Ex Parte Hanson et al

Board of Patent Appeals and Interferences

Nov 18, 2008

10128864 (B.P.A.I. Nov. 18, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte JAMES EDWIN HANSON, DAVID WILLIAM LEVINE,
and PRABIR NANDI
____________

Appeal 2008-0692
Application 10/128,864
Technology Center 2400
____________

Decided: November 18, 2008
____________

Before LANCE LEONARD BARRY, JEAN R. HOMERE, and ST. JOHN
COURTENAY III, Administrative Patent Judges.

BARRY, Administrative Patent Judge.

DECISION ON APPEAL

I. STATEMENT OF THE CASE
A Patent Examiner rejected claims 1-55. The Appellants appeal
therefrom under 35 U.S.C. § 134(a). We have jurisdiction under 35 U.S.C.
§ 6(b).

Appeal 2008-0692
Application 10/128,864

A. INVENTION
The Appellants offer the following summary of the invention.
[T]he present invention provides a mechanism for modular
downloadable conversation policies that may be used to govern
the interactions of computing devices during communications
between the computing devices. The conversation policies are
dynamically instantiable such that parent conversation policies
may spawn child conversation policies. Moreover,
conversation policies may be dynamically downloaded and
installed into an electronic business system for use in a current
or later initiated conversation with a computing device. In
addition, the present invention allows for two computing
devices to use dissimilar conversation policies during the same
communication with one another so long as the states and state
transitions identified in the state machine of the conversation
policies are compatible.
(Spec. 35.)

B. ILLUSTRATIVE CLAIM
Claim 1, which further illustrates the invention, follows.
1. A method of communicating between a first computing
device and a second computing device, comprising:
selecting, at the first computing device, a first
conversation policy from a set of conversation policies based on
one or more criteria;
sending a conversation request from the first computing
device to the second computing device using the first
conversation policy;
responsive to receiving a reply from the second
computing device indicating that the conversation request was
not accepted based on the first conversation policy, terminating
the conversation;
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responsive to receiving a reply from the second
computing device indicating that the conversation request was
accepted based on the first conversation policy, loading the first
conversation policy into a conversation policy module at the
first computing device; and
initiating communication with the second computing
device using the conversation policy module at the first
computing device, wherein the conversation policy module
manages messaging at the first computing device based on the
first conversation policy.

C. PRIOR ART
The Examiner relies on the following references as evidence:
Bantel US 4,509,167 Apr. 2, 1985

Wu US 2002/0078041 A1 Jun. 20, 2002
(filed Oct. 12, 2001)

Kuno US 2003/0120730 A1 Jun. 26, 2003
(filed Dec. 5, 2001)

Clark US 2005/0209950 A1 Sep. 22, 2005
(filed Sep. 28, 2001

D. REJECTIONS
Claims 1, 2, 28, 29, and 55 stand rejected under 35 U.S.C. § 103(a) as
obvious over U.S. Patent No. 4,509,167 ("Bantel") and U.S. Patent
Application Pub. No. 2005/0209950 ("Clark").

Claims 3-15, 19-27, 30-42, and 46-54 stand rejected under § 103(a) as
obvious over Bantel; Clark; and U.S. Patent Application Pub.
No. 2003/0120730 ("Kuno").
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Claims 16-18 and 43-45 stand rejected under § 103(a) as obvious over
Bantel; Clark; Kuno; and U.S. Patent Application Pub. No. 2002/0078041
("Wu").

II. CLAIMS 1, 2, 28, 29, AND 55
When multiple claims subject to the same ground of rejection
are argued as a group by appellant, the Board may select a
single claim from the group of claims that are argued together
to decide the appeal with respect to the group of claims as to the
ground of rejection on the basis of the selected claim alone.
Notwithstanding any other provision of this paragraph, the
failure of appellant to separately argue claims which appellant
has grouped together shall constitute a waiver of any argument
that the Board must consider the patentability of any grouped
claim separately.
37 C.F.R. § 41.37(c)(1)(vii) (2006).1

Here, the Appellants argue claims 1, 28, and 55 as a group (Br. 9) and
claims 2 and 29 as another group (id. 21-23). All these claims are subject to
the same ground of rejection. Therefore, we select claims 1 and 29 as the
sole claims on which to decide the appeal of the respective groups. "With
this representation in mind, rather than reiterate the positions of the parties in
toto, we focus on the issues therebetween." Ex Parte Zettel, No. 2007-1361,
2007 WL 3114962, at *2 (BPAI 2007).

1 We cite to the version of the Code of Federal Regulations in effect at the
time of the Appeal Brief. The current version includes the same rules.

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A. SELECTING AND USING CONVERSATION POLICY
The Examiner finds that "Bantel teaches . . . a first terminal, which
identifies it capabilities to a bridge. The bridge then selects the first set of
capabilities received from a set of devices with other conversation policies
as the parameters of the conference (Bantel, column 2, lines 4-6, and
column 4, lines 55-67)." (Ans. 14.) The Appellants argue that "Bantel does
not teach or suggest a conversation policy as defined in the specification"
(Br. 19); that "Bantel does not teach the ability to select a conversation
policy from a set of conversation policies" (id.); and that "[t]he Examiner
also ignores the feature of initiating communication with the second
computing device using the conversation policy module at the first
computing device, wherein the conversation policy module manages
messaging at the first computing device based on the first conversation
policy" (id. 11).

1. Issue
Therefore, the issue is whether the Appellants have shown error in the
finding that Bantel would appear to have suggested selecting a first
conversation policy from a set of conversation policies and using the
selected policy to manage messaging.

2. Principles of Law
"[T]he PTO gives claims their 'broadest reasonable interpretation.'"
In re Bigio, 381 F.3d 1320, 1324 (Fed. Cir. 2004) (quoting In re Hyatt,
211 F.3d 1367, 1372 (Fed. Cir. 2000)). "Moreover, limitations are not to be
read into the claims from the specification." In re Van Geuns, 988 F.2d
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1181, 1184 (Fed. Cir. 1993) (citing In re Zletz, 893 F.2d 319, 321 (Fed. Cir.
1989)).

3. Findings of Fact
Assuming arguendo that the Appellants' Specification "define[s] a
conversation policy to be a message schema, timing, and sequencing
information" (Br. 19), neither claim 1 nor claim 2 recites this definition. We
will not read it into either claim.

4. Analysis
The Appellants admit that Bantel "creates a common protocol to allow
the disparate communication devices to communicate with each other." (Id.
12.) For its part, the reference characterizes the common protocol as "a
common set of parameters for the data terminals for exchanging
conferencing data . . . ." (Col. 13, ll. 47-49.) We agree with the Examiner's
finding that such parameters constitute a conversation policy used to manage
messaging between the data terminals.

The question of obviousness is "based on underlying factual
determinations including . . . what th[e] prior art teaches explicitly and
inherently . . . ." In re Zurko, 258 F.3d 1379, 1383-84 (Fed. Cir. 2001)
(citing Graham v. John Deere Co., 383 U.S. 1, 17-18 (1966); In re
Dembiczak, 175 F.3d 994, 998 (Fed. Cir. 1999); In re Napier, 55 F.3d 610,
613 (Fed. Cir. 1995)). "'A prima facie case of obviousness is established
when the teachings from the prior art itself would appear to have suggested
the claimed subject matter to a person of ordinary skill in the art.'" In re
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Bell, 991 F.2d 781, 783 (Fed. Cir. 1993) (quoting In re Rinehart, 531 F.2d
1048, 1051 (CCPA 1976)).

Here, Bantel "includes apparatus for negotiating a common set of
communication parameters when data terminals having differing capabilities
are connected to the same conference." (Abs., ll. 3-6.) The reference
includes the more specific disclosure.
The identities of all terminals to be conferenced are forwarded
to [a] conference bridge, which then establishes a connection to
each data terminal conferee via a switched network. When the
first data terminal responds, it identifies its capabilities to the
data bridge, and these capabilities define the current feature
parameters of the conference.
(Col. 1, l. 68 – col. 2, l. 6.)

The Appellants admit that in Bantel communication parameters "can .
. . be changed . . . if the data terminal[ ] already established on the
conference accept[s] the parameters of the terminal that wishes to join the
conference." (Br. 19.) More specifically, Bantel discloses that because "the
new terminal has indicated a set of capabilities differing from the
conference, the data bridge system must now poll the terminal[ ] already
connected to the data conference to ascertain whether or not th[is]
terminal[ ] will accept the new parameters." (Col. 17, ll. 27-32.)

We find that the ability of the already connected terminal to accept
new parameters would have suggested that this terminal can support a set of
parameters larger than the parameters originally used to define the
conference. Consequently, the parameters originally used to define the
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conference would appear to have been selected from a larger set of
parameters.

5. Conclusion
For the aforementioned reasons, the Appellants have shown no error
in the finding that Bantel would appear to have suggested selecting a first
conversation policy from a set of conversation policies and using the
selected policy to manage messaging.

B. COMBINING TEACHINGS OF BANTEL AND CLARK
The Examiner finds that "the Clark reference provides the motivation
of allowing partnerships (conferences) while allowing each partner (device)
to retain unique processes (parameters or conversation policies) without
compromising interactions (Clark, paragraph 7)." (Ans. 14-15.) The
Appellants argue that "[b]ecause the references address completely distinct
problems, one of ordinary skill would have no reason to combine or
otherwise modify the references to achieve the claimed invention." (Br. 16.)

1. Issue
Therefore, the issue is whether the Appellants have shown error in the
Examiner's reasons for combining teachings from Bantel and Clark.

2. Principles of Law
The presence or absence of a reason "to combine references in an
obviousness determination is a pure question of fact." In re Gartside, 203
F.3d 1305, 1316 (Fed. Cir. 2000) (citing In re Dembiczak, 175 F.3d 994,
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1000 (Fed. Cir. 1999)). A reason to combine teachings from the prior art
"may be found in explicit or implicit teachings within the references
themselves, from the ordinary knowledge of those skilled in the art, or from
the nature of the problem to be solved." WMS Gaming Inc. v. Int'l Game
Tech., 184 F.3d 1339, 1355 (Fed. Cir. 1999) (citing In re Rouffet, 149 F.3d
1350, 1355 (Fed. Cir. 1998)).

3. Analysis
Here, assuming arguendo that Bantel and Clark address different
problems, a reason to combine teachings from references need not come
from the nature of the problem to be solved. Instead, the Examiner relies on
teachings from Clark.

4. Conclusion
By failing to address, let alone show error in the Examiner's findings
about these teachings, the Appellants have shown no error in the Examiner's
reasons for combining teachings from Bantel and Clark.

III. CLAIMS 3, 9-15, 19-25, 27, 30, 36-42, 46-52, AND 54
The Appellants argue claims 3, 9-15, 19-25, 27, 30, 36-42, 46-52, and
54 inter alia as a group. (Br. 23-25.) All these claims are subject to the
same ground of rejection. Therefore, we select claim 3 as the sole claim on
which to decide the appeal of the group.

The Examiner finds that "Kuno et al teaches of TCDL [i.e,
Transformational Conversation Definition Language] files which are
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interpreted by the Examiner to be conversation policies, which includes the
sequence of interactions between entities, which is similar to a widely
known state machine (Kuno, paragraph 42)." (Ans. 15-16.) The Appellants
argue that "[t]his cited portion makes no mention whatsoever of a state
machine. In fact, the term 'state machine' does not appear anywhere in the
reference. Nothing in the reference teaches the equivalent feature of a state
machine." (Br. 24.)

1. Issue
Therefore, the issue is whether the Appellants have shown error in the
finding that Kuno would appear to have suggested a state machine.

2. Principles of Law
Anticipation "is not an 'ipsissimis verbis' test." In re Bond, 910 F.2d
831, 832-33 (Fed. Cir. 1990) (citing Akzo N.V. v. United States Int'l Trade
Comm'n, 808 F.2d 1471, 1479 n.11 (Fed. Cir. 1986)). "An anticipatory
reference . . . need not duplicate word for word what is in the claims."
Standard Havens Prods. v. Gencor Indus., 953 F.2d 1360, 1369 (Fed. Cir.
1991). We hold that the same is true for obviousness. Obviousness
Anticipation is not an ipsissimis verbis test. References need not duplicate a
claim limitation word for word to have suggested the limitation.

3. Analysis
Here, the Appellants' argument that "the term 'state machine' does not
appear anywhere in the reference" (Br. 24) does not defeat obviousness. For
its part, the Examiner's findings that Kuno teaches TCDL files and that the
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files include the sequence of interactions between entities are uncontested.
Although the Appellants allege that "[n]othing in the reference teaches the
equivalent feature of a state machine" (Br. 24), they do not specifically
address, let alone show error in, the Examiner's finding that Kuno's TCDL
files are "similar to a widely known state machine . . . ." (Answer 16.)

4. Conclusion
For the aforementioned reasons, the Appellants have shown no error
in the finding that Kuno would appear to have suggested a state machine.

IV. CLAIMS 4-8, 26, 31-35, AND 53
The Examiner finds that "Kuno et al further teaches the TCDL can
include various sub conversations during one conversation (paragraph 49,
lines 6-8)." (Ans. 6.) More specifically, he finds that "Kuno et al teaches of
using a purchase order conversation controller which is the primary
conversation and the child conversations may include, receive invoice,
transmit payment and the like, each child conversation does a different task
and inherently has its own set of instructions." (Id. 16.) The Appellants
argue that "this portion of Kuno clearly makes no mention whatsoever of a
state transition to a child conversation policy." (Br. 25.)

1. Issue
Therefore, the issue is whether the Appellants have shown error in the
Examiner's finding that Kuno teaches a child conversation policy.

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2. Principle of Law
In rejecting claims under 35 U.S.C. § 103, the examiner bears the
initial burden of presenting a prima facie case of obviousness." In re
Rijckaert, 9 F.3d 1531, 1532 (Fed. Cir. 1993) (citing In re Oetiker, 977 F.2d
1443, 1445 (Fed. Cir. 1992)).

3. Findings of Fact
The paragraph of Kuno on which the Examiner relies discloses that
"customer 340 may utilize a computer 345 executing a TCDL client 347 that
exchanges documents with a purchase order conversation controller 325 in
the computer 320." (¶ [0049].) "The interactions between customer 340 and
the entity A may include transmit/receive purchase order, receive invoice,
transmit payment, and the like." (Id.)

4. Analysis
Figure 3 of Kuno shows that the purchase order conversation
controller 325 is a component of the computer 320. The controller is not a
conversation, but a component that controls a conversation. Because the
purchase order conversation controller is a component of a computer, we
disagree with the Examiner's finding that the "purchase order conversation
controller . . . is [a] primary conversation . . . ." (Answer 16.) Because the
purchase order conversation controller is not a conversation, we also
disagree with the Examiner's finding that reference's receive invoice and
transmit payment interactions are child conversations of the purchase order
conversation controller. The Examiner does not allege, let alone show, that
the addition of Bantel or Clark cures the aforementioned deficiency of Kuno.
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5. Conclusion
For the aforementioned reasons, the Appellants have shown error in
the Examiner's finding that Kuno teaches a child conversation policy.

V. CLAIMS 16-19 AND 43-45
The Examiner admits that "Bantel et al in view of Clark in view of
Kuno et al" (Answer 13) "fails to teach of dynamically adding to a group of
policies" (id.). He finds, however, that "Wu teaches of translating data into a
universal format to allow communication between a database, XML
documents, directories, and folders." (Id. 16.) The Appellants argue that
"Wu is non-analogous art, which cannot be used to establish obviousness."
(Br. 28.)

1. Issue
Therefore, the issue is whether the Appellants have shown error in the
Examiner's reliance on Wu.

2. Principles of Law
"Whether a reference in the prior art is analogous' is a fact question."
In re Clay, 966 F.2d 656, 658 (Fed. Cir. 1992) (citing Panduit Corp. v.
Dennison Mfg. Co., 810 F.2d 1561, 1568 n.9 (Fed. Cir. 1987)). Two criteria
have evolved for answering the question: "(1) whether the art is from the
same field of endeavor, regardless of the problem addressed, and (2) if the
reference is not within the field of the inventor's endeavor, whether the
reference still is reasonably pertinent to the particular problem with which
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the inventor is involved." Id. at 658-59 (citing In re Deminski, 796 F.2d
436, 442 (Fed. Cir. 1986); In re Wood, 599 F.2d 1032, 1036 (CCPA 1979)).

3. Findings of Fact
The Examiner does not disagree with the Appellants that "Wu teaches
a system for translating a universal query language to SQL" (Br. 28), i.e.,
structured query language.

4. Analysis
The Examiner does not show error in the Appellants' argument that
the reference "is unrelated to conversation policies." (Id.) Although Wu
does "translat[e] data into a universal format to allow communication"
(Answer 16), the Examiner does not allege, let alone show, that such
translating places the reference in the same field of endeavor as the
Appellants' invention or makes the reference reasonably pertinent to the
particular problem with which the Appellants are involved.

5. Conclusion
For the aforementioned reasons, the Appellants have shown error in
the Examiner's reliance on Wu.

VI. ORDER
We affirm the rejection of claims 1 and 2 and of claims 28, 29, and
55, which fall therewith. We also affirm the rejection of claim 3 and of
claims 9-15, 19-25, 27, 30, 36-42, 46-52, and 54, which fall therewith. We
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reverse the rejections of claims 4-8, 26, 31-35, and 53. We reverse the
rejection of claims 16-18 and 43-45.

No time for taking any action connected with this appeal may be
extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED-IN-PART

rwk

DUKE W. YEE
YEE & ASSOCIATES, P.C.
P.O. BOX 802333
DALLAS TX 75380
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