Ex Parte Daniels et al

Patent Trial and Appeal Board

Dec 3, 2012

11179950 (P.T.A.B. Dec. 3, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
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.
11/179,950 07/12/2005 Fonda J. Daniels LOT920050053US1
(7321-103
2674
46321 7590 12/04/2012
CAREY, RODRIGUEZ, GREENBERG & O''KEEFE, LLP
STEVEN M. GREENBERG
950 PENINSULA CORPORATE CIRCLE
SUITE 2022
BOCA RATON, FL 33487
EXAMINER
KUMAR, ANIL N
ART UNIT PAPER NUMBER
2174
MAIL DATE DELIVERY MODE
12/04/2012 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 APPEALS BOARD
____________

Ex parte FONDA J. DANIELS, RUTHIE D. LYLE,
MICHAEL MULLER, and ANDREW L. SCHIRMER
____________

Appeal 2010-003948
Application 11/179,950
Technology Center 2100
____________

Before ALLEN R. MacDONALD, MICHAEL R. ZECHER, and
JOHN G. NEW, Administrative Patent Judges.

NEW, Administrative Patent Judge.

DECISION ON REQUEST FOR REHEARING
Appellants have filed a Request for Rehearing (hereinafter “Request”)
under 37 C.F.R. § 41.52(a)(1) for reconsideration of our Decision of June
27, 2012 (hereinafter “Decision”).

Appeal 2010-003948
Application 11/179,950

2

The Decision affirmed the Examiner’s rejections of claims 13 - 19
under 35 U.S.C. § 103(a), as follows:
1. We affirmed the Examiner’s rejection of independent
claims 13-18 under 35 U.S.C. §103(a) as being
unpatentable over the combination of Skurikhin (US
2004/0181577 A1) (“Skurikhin”), Petrovykh (US
2003/0231647 A1) (“Petrovykh”), and Philonenko (US
2002/0131399 A1) (“Philonenko”).
2. We affirmed the Examiner’s rejection of claim 19 under
35 U.S.C. §103(a) as being unpatentable over the
combination of Skurikhin, Petrovykh, Philonenko, and
Barsness (US 2004/0117443 A1) (“Barsness”).
Appellants seek reconsideration of our Decision affirming the
Examiner’s rejection of claims 13-19 under 35 U.S.C. § 103(a).
Specifically, Appellants present the argument that the Board erred by
premising its finding of fact at page 4 of the Decision on the inherent nature
of “session requests” within “initiating a chat event.”

Consideration of claims 13-19
Appellants argue that the Board erred as a matter of law by finding
that the term “session requests” as recited in claim 13 is an inherent part of a
“chat initiation event” as disclosed by Petrovykh. Request 5. Appellants
argue that the Board, thus improperly employed an argument from
inherency, which is an improper analytical tool in a 35 U.S.C. § 103
analysis. Request 6. Appellants cite Ex parte Vigano, Appeal No. 2011-
006558; Application No. 12/044,623 in support of this contention. Id.; see
Appeal 2010-003948
Application 11/179,950

3

also In re Rijckaert, 59 F.3d 1531 (Fed. Cir. 1993); In re Newell, 891 F.2d
899, 901 (Fed. Cir. 1989) (“[A] retrospective view of inherency is not a
substitute for some teaching or suggestion which supports the selection and
use of the various elements in the particular claimed combination”).
Appellants are correct insofar as that a retrospective (retroactive or
backwards) employment of inherency by the Solicitor is incorrect in a § 103
analysis. Appellants are also correct that employment of inherency is
incorrect in a § 103 analysis when it is not known in the art that the inherent
part is in fact inherent. Newell, 891 F.2d at 899 quoting In re Spormann,
363 F.2d 444 (C.C.P.A. 1966), (“That which may be inherent is not
necessarily known. Obviousness cannot be predicated on what is
unknown.”).
However, Appellants overreach in extending these holdings to a
general per se rule that inherency can never be employed in a § 103 analysis,
particularly if an ordinarily skilled artisan would know that the part is
inherent. Inherency is a question of fact that arises both in the context of
anticipation and obviousness rejections. See In re Napier, 55 F.3d 610, 613
(Fed. Cir. 1995) (affirming a 35 U.S.C. § 103(a) rejection based in part on
the inherent disclosure in one of the applied prior art references); see also In
re Grasselli, 713 F.2d 731, 739 (Fed. Cir. 1983).
Appellants’ Appeal Brief at page 7 argues that the ordinary meaning
of “session request” is a request to establish a session. The Examiner at
page 8 of the Answer further elaborates that a “session” is “a semi-
permanent interactive information interchange, also know[n] as a dialogue, a
conversation or a meeting, between two or more communicating devices, or
between a computer and user.” The Examiner’s further statement that “a
Appeal 2010-003948
Application 11/179,950

4

‘chat initiation event’ must inherently make a ‘session request’” (Ans. 8),
with which this panel agreed (Decision 4), is based not on unknown
inherency, but rather an ordinarily skilled artisan’s knowledge because “a
chat, which is human-to-human communication over a network, is
essentially a stateless or stateful session depending [on] the underlying
internet protocol used” (Ans. 8) (i.e., ordinarily skilled artisans would know
that such sessions must be requested).
As such, and upon reviewing the record, we find that the Examiner
did not err in finding that a “chat initiation event,” as taught by Petrovykh,
discloses or suggests the “session requests” as recited in claim 13.
Consequently, we affirm the Examiner’s finding.
Furthermore, we reject Appellants’ argument that it is per se error to
employ inherency in a § 103 analysis.

DECISION
We have granted Appellants’ request to the extent that we have
reconsidered our Decision. We deny Appellants’ request for rehearing of
claims 13-19.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv). See also
37 C.F.R. § 41.52(b).

REHEARING DENIED

ELD