one or more fields from a first user; populating one or more fields using the received first user population data; determining if a populated field has the first confidentiality designation or a different confidentiality designation; based on the determination, displaying fields, with population data from the first user, to a second user after determining, if the second user has authority to access populated fields having the determined confidentiality designation; and using session information from both the session of the first user and session information from the session of the second user to identify one or more other peers in a group, the one or more other peers in a group necessary to complete the form. Hayward Dziejma REFERENCES US 7,930,411 Bl US 2005/0028084 Al 2 Apr. 19, 2011 Feb.3,2005 Appeal2017-001067 Application 12/820,051 Levas Johnson US 2005/0210263 Al US 2010/0131584 Al REJECTIONS Sep.22,2005 May 27, 2010 Claims 1-8 and 17-34 stand rejected on the ground of nonstatutory obviousness-type double patenting over claims 9-16 and 21-28 of Serial No. 13/416,092 ("'092 application"). Final Act. 2; April 6, 2015 Office Action 5. Claims 1-8 and 17-21, 26, 28, and 33 stand rejected under 35 U.S.C. § 103 as unpatentable over the combination of Levas, George, and Hayward. Final Act. 11-24. Claims 22, 23, 27, 29, 30, and 34 stand rejected under 35 U.S.C. § 103 as unpatentable over the combination of Levas, Hayward, and Johnson. Final Act. 24--29. Claims 24, 25, 31, and 32 stand rejected under 35 U.S.C. § 103 as unpatentable over the combination of Levas, Hayward, and Dziejma. Final Act. 29-32. RELATED APPEAL The '092 application, upon which the provisional obviousness type double patenting rejection is based, is a continuation of Serial No. 12/820,051, the application at issue in this Appeal. The '092 application was the subject of Appeal No. 2014-004563 ("'563 Appeal"), and we addressed many of the issues raised in this Appeal in our Decision in the '563 Appeal, issued June 2, 2016 ("'563 Decision"). As shown by the table below, when the '563 Decision issued, briefing in this Appeal was proceeding: 3 Appeal2017-001067 Application 12/820,051 Date October 8, 2015 March 18, 2016 June 2, 2016 August 25, 2016 October 24, 2016 Filings in this Appeal '553 Decision Final Action issued. Appeal Brief filed. Decision issued. Answer filed. Reply filed. As indicated above, our '563 Decision issued after the Final Action and the Appeal Brief for this Appeal were filed. Therefore, the Examiner and Appellants did not have an opportunity to address our '563 Decision in the Final Action or Appeal Brief. They, however, had the opportunity to address that decision and its relevance to this Appeal in their Answer and Reply Brief, which Patent Owner did in the Reply Brief. Reply Br. 10. ANALYSIS Obviousness Rejections For the obviousness rejections, Appellants raise many issues resolved by our '5 63 Decision, in particular: 4.1.2. 2 whether Johnson is analogous art; 4.3 whether Levas teaches or suggests "determining if a populated field has the first confidentiality designation or a different confidentiality designation"; 4.4 whether Levas teaches or suggests "displaying a multi-user electronic form ... based on the determination, displaying fields, with population data from the first user, to a second user after determining, 2 For ease of reference, we label each of these issues with the section number in which they appear in the Appeal Brief for this Appeal. 4 Appeal2017-001067 Application 12/820,051 if the second user has authority to access populated fields having the determined confidential designation"; 4.5 whether relying on Levas, a reference used in each rejection, to provide a motivation to modify the art constitutes impermissible hindsight; 4.7 whether Levas teaches or suggests the limitation of "querying session data to determine if the second user has authority to access populated field having the determined confidentiality designation"; 4.8 whether Dziejma teaches or suggests the limitation of "validating one or more security features of the form prior to submission of the form"· ' 4.9 whether combining Levas with Dziejma would change Levas's principle of operation and whether Levas teaches away from that combination; 3 4.10 whether Levas teaches or suggests populating fields in real-time with both users populating fields during a joint session; and 4.11 whether Levas teaches or suggests "using session information from both the session of the first user and session information from the session of the second user to identify one or more other peers in a group." App. Br. 2-3; '563 App. Br. 2-3 ('563 arguments 4.1.3, 4.4, 4.5, 4.13, 4.8, 4.6, 4.7, 4.9, and 4.3, respectively4); '563 Decision, 4--11. In our '563 Decision, we resolved issues 4.1.2 (at 10), 4.3 (at 4--5), 4.4 (at 4--5), 4.5 (at 6), 4.7 (at 7-8), 4.8 (at 5), and 4.9 (at 5---6) in favor of the 3 The heading for section 4.9 of the Appeal Brief asserts that combining Levas with Heyward and Dziejma would change a principle of operation and Levas teaches away from that combination. App. Br. 19. The argument presented under that heading, however, focuses solely on the combination of Levas and Dziejma. Id. at 19-20. 4 For example, the limitation addressed in argument 4.3 is recited by claims 9 and 28 in this Application, whereas it is recited by claims 1 and 17 of the '092 application. 5 Appeal2017-001067 Application 12/820,051 Examiner, and we resolved issues 4.10 (at 8) and 4.11 (at 3) in favor of Appellants. We maintain our findings on these issues from the '5 63 Decision. In the '563 Appeal, neither Appellants nor the Examiner requested reconsideration of our Decision there, and Appellants did not appeal that Decision. Further, in this Appeal, neither the Examiner nor Appellants request that we alter any of the findings from our '563 Decision. To the contrary, Appellants urge us to apply one of our findings here. Reply Br. 10. Under the circumstances, we maintain the findings from our '563 Decision and resolve issues 4.1.2, 4.3, 4.4, 4.5, 4.7, 4.8, and 4.9 in favor of the Examiner and resolve issue 4.10 in favor of Appellants. As discussed below, although we resolved issue 4.11 in favor of Appellants in the '563 Decision, that issue is not relevant here. Below we address (i) the issues that Appellants raised for the first time in this Appeal and (ii) the obviousness rejections that are or are not sustained as a result of (a) our findings on those issues and (b) our findings in the '5 63 Decision. Claim 1 Appellants raise six issues for claim 1, of which, one, 4.2, was not raised in the '563 Appeal. App. Br. 7-16, 21-24. For issue 4.2, Appellants assert that the computer readable medium of claim 1 is limited to a medium on one physical computer and that the Examiner erred in rejecting claim 1 because the computer readable medium cited in Levas is on more than one physical computer. App. Br. 9-13; Reply Br. 5-7. We are not persuaded by this argument because Appellants do not set forth any reason why the recited computer readable medium cannot be on more than one physical computer. App. Br. 9-13; Reply Br. 5-7. 6 Appeal2017-001067 Application 12/820,051 An issue that Appellants raised here and in the '563 Appeal, is whether Levas by itself fails to teach or suggest the use of the session information as recited in claim 1 of this Application (issue 4.11 in this Appeal). We ruled in favor of Appellants on this issue in the '563 Decision and, as a result, reversed the obviousness rejection of then-pending '092 claims 10 and 28. '563 Decision, 6-7. Appellants urge us to make the same ruling here. Reply Br. 10. This issue (4.11), however, is not relevant to this Appeal because the Examiner does not rely on Levas alone as teaching or suggesting the session information limitation of claim 1. Ans. 14. Instead, the Examiner relies on the combination of Levas and Heyward for that limitation. Id. Therefore, in this Appeal, whether Levas by itself teaches or suggests the limitation is not of concern. In re Merck & Co., Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986) ("Non-obviousness cannot be established by attacking references individually where the rejection is based upon the teachings of a combination of references."). The other issues Appellants raise for claim 1 (i.e., 4.1.2, 4.3, 4.4, and 4.5) were resolved against Appellants in our '563 Decision (at 10, 4--5, 4--5, and 6, respectively). App. Br. 7-9, 13-16. Accordingly, we sustain the obviousness rejection of claim 1. Claims 4 and 20 For claims 4 and 20, Appellants raise issue 4.7, which we ruled against Appellants on in our '563 Decision (at 7-8). Accordingly, we sustain the obviousness rejection of claims 4 and 20. Claim 8 For claim 8, Appellants raise issue 4.10, for which we ruled in favor of Appellants in our '563 Decision (at 8). Accordingly, we do not sustain the obviousness rejection of claim 8. 7 Appeal2017-001067 Application 12/820,051 Claim 17 The issues Appellants raise for claim 1 7 are similar to those for claim 1. App. Br. 9-16; Reply Br. 5-8. The preamble of claim 17, however, recites "a computer," whereas claim 1 recites a "computer readable medium." Appellants argue that the recitation of a "computer" in the preamble of claim 17 is a claim limitation and Levas does not teach or suggest that limitation because Leva's pertinent functionality is performed by more than one physical computer. App. Br. 9-12; Reply Br. 5-7. We are not persuaded by this argument because Appellants provide no reason why this preamble recitation should be construed as limiting and further do not provide any reason why the term "computer" should exclude virtual computers, which can be distributed on more than one physical computer. App. Br. 9-16; Reply Br. 5-8. Accordingly, we sustain the rejection of claim 17. Claims 22, 27, 29, 34 and Appellants' argument concerning combining Levas and Hayward In the Appeal Brief, Appellants argue that the Examiner does not provide any specific citations in Levas or Heyward to combine their teachings to reject claims 22-25, 27, 29-32, and 34. App. Br. 16. In response, the Examiner cites columns 1--4 of Heyward as teaching the deficiencies and improvements to verification and fraud prevention, thereby providing a motivation of reducing security risks. Ans. 9-10. In their Reply Brief, Appellants argue that the Examiner changed his position and that Levas teaches away from the combination because Levas teaches away from splitting activities between backend servers and client computers. Reply Br. 9. To the extent Appellants are arguing that the Examiner's purported change in position should be deemed a new rejection, Appellants needed to 8 Appeal2017-001067 Application 12/820,051 raise that issue via petition, not by argument to the Board. 37 C.F.R. § 4I.30(a). Regarding the argument that Levas teaches away from splitting activities between backend servers and client computers, we ruled against Appellants on that issue in our '563 Decision (at 5---6). Accordingly, we do not find Appellants' arguments regarding the combination of Levas or Heyward and claims 22-25, 27, 29-32, and 34 to be persuasive. For claims 22, 27, 29, and 34, Appellants raise no further issues. Accordingly, we sustain the obviousness rejections of those claims. For claims 23-25 and 30-32, Appellants raise other issues, which we address below. Claims 2 3 and 3 0 In the Appeal Brief, for claims 23 and 30, Appellants raise the issue ( 4.12) of whether the cited art teaches or suggests that "the authority of the second user changes based on the amount of time since the second user has logged on." App. Br. 24--25. In their Reply Brief, Appellants withdraw their arguments for that issue. Reply Br. 10. Accordingly, we sustain the obviousness rejection of claims 23 and 30. Claims 24, 25, 31, and 32 For claims 24, 31, and 32, Appellants raise issue 4.9, and, for claim 25, Appellants raise issues 4.8 and 4.9. We ruled against Appellants on issues 4.8 and 4.9 in our '563 Decision (at 5---6). Accordingly, we sustain the obviousness rejections of claims 24, 25, 31, and 32. Claims 2, 3, 5-7, 18, 19, 21, 26, 28, and 33 Appellants do not separately argue claims 2, 3, 5-7, 18, 19, 21, 26, 28, and 33, and none of those claims depend from claim 8. Accordingly, we sustain the obviousness rejections of claims 2, 3, 5-7, 18, 19, 21, 26, 28, and 33. 9 Appeal2017-001067 Application 12/820,051 Provisional Obviousness Type Double Patenting Rejection We decline to address the merits of the provisional obviousness-type double patenting rejection. On appeal, neither Appellants nor the Examiner address the merits of the pending provisional obviousness-type double patenting rejection. Further, Appellants amended the claims of the '092 application after the Examiner issued the provisional obviousness-type double patenting rejection, 5 and the '092 application subsequently issued as U.S. Patent No. 9,514,237. Under the circumstances, we decline to address the merits of this provisional rejection. Ex parte Jerg, 2012 WL 1375142 at * 3 (BP AI 2012) (informative) ("Panels have the flexibility to reach or not reach provisional obviousness-type double-patenting rejections.") (citing Ex parte Moncla, 95 USPQ2d 1884 (BP AI 2010) (precedential) ). If there is ongoing prosecution, we leave it to the Examiner to decide in the first instance whether an obviousness-type double patenting rejection is warranted in light of the amendments made to the claims of the '092 application. If the rejection is warranted, the rejection should be non- provisional due to the issuance of U.S. Patent No. 9,514,237. DECISION We affirm the rejections under 35 U.S.C. § 103(a) of claims 1-7 and 17-34. We reverse the rejection under 35 U.S.C. § 103(a) of claim 8. We decline to address the merits of the provisional obviousness-type double patenting rejection. 5 '092 Application Prosecution History, Amendment After Decision on Appeal, filed July 28, 2016, pp. 2-6. 10 Appeal2017-001067 Application 12/820,051 No time period for taking any subsequent action in connection with this Appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. § 1.136(a)(l )(iv). AFFIRMED-IN-PART 11 Copy with citationCopy as parenthetical citation