Ex Parte Clemm et al

Patent Trial and Appeal Board

Jan 28, 2013

11140399 (P.T.A.B. Jan. 28, 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.
11/140,399 05/27/2005 Geoffrey M. Clemm LOT920040048US2 (006) 5090
46321 7590 01/29/2013
CAREY, RODRIGUEZ, GREENBERG & O''''KEEFE, LLP
STEVEN M. GREENBERG
7900 Glades Road
SUITE 520
BOCA RATON, FL 33434
EXAMINER
BROPHY, MATTHEW J
ART UNIT PAPER NUMBER
2191
MAIL DATE DELIVERY MODE
01/29/2013 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 GEOFFREY M. CLEMM, HERBERT A. MILLER, and
ALLAN R. TATE
____________

Appeal 2010-008836
Application 11/140,399
Technology Center 2100
____________

Before ROBERT E. NAPPI, GEORGIANNA W. BRADEN, and
BARBARA A. PARVIS, Administrative Patent Judges.

PARVIS, Administrative Patent Judge.

DECISION ON APPEAL

The Appellants appeal under 35 U.S.C. § 134 from the Examiner’s
decision finally rejecting claims 9-11. We have jurisdiction over the appeal
under 35 U.S.C. § 6(b). Claims 1-8 and 12-14 have been cancelled.
We affirm.
Appeal 2010-008836
Application 11/140,399

2
STATEMENT OF THE CASE
Appellants’ invention relates to a method for resolving artifact
references in a software configuration management tool.

CLAIMED SUBJECT MATTER
Claim 9 is the independent claims on appeal. Claim 9 is
representative of the subject matter on appeal, and recites:
9. A method for resolving artifact references in a software
configuration management tool, the method comprising:
reading a uniform reference to an artifact;
parsing said uniform reference to identify said artifact and a
reference kind;
selecting a resolution routine to reduce said uniform reference
to a path name to said artifact; and,
executing said resolution routine to produce said path name.

REJECTIONS
Claims 9-11 are rejected under 35 U.S.C. § 102(e) as unpatentable
over Kaler et al. (US PG Publication 2004/0216090 A1, “Kaler”). (Answer
3.)1

APPELLANTS CONTENTIONS
Appellants argue on pages 3 through 7 of the Appeal Brief that the
Examiner’s rejection of independent claim 9 under 35 U.S.C. § 102(e) is in

1 Throughout this opinion we refer to the Examiner’s Answer mailed on
January 21, 2010.
Appeal 2010-008836
Application 11/140,399

3
error.2 Appellants contend that the Examiner failed to identify the following
limitations of claim 9:
“parsing said uniform reference to identify said artifact and a
reference kind;” and
“selecting a resolution routine to reduce said uniform reference to a
path name to said artifact.”
Appellants have not presented separate arguments for claims 10 and
11. (Brief 7.)
ISSUES
Did the Examiner err in finding that Kaler teaches the “parsing said
uniform reference to identify said artifact and a reference kind” limitation of
claim 9?
Did the Examiner err in finding that Kaler teaches the “selecting a
resolution routine to reduce said uniform reference to a path name to said
artifact” limitation of claim 9?

ANALYSIS
We have reviewed the Examiner’s rejections in light of the
Appellants’ arguments that the Examiner has erred. We disagree with
Appellants’ conclusion. We adopt as our own the findings and reasons set
forth by the Examiner in the action from which this appeal is taken and the
reasons set forth by the Examiner in the Examiner’s Answer in response to
Appellants’ Appeal Brief. However we highlight and address specific
findings and arguments regarding claim 9 for emphasis as follows.

2 Throughout this opinion we refer to Appellants’ Appeal Brief of October
23, 2009.
Appeal 2010-008836
Application 11/140,399

4
Did the Examiner err in finding that Kaler teaches the “parsing said
uniform reference to identify said artifact and a reference kind” limitation of
claim 9?
Appellants’ first contention focuses on the construction of “reference
kind.” (Reply 3.)3 The key difference in the proposed constructions relates
to whether “reference kind” must provide an indication of the type of file
pointed to. Appellants argue, “[c]learly, a unique file identifier provides no
indication as to the type of file pointed to by the ‘unique file identifier.’”
(Reply 4.) The Examiner construes “reference kind” to mean “a type of
reference to a particular artifact used to identify that artifact.” (Answer 7.)
The express language of claim 9 does not call for limiting the term
“reference kind” as proposed by Appellants. As is acknowledge by
Appellants, the USPTO gives claims their broadest reasonable interpretation.
(Brief 4.) Here, the Appellants’ argument is not commensurate with the
limitations of representative claim 9. We decline to read the argued
limitation into the claim from the Specification. We further note that
limitation of a “reference kind” is just describing the data and as such is
nonfunctional descriptive material.4

3 Throughout this opinion we refer to Appellants’ Reply Brief of March 22,
2010.
4 The Examiner need not give patentable weight to descriptive material
absent a new and unobvious functional relationship between the descriptive
material and the substrate. See In re Lowry, 32 F.3d 1579, 1583-84 (Fed.
Cir. 1994); In re Ngai, 367 F.3d 1336, 1338 (Fed. Cir. 2004) and our
decision in Ex parte Curry, 84 USPQ2d 1272 (BPAI 2005) (informative
opinion).
Appeal 2010-008836
Application 11/140,399

5
Did the Examiner err in finding that Kaler teaches the “selecting a
resolution routine to reduce said uniform reference to a path name to said
artifact” limitation of claim 9?
Again this argument focuses on construction of a claim term. (Brief
6.) The disputed term in this instance is “path.” However, in the Reply,
Appellants agree with the Examiner’s proposed construction of the disputed
term thus resolving the issue. (Reply 3.)

The rejections of claims 10 and 11 as unpatentable over Kaler
Regarding Appellants’ contentions with respect to the remaining
claims, Appellants do not argue additional arguments with sufficient
specificity so they fall with Claim 9. For the same reasons noted above, we
agree with the Examiner’s findings and stated conclusions with respect to
the remaining claims.

DECISION
We AFFIRM the rejections of claims 9-11 under 35 U.S.C. § 102(e)
as unpatentable over Kaler.

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

msc