10871120 - (R) (P.T.A.B. Sep. 9, 2013)

Ex Parte Chen et al

Patent Trials and Appeals BoardSep 9, 2013

10871120 - (R) (P.T.A.B. Sep. 9, 2013)

UNITED STATES PATENT AND TRADEMARKOFFICE 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 APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO. 10/871,120 06/18/2004 Iue-Shuenn Chen 3875.0120001 9713 26111 7590 01/29/2014 STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C. 1100 NEW YORK AVENUE, N.W. WASHINGTON, DC 20005 EXAMINER RASHID, HARUNUR ART UNIT PAPER NUMBER 2497 MAIL DATE DELIVERY MODE 01/29/2014 PAPER 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. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte IUE-SHUENN CHEN and KEVIN PATARIU ___________ Appeal 2011-003243 Application 10/871,120 Technology Center 2400 ____________ Before KALYAN K. DESHPANDE, JASON V. MORGAN, and DANIEL N. FISHMAN, Administrative Patent Judges. FISHMAN, Administrative Patent Judge. DECISION ON REQUEST FOR REHEARING Appeal 2011-003243 Application 10/871,120 2 This is a Request for Rehearing (“Request”) under 37 C.F.R. § 41.52(a)(3) responsive to our Decision on Appeal (“Decision”) mailed Sept. 9, 2013 reversing the Examiner’s rejections under 35 U.S.C. §§ 102 and 103 (Decision 3-4) and issuing a new ground of rejection for independent claims 1, 12, and 23 under 35 U.S.C. § 103(a) as unpatentable over Applicants’ Admitted Prior Art (“AAPA”) and Peterka (US 2002/0174366 A1) (Decision 5-10). We are unpersuaded that the Decision is in error and do not modify the Decision. REQUEST FOR REHEARING Appellants argue that the Decision is error for the following reasons: 1. Appellants argue the Decision improperly construed “pairing” and “corresponds to” in the claims. Request 2-4. 2. Appellants argue the Decision improperly failed to consider Appellants’ purported express disclaimers in prosecution regarding interpretation of “sending . . . along with” in the claims. Request 4-6. 3. Appellants argue the Decision improperly relies on extrinsic evidence in construing terms of the claims. Request 6-7. ANALYSIS Argument 1 Appellants argue that the use of terms “pairing” and “corresponds to” in close proximity, as in the limitation “pairing a rule with a security key and an address . . . wherein the rule corresponds to the security key” of claim 1, Appeal 2011-003243 Application 10/871,120 3 gives rise to “an inference that a different meaning should be assigned to each term.” Request 2-3. Appellants argue that the Decision construed “paired” and “corresponds to” as effectively the same—i.e., as “associated (e.g., ‘paired’) in any manner.” Request 3. Appellants contend that the intrinsic record (Spec. ¶ 64) clarifies that the term “corresponds to” refers to specific relationships between a rule and a security key. Request 4. We are unpersuaded that the Decision is in error in construing the terms “paired” and “corresponds to” as essentially the same—i.e., as associated in any manner. [T]he PTO applies to the verbiage of the proposed claims the broadest reasonable meaning of the words in their ordinary usage as they would be understood by one of ordinary skill in the art, taking into account whatever enlightenment by way of definitions or otherwise that may be afforded by the written description contained in the applicant’s specification. In re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997). Specification paragraph 64 merely recites exemplary embodiments of a rule and a security key that establish relationships between the rule and the security key. These exemplary embodiments are not recited in the newly rejected claims. “Though understanding the claim language may be aided by the explanations contained in the written description, it is important not to import into a claim limitations that are not a part of the claim.” SuperGuide Corp. v. DirecTV Enters., Inc., 358 F.3d 870, 875 (Fed. Cir. 2004). We decline to import the exemplary embodiments of Specification paragraph 64 to define the term “corresponds to” in the claims. Rather, we find “corresponds to” is broadly, but reasonably, construed in the Decision to encompass “associated (e.g., ‘paired’) in any manner.” Decision 7. Furthermore, we observe that the sentence preceding Appellants’ selected Appeal 2011-003243 Application 10/871,120 4 quotation of Specification paragraph 64 (Request 3) states, “[t]he security command may comprise a rule, where the rule may be associated with characteristics of the destination module 715, for example.” Spec. ¶ 64 (emphasis added). Thus, we find the Specification’s use of the phrase “associated with” in exemplifying rule/key relationships positively supports our interpretation of the term “corresponds to” as including any association between the rule and security key. In like manner, we find no clear definition of the term “paired” in the Specification. In view of the above discussion, we are unpersuaded that the Decision improperly construes “pairing” and “corresponds to” in the claims. Argument 2 The Decision states, “we find that although the rule, address, and key of Peterka may be sent to the client in separate transmissions, they are sent ‘along with’ one another in that all are sent to the client in some sequence over time in one or more messages or transmissions.” Decision 9. Appellants argue the Decision improperly interprets “sending . . . along with” as encompassing sending the recited elements in one or more transmissions. Request 4-5. Appellants specifically argue that this interpretation improperly disregards Appellants’ purported express disclaimers in prosecution. Id. Purportedly evidencing such express disclaimers, Appellants provide quotations from prior filings in which Appellants emphasize that the rule, key, and address are “all sent together.” Request 5. For example, Appellants state: The Appellant respectfully disagrees, especially with the above bolded characterization by the Examiner. The Appellant points out that, according to claim 1, not only a rule is being Appeal 2011-003243 Application 10/871,120 5 paired with a security key and an address associated with the destination module, but also the rule, the corresponding security key and the associated address are all sent together to the destination module. As discussed above, however, neither aspect of claim 1 is disclosed or suggested by Peterka. Id. (quoting Appeal Brief 13). We are unpersuaded. In this quotation, we find no express disclaimer of our broad interpretation of “along with” as encompassing one or more transmissions. Specifically, we find “all sent together” does not expressly disclaim our interpretation of “along with” as encompassing one or more transmissions. Accordingly, we find no reason to limit the scope of “along with” to specifically require the items are “all sent together.” Absent an express limitation in the claims or a definition in the Specification, we find no error in our construction of “along with” to encompass one or more transmissions. In view of the above discussion, we are unpersuaded that the Decision improperly failed to consider Appellants’ purported express disclaimers in prosecution regarding interpretation of “sending . . . along with” in the claims. Argument 3 Appellants argue broadly “the Decision placed too much reliance on” a dictionary contrary to the guidance of our reviewing court. Request 6-7 (citing Phillips v. AWH Corp., 415 F.3d 1303, 1312 (Fed. Cir. 2005)). We are unpersuaded. Appellants have failed to identify any particular improper reliance on a dictionary. Appeal 2011-003243 Application 10/871,120 6 CONCLUSION We have considered the arguments raised by Appellants’ Request, but find none of these arguments persuasive that our original Decision was in error. This Decision on Appellants’ “Request for Rehearing” is deemed to incorporate our earlier Decision by reference. See 37 C.F.R. § 41.52(a). DECISION We have granted Appellants’ Request to the extent that we have reconsidered our Decision, but we decline to grant the relief requested. Our Decision rejecting claims 1, 12, and 23 under 35 U.S.C. § 103(a), is maintained. REHEARING DENIED gvw