Ex Parte Davis et al

Board of Patent Appeals and Interferences

Mar 17, 2011

10265844 (B.P.A.I. Mar. 17, 2011)

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.
10/265,844 10/07/2002 Douglas B. Davis RSW920020077US1 (062) 7062
46320 7590 03/18/2011
CAREY, RODRIGUEZ, GREENBERG & PAUL, LLP
STEVEN M. GREENBERG
950 PENINSULA CORPORATE CIRCLE
SUITE 2022
BOCA RATON, FL 33487
EXAMINER
DARNO, PATRICK A
ART UNIT PAPER NUMBER
2158
MAIL DATE DELIVERY MODE
03/18/2011 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte DOUGLAS B. DAVIS, JAMES M. MATHEWSON II,
BRAD B. TOPOL, and KEITH A. WELLS
____________

Appeal 2009-004883
Application 10/265,844
Technology Center 2100
____________

Before HOWARD B. BLANKENSHIP, JAY P. LUCAS, and
THU A. DANG, Administrative Patent Judges.

BLANKENSHIP, Administrative Patent Judge.

DECISION ON REQUEST FOR REHEARING1

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.
Appeal 2009-004883
Application 10/265,844

2
INTRODUCTION
Appellants’ Request for Rehearing (filed Dec. 15, 2010) contends that
we erred in our Decision on Appeal entered May 26, 2010 (“Decision”), in
which we affirmed the Examiner’s decision to reject claims 1-20. We later
designated our affirmance of the Examiner’s rejection of the claims as being
anticipated by Brown (US 2003/0110242 A1) as a new ground of rejection.
In response to the § 102(e) rejection over Brown, Appellants have
submitted no amendment to the claims, no new evidence, only arguments.

DISCUSSION
Appellants submit in the Request that our Decision erred in finding
that Brown describes two features of representative claim 1, which we will
consider in turn.

I. “query individual application containers . . . for a list of supported
libraries and associated library configuration information”

Appellants at page 7 of the Request acknowledge that the Decision
referred to Figure 4E and paragraphs [0057] and [0078] for disclosure of
querying individual application containers for a list of supported libraries
and associated library configuration information.2 Appellants at page 10 of
the Request begin to address paragraph [0078] and Figure 4E of the
reference.

2 Appellants at pages 6 and 7 of the Request allege “contextual differences”
between “supported” and “supporting” libraries, but do not explain why they
use the terms interchangeably.
Appeal 2009-004883
Application 10/265,844

3
First, Appellants submit that Brown at paragraph [0078] refers to
querying a “single” Web Application server container, not a “plurality” of
containers. However, paragraph [0078] and Figure 4E of Brown show the
trivial case of querying a single application server container for a single type
of application -- currency conversion -- to illustrate the invention. The
disclosure is not so limited. See Brown ¶¶ [0077]; [0029]; [0050]. The
same features described in paragraph [0078] of Brown exist when clients
query more than one application container; e.g., Fig. 4I, ¶ [0095]. We are
therefore not persuaded that the “s” in “containers” serves to distinguish
over Brown.
Appellants also allege that we erred in finding that Brown describes a
list of applications and versions of applications, including different versions
for various platforms such as the PalmTM platform. According to
Appellants, Brown only refers to a single version -- the PalmTM version of
the currency conversion software. Req. R’hrg 11.
However, as we noted in the Decision (FF 12, 14; Analysis at 9),
Brown discloses different versions of the currency conversion application.
Brown at paragraph [0078] expressly describes forwarding a PalmTM version
of the currency conversion software, and expressly describes that the server
container also possesses implementations for various other platforms (e.g.,
cell phones that are not PalmTM devices).
We are thus not persuaded that Brown fails to describe querying
individual application containers for a list of supported libraries and
associated library configuration information.

II. “compare said list with another list of requisite libraries and associated
library configuration information”
Appeal 2009-004883
Application 10/265,844

4
Appellants contend that neither the Examiner nor the Board has
identified in Brown the comparison of a “list” of versioning information
with another “list” of versioning information. Req. R’hrg 12-13.
However, we explained the basis for our finding that Brown describes
“comparing lists,” within the requirements of claim 1, in the Decision (at 9-
10). Appellants have not demonstrated error in the finding. Appellants, at
best, have established that Brown does not use the phrase “comparing lists,”
which we can acknowledge. For a prior art reference to anticipate in terms
of 35 U.S.C. § 102, every element of the claimed invention must be
identically shown in a single reference. However, this is not an “ipsissimis
verbis” test. In re Bond, 910 F.2d 831, 832 (Fed. Cir. 1990).

DECISION
In summary, we have granted Appellants’ request for rehearing to the
extent that we have reconsidered our decision affirming the rejection of
claims 1-20, but we decline to modify the decision in any way.

DENIED

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CAREY, RODRIGUEZ, GREENBERG & PAUL, LLP
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