Ex Parte Forney et al

Board of Patent Appeals and Interferences

Sep 16, 2009

09955473 (B.P.A.I. Sep. 16, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE

__________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte PAUL W. FORNEY, RASHESH MODY, DAVE TRAN,
PRAMOD THAZHICHAYIL, VIJAY ANAND,
and KIMSON Q. NGUYEN
__________

Appeal 2009-000054
Application 09/955,473
Technology Center 2100
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Decided: September 16, 2009
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Before HOWARD B. BLANKENSHIP, ST. JOHN COURTENAY III, and
STEPHEN C. SIU, Administrative Patent Judges.

COURTENAY, Administrative Patent Judge.

DECISION ON REQUEST FOR REHEARING

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STATEMENT OF THE CASE
An oral hearing on this appeal was held on June 11, 2009. On August
24, 2009, Appellants filed a Request for Rehearing under 37 C.F.R.
§ 41.52(a)(1) (hereinafter “Request”) for reconsideration of our Decision
mailed June 22, 2009 (hereinafter “Decision”).
Our Decision affirmed the Examiner’s rejection of claims 1-3, 5, 6,
and 8-20 under 35 U.S.C. § 103(a) as being unpatentable over the
combination of Khan and Wewalaarachchi.
Our Decision also affirmed the Examiner’s rejection of claims 4 and 7
under 35 U.S.C. § 103(a) as being unpatentable over the combination of
Khan, Wewalaarachchi, and Polizzi.
We have reconsidered our Decision, in light of Appellants’ arguments
in the Request for Rehearing, and we find no errors therein. We decline to
change our prior Decision for the reasons discussed infra.

Appellants request reconsideration of the following two issues:

1. whether a sufficient reason exists, from the combined
teachings of Kahn and Wewalaarachchi, under KSR Int'l Co. v.
Teleflex, Inc., 550 U.S. 398 (2007), to modify Kahn's user-
customized portal to provide access to plant process
information provided by plant information sources such that
claims 1-3, 5,6, and 8-20 are rendered obvious; and

2. whether the combined teachings of Kahn and
Wewalaarachchi disclose a portal server that comprises an
extensible set of data handlers such that claims 5, 8,
12-15 and 17-20 are rendered obvious.
(Request 2).
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Issue 1
Regarding the first issue, Appellants ground their argument on the
contention that the claim term “plant process information” should be
construed by the Board as being limited to non-public and highly sensitive
plant process information, as follows:

Appellants first request reconsideration of the Board
Decision's focus upon Appellants' reference to "non-public,
highly sensitive plant process information" rather than the
claimed "plant process information" limitation. Plant process
information is "non-public and highly sensitive" information.
Circumstances are not reasonably foreseeable under which
public access (as needed by Kahn's portal server which
relies on users' specifying publicly accessible links to define a
customized portal) is provided to plant process information.
Therefore, Appellants' use of the phrase "plant process
information" excludes the type of information considered
accessible by the user-customizable portals based on Kahn's
disclosed portal server architecture.
(Request 4-5).

In response, we decline to read the argued limitations of “non-public
and highly sensitive” into the disputed claim term “plant process
information.” We note that patentability is based upon the claims. “It is the
claims that measure the invention.” SRI Int’l v. Matsushita Elec. Corp. of
America, 775 F.2d 1107, 1121 (Fed. Cir. 1985) (en banc). A basic canon of
claim construction is that one may not read a limitation into a claim from the

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written description. Renishaw plc v. Marposs Societa' per Azioni, 158 F.3d
1243, 1248 (Fed. Cir. 1998). See also In re Van Geuns, 988 F.2d 1181,
1184 (Fed. Cir. 1993) (citing In re Zletz, 893 F.2d 319, 321 (Fed. Cir.
1989)).
Moreover, we note that Appellants could have amended their claims
during prosecution to recite the additional argued limitations of “non-public
and highly sensitive” with respect to clarifying the meaning of the disputed
claim term “plant process information.” 1 However, Appellants chose not to
do so. Because “applicants may amend claims to narrow their scope, a broad
construction during prosecution creates no unfairness to the applicant or
patentee.” In re ICON Health and Fitness, Inc., 496 F.3d 1374, 1379 (Fed.
Cir. 2007) (citing In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1364
(Fed. Cir. 2004)).
In addition, we observe that the claimed “plant process information”
is not positively recited in representative claim 1 as being used to perform
any machine-implemented function. Thus, Appellants’ argument (urging
patentability based on the purported non-public and highly sensitive nature
of the claimed “plant process information”) rests on nonfunctional
descriptive material. The content of nonfunctional descriptive material is

1 As stated in our Decision, “[w]e do not dispute Appellants’
argument that access to plant process information may be restricted in actual
practice; however, we conclude that the plain language of the claims on
appeal does not preclude open access to an information portal by users, such
as taught by Khan (FF 1), as modified by Wewalaarachchi (FF 2-3).”
(Decision, 9, ¶2).
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not entitled to weight in the patentability analysis. Cf. In re Lowry, 32 F.3d
1579, 1583 (Fed. Cir. 1994) (“Lowry does not claim merely the information
content of a memory. . . . Nor does he seek to patent the content of
information resident in a database.”). See also Ex parte Nehls (BPAI Jan.
28, 2008), available at
http://www.uspto.gov/web/offices/dcom/bpai/prec/fd071823.pdf; Ex parte
Curry, 84 USPQ2d 1272 (BPAI 2005) (nonprecedential) (Fed. Cir. Appeal
No. 2006-1003, aff’d Rule 36 June 12, 2006); Manual of Patent Examining
Procedure (MPEP) § 2106.01 (Eighth ed., Rev. 7, July 2008).
For at least the aforementioned reasons, we find Appellants contention
unpersuasive that “one skilled in the art would not consider modifying
Kahn’s system to support access to plant process information since such
modification would compromise the security of critical/sensitive
information.” (Request 5, ¶2, last sentence, emphasis in original). Again,
“critical/sensitive information” is not claimed, and even if we were to
(impermissibly) read those argued limitations into the claim, Appellants’
argument for patentability remains grounded on the type of information
content (“plant process information”), which is nonfunctional descriptive
material. Accordingly, we decline to modify our original Decision regarding
issue one.

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Issue 2
We now consider the second issue of “whether the combined
teachings of Kahn and Wewalaarachchi disclose a portal server that
comprises an extensible set of data handlers such that claims 5, 8, 12-15 and
17-20 are rendered obvious.” (Request 2; see also id. at 6).
We observe that representative independent claim 8 recites in
pertinent part: “an extensible set of data handlers for processing differing
types of data from a set of plant information sources accessed via the portal
server.”
We begin by noting that Appellants expressly admit in the Request
that “[t]he Kahn reference does indeed disclose an extensible portal server.”
(Request, 3, ¶3, first sentence under “The Prior Art” heading). However,
Appellants argue strenuously that “[t]he combination of Kahn and
Wewalaarachchi would not render a portal server comprising an extensible
set of data handlers.” (Request 6, ¶3). In particular, Appellants state that
“Wewalaarachchi discloses providing support for multiple different data
types through a set of gateways (‘data handlers’) that are separate from a
server that provides access to the data sources via the separate gateways.”
(Request 6, ¶3, emphasis in original). Thus, Appellants read the claimed
“extensible set of data handlers” (claim 8) on Wewalaarachchi’s gateways
and conclude that the combination of Kahn and Wewalaarachchi “clearly
teach[es] the set of data handlers executing outside a server.” (Request 7, ¶2,
second sentence, emphasis added).
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In response, we (and the Examiner) are reading the disputed
“extensible set of data handlers” on Wewalaarachchi’s data objects, and not
on Wewalaarachchi’s gateways, as incorrectly pointed to by Appellants
(Request 6, ¶3). As set clearly forth in our Decision, we found that
“Wewalaarachchi’s data objects (i.e., data handlers) provide subscribed
information from a designated resource (i.e., device), consistent with
Appellants’ disclosed first form of extension (FF 5).” (Decision 11, ¶1,
emphasis added).
Thus, Appellants’ Request has misrepresented our Decision and is
ineffective to show error in the Examiner’s factual findings and legal
conclusion of obviousness. In particular, we find Appellants’ “teaching
away” argument (Request 4, ¶1) to be moot, because we are reading the
claimed data handlers on Wewalaarachchi’s data objects (and not on
Wewalaarachchi’s gateways) (claim 8).
We particularly note that Appellants’ claim 8 is not limited to data
handlers for processing different types of protocols (e.g., a gateway protocol
converter). Instead, Appellants’ claim 8 more broadly recites: (in pertinent
part) “an extensible set of data handlers for processing differing types of
data from a set of plant information sources accessed via the portal server.”
(emphasis added). As previously stated in our Decision, “we find the
combination of Khan and Wewalaarachchi is at least suggestive of the
claimed extensible set of data handlers for processing differing types of
data.” (Decision 11).
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We restate our reasoning and factual findings as set forth on pages 10-
12 of our Decision, particularly the paragraph bridging pages 11 and 12
stating that the Examiner’s rejection is based on the combination of cited
references. Regarding Issue 2, we again find that the weight of the evidence
supports the Examiner’s position. See Decision 12.

CONCLUSION
We have considered the arguments raised by Appellants in the
Request for Rehearing, but find none of these arguments persuasive that our
original Decision was in error. We are still of the view that the invention set
forth in claims 1-20 is unpatentable over the applied prior art based on the
record before us in the original appeal. We have reconsidered our Decision
but decline to grant the relief requested.
This Decision on Appellants’ Request for Rehearing is deemed to
incorporate our earlier Decision (mailed June 22, 2009) by reference. See 37
C.F.R. § 41.52(a)(1).

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DECISION
We have granted Appellants’ request to the extent that we have
reconsidered our Decision of June 22, 2009, but we deny the request with
respect to making any changes therein.
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

pgc

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