Ex Parte Cirne et al

Patent Trial and Appeal Board

Feb 21, 2014

10635669 (P.T.A.B. Feb. 21, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte LEWIS K. CIRNE, JEFFREY R. COBB, and
ERIC C. SCHLEGEL
____________________

Appeal 2011-011413
Application 10/635,669
Technology Center 2400
____________________

Before: JOHN C. KERINS, MICHAEL L. HOELTER, and
LYNNE H. BROWNE, Administrative Patent Judges.

BROWNE, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134 from the rejection of claims
1-11, 13-23, 25-27, 29-31, 33-38, 40, 41, 43, 45-48, 50-53, 55, 56, 58, and
60-65 under 35 U.S.C. § 102(e) as being anticipated by U.S. Patent No.
5,844,553 to Hao.1 Claims 12, 24, 28, 32, 39, 42, 44, 49, 54, 57, and 59 are
canceled. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART and enter a NEW GROUND OF
REJECTION pursuant to our authority under 37 C.F.R. § 41.50(b)(2011).

CLAIMED SUBJECT MATTER
The claims are directed to an event routing mechanism in a computer
system. Claims 1, 13, 25, 29, 36, 41, 43, 45, 50, 55, and 58 are independent.
Claims 1 and 25 are reproduced below:
1. A method for routing an event to a human interface
object in a computer system, said method comprising the
following computer-implemented steps:
assigning a routing type to an event;
receiving an event specifying an assigned routing type;
determining a routing mechanism for the received event
based on the specified routing type; and
routing the event to a human interface object based on
the determined routing mechanism for the received event.

25. A computer-readable medium having stored thereon
instructions for causing a computer to perform the steps of:
receiving an event to which a routing type has been
assigned;
determining a routing mechanism for the received event
based on the assigned routing type of the received event; and

1 The rejection of claims 1-11, 29-31, 36- 38, 40, 41, 45-48, 55, 56, 58, 60,
and 61 under 35 USC § 101 was withdrawn by the Examiner. Ans. 3.
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routing the event to a human interlace object based on the
determined routing mechanism for the received event.

NEW GROUND OF REJECTION
35 U.S.C. § 112, second paragraph, reads as follows:
The specification shall conclude with one or more claims
particularly pointing out and distinctly claiming the subject
matter which the applicant regards as his invention.
We enter a new ground of rejection of claims 1-11, 13-23, 41, 43, and
50-53 under 35 U.S.C. § 112, second paragraph, as failing to particularly
point out and distinctly claim the subject matter which Applicants regard as
their invention.
Independent claim 1 recites in relevant part, “assigning a routing type
to an event; receiving an event specifying an assigned routing type.” App.
Br., Clms. App’x., p. 1 (emphases added). It is unclear if the event received
in the receiving step is the same event to which the routing type is assigned
in the preceding step or if it is a different event. Either interpretation is
consistent with the remainder of the claim. At first glance, it appears that
the second occurrence of “an event” refers to the previously recited “an
event” and the phrase “specifying an assigned routing type” is merely
redundant; however, in response to the Examiner’s inherency finding (Ans.
4) Appellants’ arguments distinguish between these limitations in such a
way as to raise further questions as to whether or not the first and second
occurrences of “an event” in claim 1 refer to the same event. App. Br. 10-
11. For example, when addressing the Examiner’s finding that “‘the event-
type-distinguishable codes are inherently assigned at the sources of the
events,’” Appellants contend that “nothing actually requires that types be
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assigned at sources” and provides an explanation as to why this is the case.
App. Br. 11. Hence, we understand Appellants to contend that event types
are not necessarily only assigned at the source but may also be assigned in a
non-source manner. As such, the separate use of the term “an event” in
different limitations of claim 1 is not indicative that these terms are one and
the same.
Accordingly, claim 1 is amenable to either interpretation. “[I]f a
claim is amenable to two or more plausible claim constructions, the USPTO
is justified in requiring an applicant to more precisely define the metes and
bounds of the invention by holding the claim unpatentable under 35 U.S.C.
§ 112, second paragraph, as indefinite.” Ex parte Miyazaki, 89 USPQ2d
1207, 1211 (BPAI 2008) (precedential). “[T]he mode of claim interpretation
that is used by courts in litigation . . . . is not the mode of claim
interpretation that is applicable during prosecution of a pending application
before the PTO. . . . The reason is simply that during patent prosecution
when claims can be amended, ambiguities should be recognized, scope and
breadth of language explored, and clarification imposed. . . . [T]his way . . .
uncertainties of claim scope [can] be removed, as much as possible, during
the administrative process.” In re Zletz, 893 F.2d 319, 321-22 (Fed. Cir.
1989). Claims 2-11 depend from claim 1 and likewise are indefinite.
Independent claims 13, 41, 43, and 50 are similarly unclear because
they refer to “an event” and then to another “an event” which could be the
same or another event. Claims 14-23 depend from claim 13 and likewise are
indefinite. Claims 51-53 depend from claim 50 and likewise are indefinite.

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OPINION
Claims 1-11, 13-23, 41, 43, and 50-53
We do not reach the merits of the Examiner’s rejections under 35
U.S.C. § 102(e) of claims 1-11, 13-23, 41, 43, and 50-53 at this time. Before
a proper review of this rejection can be performed, the subject matter
encompassed by the claims on appeal must be reasonably understood
without resort to speculation. Since claims 1-11, 13-23, 41, 43, and 50-53
fail to satisfy the requirements under 35 U.S.C. § 112, second paragraph, we
are constrained to reverse, pro forma, the rejection under 35 U.S.C. § 102(e).
See In re Steele, 305 F.2d 859, 862 (CCPA 1962) (A prior art rejection
cannot be sustained if the hypothetical person of ordinary skill in the art
would have to make speculative assumptions concerning the meaning of
claim language.).
Claims 25-27, 29-38, 40, 45-48, 55, 56, 58, and 60-65
Appellants argue claims 25-27, 29-38, 40, 45-48, 55, 56, 58, and 60-
65 as a group. See App. Br. 12. We select independent claim 25 as the
illustrative claim and claims 26, 27, 29-38, 40, 45-48, 55, 56, 58, and 60-65
stand or fall with claim 25. See 37 C.F.R. § 41.37(c)(1)(vii) (2011).
The Examiner finds that Hao discloses each and every limitation of
claim 25. Ans. 6-7 (referring to the rejection of claim 1). In particular, the
Examiner finds that Hao discloses:
assigning a routing type to an event [e.g., Figs. 3A-3C
and 4, wherein the routing types of Fig. 3B can be categorized
as broadcast type [i.e., ‘shared events’ which includes shared
keyboard events and shared mouse events], focus type [e.g.,
unshared keyboard events], and geometrical type [e.g.,
unshared mouse click events]; note that each of these event
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types are inherently associated with specific information for
distinguishing among themselves];
receiving an event specifying an assigned routing type
[e.g., Fig. 3C; col.7, line 45-col. 8, line 26; i.e., each of the
above shared and unshared events has an associated code
indicating whether they are shared or unshared routing types];
Ans. 4.
Appellants argue that “nothing in Hao can be considered to describe
‘assigning a type’ to an event” because “Hao’s ‘Summary of the
Invention’ section states, ‘the mechanism only processes user input events
(commands).’” App. Br. 10 (citing Hao, col. 3, ll. 33-36). Appellants
further “traverse[] the Examiner’s reliance on inherency” for the proposition
that “event packets/messages originating from different sources inherently
contain certain codes that allow a subsequent process to distinguish one type
of event from the others.” Id. (citing, Final Off. Action, p. 6). Then,
Appellants contend that because in Hao “all events occurring in windows of
shared applications are multicast . . . the events in Hao cannot be considered
to disclose the claimed ‘determining a routing mechanism ... based on the
specified routing type.’” App. Br. 11 (citing Hao, col 8, ll. 4-6 and 51-54).
In response to these arguments, the Examiner finds that “[w]hen a
local user clicks on the ‘share’ or ‘unshare’ buttons, it determines if a
selected local window is to be shared or not shared.” Ans. 7 (citing Hao,
col. 7, ll. 45-52). Based on this finding, the Examiner determines that “even
without distinguishing among the button press/release, keyboard, and mouse
motion events, the share[d]/unshare[d] information itself designates an event
type that corresponds to a respective multicast/unicast routing mechanism.”
Ans. 8.
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In response to these findings, Appellants argue that “the steps
identified in Hao are not performed in the order recited.” Reply Br. 1. In
support of this argument Appellants contend that “Hao does not have a
‘receiving’ step between mapping an event as shared or unshared and
multicasting the event.” Reply Br. 2. Appellants’ contention is not well
taken. In Hao the user selects the share 208 or unshared 210 button, then
shared events are received by the IEP. See Hao, col. 7, ll. 45-52. Thus, Hao
describes the “receiving” step.
Appellants further argue that “[i]nstead of receiving events specifying
an assigned routing type, Hao et al. designed the [Inter-Access Event
Process (IEP)] to be able to receive input events from non-modified
applications, where the lack of modification prevents an routing type [sic]
from having been assigned.” Reply Br. 1-2 (citing Hao, Abst.). Appellants’
argument is not persuasive. While Hao’s Abstract describes an IEP that is
able to receive input events from non-modified applications, the Abstract
does not state that the lack of modification prevents a routing type from
having been assigned, nor does it preclude modified applications from being
received. Hao, Abst.
In addition, Appellants argue that “Hao does not disclose other
methods for the IEP to send input to applications, thus Hao lacks
‘determining a routing mechanism.’” Reply Br. 3. As discussed supra, the
Examiner finds that Hao determines if the local window is to be shared or
unshared. Ans. 7. Appellants argument pertains only to shared events and
does not explain why the difference in routing of the shared and unshared
events in Hao does not meet the limitation of “determining a routing
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mechanism.” App. Br., Clms. App’x., 4. Accordingly, Appellants’
argument is not persuasive.
For these reasons, we sustain the Examiner’s rejection of claim 25 and
claims 26, 27, 29-38, 40, 45-48, 55, 56, 58, and 60-65 which fall therewith.

DECISION
The Examiner’s rejection of claims 1-11, 13-23, 41, 43, and 50-53 is
REVERSED.
The Examiner’s rejection of claims 25-27, 29-38, 40, 45-48, 55, 56,
58, and 60-65 is AFFIRMED.
We enter a NEW GROUND OF REJECTION of claims 1-11, 13-23,
41, 43, and 50-53 under 35 U.S.C. § 112, second paragraph, as being
indefinite.
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 ground 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 [E]xaminer, in which event the proceeding
will be remanded to the [E]xaminer. . . .
(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same record. . . .
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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)(1)(iv).

AFFIRMED-IN-PART; 37 C.F.R. § 41.50(b)

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