Ex Parte Hsu et al

Patent Trial and Appeal Board

Jun 30, 2016

12636520 (P.T.A.B. Jun. 30, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/636,520 12/11/2009
29973 7590 07/05/2016
CRGOLAW
ATTN: STEVEN M. GREENBERG, ESQ.
7900 Glades Road
SUITE 520
BOCA RATON, FL 33434
FIRST NAMED INVENTOR
Yun-Ping Hsu
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
1301-016U 1502
EXAMINER
TILLERY, RASHAWNN
ART UNIT PAPER NUMBER
2174
NOTIFICATION DATE DELIVERY MODE
07/05/2016 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address( es):
docketing@crgolaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte YUN-PING HSU, MAJED ITANI, AJAY GUPTA,
ROGER SMITH, ROB AAGAARD, ANDREW WU,
COLLIN LEE, and LILA ALEXEI TRETIKOV
Appeal2014-002214
Application 12/636,5201
Technology Center 2100
Before ELENI MANTIS MERCADER, LARRY J. HUME, and
NORMAN H. BEAMER, Administrative Patent Judges.
HUME, Administrative Patent Judge.
DECISION ON REQUEST FOR REHEARING
This is a decision on Appellants' Request for Rehearing of our
Decision on Appeal mailed January 12, 2016.
Appellants' request is denied.
1 According to Appellants, the real party in interest is SugarCRM, Inc.
App. Br. 2.
Appeal2014-002214
Application 12/636,520
BACKGROUND2
Appellants have filed a paper under 37 C.F.R. § 41.52 requesting we
reconsider our Decision affirming the Examiner's rejection of claims 6-27
under§ 103(a) as being obvious over the combination of Hunt and Helfman.
Request 2-9.
We reconsider our Decision in light of Appellants' Request, but
decline to change the decision for the reasons provided, infra.
APPELLANTS' ARGUMENTS
(1) As an initial matter, Appellants state,
the factual findings of the Honorable Board are reviewed to
determine whether they are unsupported by substantial
evidence, and the Board's legal conclusions are reviewed for
correctness in law . . . . Appellants respectfully submit that in
the Decision, at least one finding of the Honorable Board
appears to be unsupported by substantial evidence ....
Request 2 (citations omitted).
(2) Appellants assert, "the ... Board appears to have
misapprehended or overlooked certain arguments presented by Appellants in
the Appeal Brief of June 18, 2013." Request 2. Appellants argue, "the
Board appears to have simply agreed with Examiner but the Board has
provided to [sic] articulation of a rationale as to why the Board agrees with
the Examiner." Request 5.
2 Our Decision on Rehearing relies upon Appellants' Appeal Brief ("App.
Br.," filed July 22, 2013); Reply Brief ("Reply Br.," filed Dec. 4, 2013);
Examiner's Answer ("Ans.," mailed Oct. 4, 2013); Final Office Action
("Final Act.," mailed Jan. 18, 2013); and the original Specification ("Spec.,"
filed Dec. 11, 2009).
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Application 12/636,520
Appellants further contend,
all three sentences of the Board's analysis set forth in the
Decision lack any reason, factual reference or other element
indicative of the reason the Board has chosen to 'agree' with the
Examiner. Rather, the Board appears to have produced three
sentences merely of 'agreement' in violation of the
Administrative Procedures Act [(APA)].
Request 5---6 (footnote citation omitted).
(3) Specifically with respect to the alleged violation of the notice
requirement of the APA, Appellants contend the Board's Decision "does not
meet the notice requirement set forth under the [AP A] under the Gechter
standard of Board decision expression. In this regard, the Gechter standard
sets forth that the Board must explain the basis for its rulings sufficiently to
enable meaningful judicial review." Request 6 (citing Gechter v. Davidson,
116 F.3d 1454, 1460 (Fed. Cir. 1997); In re Gilbert P. Hyatt, 211F.3d1367,
13 71 (Fed. Cir. 2000) (cited by Appellants as demonstrating application of
the Gechter rule.)).
( 4) Appellants conclude by citing Fujimora for its holding that, for
contested limitations on appeal, the Board must set forth its own claim
construction analysis. Request 8 (citing In re Setsuo Fujimora, 130 Fed.
Appx. 465, 468 (Fed. Cir. 2005)). In this regard, Appellants assert:
In the instant case, however, unlike the circumstance of
Hyatt, here the Board has not articulated a single sentence
explaining how any one claim element of any one rejected
claim reflects a teaching found in the cited art based upon
which the Honorable Board has affirmed Examiner's
rejections on the art. Further, unlike the circumstance of
Hyatt, the Honorable Board has neither expressly nor implicitly
set forth a single claim construction for a single claim term
of a single rejected claim. Yet, as in the case of Ex Parte
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Gilbert P. Hyatt and Fujimora, the claim construction of
multiple claim elements is on record in Appellants' Appeal
Brief as being in dispute-namely that of "data field" as having
been improperly construed as a mere "tree map". [See App. Br.
8.]. The Board has not attempted to explain how the claim
term "data field" is properly construed to be so broad as to
encompass a "tree map".
Request 8.
RESPONSE TO ARGUMENTS
We have only considered those timely arguments actually made by
Appellants in deciding this Request. Arguments which Appellants could
have timely made but chose not to make in Request or in the prior Appeal
and Reply Briefs have not been considered and are waived. 37 C.F.R.
§ 41.37(c)(l)(iv).
Argument (1)
While the "substantial evidence" standard cited by Appellants is true
for court review of agency decisions, we note the Examiner's burden of
proof is analyzed using the preponderance of the evidence. The Board's
decision is the final agency decision on patentability, and thus the Board
reviews the fact finding using a preponderance of the evidence (more likely
than not) standard of proof. In re Caveney, 761 F.2d 671, 674 (Fed.
Cir. 1985) (other than for fraud or violation of the duty of disclosure,
preponderance of the evidence is the standard that must be met by the PTO
in making rejections). On judicial review of agency action, administrative
findings of fact must be sustained when supported by substantial evidence
on the record considered as a whole. In re Gartside, 203 F.3d 1305, 1315
(Fed. Cir. 2000).
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Argument (2)
In our Decision, we stated:
We disagree with Appellants' arguments with respect to
claim 6, and we incorporate herein and adopt as our own:
( 1) the findings and reasons set forth by the Examiner in the
action from which this appeal is taken, and (2) the reasons and
rebuttals set forth in the Examiner's Answer in response to
Appellants' arguments. We incorporate such findings, reasons,
and rebuttals herein by reference unless otherwise noted.
However, we highlight and address specific findings and
arguments regarding claim 6 for emphasis ....
Decision 4--5 (emphasis added). Thus, in our Decision, we adopted the
Examiner's factual findings and reasoning as our own, without further need
for expansion under our rules. 3 Under our rules of practice, "short form" or
"per curiam" decisions, substantially more abbreviated than the present
Decision, may be rendered and certainly are not prohibited, as long as the
facts and conclusions of law relied upon would be clear to our reviewing
court.
However, in our Decision, we chose to elaborate at least to some
extent on the Examiner's rejection by concluding,
[i]n this case, we note the Examiner broadly but reasonably
construes the claimed mapping of a source data field to another
data field (of the application) as reading on Helfman's
disclosure of mapping data fields of a table to menus of the user
interface which define data types. Ans. 4.
3 37 C.F.R. § 41.50 "Affirmance and reversal. The Board, in its decision,
may affirm or reverse the decision of the examiner in whole or in part on the
grounds and on the claims specified by the examiner. The affzrmance of the
rejection of a claim on any of the grounds specified constitutes a general
affzrmance of the decision of the examiner on that claim, except as to any
ground specifically reversed. The Board may also remand an application to
the examiner." (Emphasis added.)
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Decision 6.
We additionally opined:
In agreement with the Examiner, we find Helfman's disclosure
of selecting a desired hierarchical data dimension for data from
an external source broadly but reasonably teaches or at least
suggests the contested limitation. In addition, we find
Appellants' reliance upon the purported novelty of mapping a
data field from a source to a data field in an application, and
arguments related thereto, [4J are not persuasive in light of [ ] the
teachings and suggestions of Helfman. See App. Br. 4--8; Reply
Br. 4--8.
Decision 6-7.
In our Decision (5---6), we emphasized that claims are given the
broadest reasonable interpretation (BRI) consistent with the Specification,
and we concluded the Examiner broadly but reasonably construed the
contestedfunctional limitation associated with the claimed "connector"5 of
claim 6, i.e., "one or more connectors ... [that] maps the one or more data
fields from the external data source into a data field associated with the
4 Appellants' arguments in the Appeal and Reply Briefs focused on the
purported functional differences between their claimed system and the cited
prior art's function( s ), and not, to any great extent, on any structural
differences therebetween. See generally App. Br. 4--8; Reply Br. 2-8.
5 In light of Appellants' remarks in the Request (3), we emphasize the
Examiner relies upon Hunt for teaching the claimed "connector." Final
Act. 3. "In embodiments, the open data and tech architecture may support
open technology standards ... using standard connectors." Hunt i-f 1227
(emphasis added). The Examiner provided motivation to combine Hunt with
Helfman (Final Act. 3--4), which Appellants did not contest.
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application," onto Helfman's disclosure of data mapping from an external
data source into a data field associated with the application. Decision 4--5. 6
Accordingly, we find our Decision adequately addressed the
necessary factual findings made by the Examiner in support of the
Examiner's claim construction and legal conclusion of obviousness under
§ 103.
Argument (3)
In support of the alleged violation of the notice requirement of the
AP A, Appellants cite to what they characterize as the "Gee ht er Rule," and
the application of that rule in Hyatt. Request 6-8.
However, Appellants fail to acknowledge that, in Hyatt, the Federal
Circuit explicitly pointed out that "[t]he Board adopted the examiner's
findings" and "[t]he Board adopted the examiner's analysis." Hyatt, 211
F.3d at 1370-71. The court in Hyatt then concluded "the Board addressed
the limitations of each claim in a manner adequate to permit judicial review"
and "decline[d] the invitation to vacate the Board's decision on the ground
that [the Board] failed to explain its reasoning sufficiently to enable us to
review its rulings." Id. at 1371. Also, Appellants' attention is directed to the
court's Rule 36 decision in Carnahan where the Federal Circuit affirmed the
Board decision in Ex parte Carnahan, Appeal 2010-011437 (BPAI
Jan. 13, 2011); which incorporated the Examiner's Answer by reference. In
re Carnahan, 440 F. App'x 927 (Fed. Cir. 2011).
6 On this record, we note Appellants do not point to any explicit definition
of "connector" in the Specification that would preclude the Examiner's
broader reading, nor do they argue the Examiner's position is unreasonable
or inconsistent with the Specification.
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Regarding the Gechter rule, and contrary to Appellants' contention
that they are entitled to a particular Board decision form and content, our
review of Gechter finds no mention of this special "notice requirement" as
argued by Appellants. Our review finds that Gechter states "the statute's
mandate to 'review' implies inherent power in this court to require that the
Board's decision be capable of review." Gechter, 116 F.3d at 1457. We do
not agree with Appellants' attempt to convert this inherent power of our
reviewing court into an entitlement for Appellants that requires the Board's
decision be set forth in a specific manner.
Argument ( 4)
Appellants argue the Board must set forth its own claim construction
analysis. Request 8. We reiterate that our claim construction analysis is the
same as provided by the Examiner in the Final Action and the Answer,
which we adopted as our own and incorporated by reference in our Decision,
as cited, supra. ivioreover, on this record, we conclude our adoption of the
Examiner's claim construction, along with any additional findings and legal
conclusions we may have identified are sufficient for judicial review by our
reviewing court.
CONCLUSION
In view of the above, Appellants have not persuasively shown that we
misapprehended or overlooked any of their arguments, or that our Decision
should otherwise be reversed. For the aforementioned reasons, Appellants'
contentions have not persuaded us of error in our Decision on Appeal of
January 12, 2016.
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Application 12/636,520
DECISION
Accordingly, while we have granted Appellants' Request for
Rehearing to the extent that we have reconsidered our Decision, that request
is denied 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)(l )(iv).
REQUEST FOR REHEARING DENIED
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