Ex Parte Kliewe

Patent Trial and Appeal Board

Nov 30, 2016

13681965 (P.T.A.B. Nov. 30, 2016)

United States Patent and Trademark Office
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
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Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
13/681,965 11/20/2012 John Kliewe END920080431US2 2087
30449 7590 03/13/2017
SCHMEISER, OLSEN & WATTS
22 CENTURY HILL DRIVE
SUITE 302
LATHAM, NY 12110
EXAMINER
HUTTON, NAN
ART UNIT PAPER NUMBER
2154
NOTIFICATION DATE DELIVERY MODE
03/13/2017 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):
30449@IPLAWUSA.COM
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JOHN KLIEWE
Appeal 2015-006831
Application 13/681,9651
Technology Center 2100
Before JEAN R. HOMERE, JOHN A. EVANS, and
DANIEL J. GALLIGAN, Administrative Patent Judges.
Per Curiam.
DECISION ON REQUEST FOR REHEARING
STATEMENT OF THE CASE
This is a decision on rehearing in Appeal No. 2015-006831. We have
jurisdiction under 35 U.S.C. § 6(b).
ANALYSIS
On rehearing, Appellant identifies the following two issues on which
rehearing is being sought: (1) that our Decision affirmed a double patenting
rejection of claims 1, 4—6, 9-11, 14—16, 19, and 20 that had been withdrawn
by the Examiner (Req. Reh’g 1—2) and (2) that our Decision did not address
1 The Appeal Brief identifies the real party in interest as International
Business Machines Corporation. App. Br. 1.
Appeal 2015-006831
Application 13/681,965
the merits of an argument deemed raised for the first time in the Reply Brief.
Req. Reh’g 2—5.
Double Patenting Rejection
Appellant argues that the Examiner withdrew the double patenting
rejection in the Advisory Action. Req. Reh’g 2. Although the Examiner’s
Answer states that the Examiner maintained every ground of rejection set
forth in the Final Office Action (Ans. 2), Appellant is correct that the
Examiner withdrew the double patenting rejection in the Advisory Action.
See Advisory Action (mailed June 24, 2014), 2. Therefore, we vacate our
affirmance of this rejection in our Decision as this rejection was withdrawn
and not before us.
Argument Raised for First Time in Reply Brief
Appellant contends that an argument presented in the Reply Brief that
our Decision deemed raised for the first time was responsive to a new
argument that the Examiner raised in the Answer. Req. Reh’g 2—3 (citing
Reply Br. 5). Appellant asserts the Examiner finds for the first time in the
Answer that Weissman describes the processor receiving the data query
from the user after configuring the access pathway security. Req. Reh’g 3
(citing Ans. 3). Appellant contends to have only rebutted the Examiner’s
allegedly newly raised argument by asserting Weissman does not describe
“that access path security is configured in response to the query hint (i.e., the
alleged configuration query) being received and before the ‘filtered sharing
query’ (i.e., the alleged data query) is received, as required in the preceding
feature of claims 1,6, 11 and 16.” Req. Reh’g 3^4 (quoting Reply Br. 5).
Appellant argues that, because the argument was raised in the Reply Brief in
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Appeal 2015-006831
Application 13/681,965
response to a new finding made by the Examiner in the Answer, the
argument is not waived under 37 C.F.R. § 41.41(b)(2).
We disagree with Appellant that the Examiner raised a new argument
in the Answer regarding the processor receiving the data query from the user
after configuring the access path security. In the Final Office Action, the
Examiner finds Weissman describes the disputed limitation, “in response to
said receiving the configuration query, said processor configuring the access
path security; after said configuring the access path security, said processor
receiving the data query from the user.” Final Act. 7 (citing Weissman
72—85). In the Appeal Brief, Appellant argued that Weissman describes
the user query is received before the configuration query. App. Br. 11—12
(citing Weissman 172). In particular, Appellant argued:
Since the data request for accessing a custom object in table 400
of FIG. 4 is performed before the step of optimizing this data
request to generate an optimized query (which the Examiner
alleges to represent the claimed configuration query), Weissman
does not teach the requirement in claims 1,6, 11 and 16 that the
step of “receiving the data query” is performed after the step of
“receiving the configuration query.”
App. Br. 12. Thus, Appellant’s argument on appeal as to this limitation was
directed to the order of performing the steps of “receiving the data query”
and “receiving the configuration query.”
In the Answer, the Examiner relies on disclosure in Weissman cited in
the Final Action in explaining how Weissman describes the disputed
limitation. Ans. 3 (citing Weissman || 79-85); Final Act. 7 (citing
Weissman || 72—85). The Examiner explains that the system in Weissman
receives a query hint as a configuration query which is then combined with
the sharing query subsequently received from the user as the user query.
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Appeal 2015-006831
Application 13/681,965
Ans. 3. (citing Weissman | 83). We were not persuaded by Appellant’s
argument in view of the Examiner’s analysis. Dec. 6.
Appellant did not explicitly argue in the Appeal Brief that the
Examiner erred in finding Weissman teaches access path security. App.
Br. 11—12. The Examiner’s analysis in the Answer did not argue access path
security per se. Ans. 3. Thus, we conclude that Examiner did not raise a
new argument regarding access path security. Ans. 3. Because Appellant’s
argument raised for the first time in the Reply Brief was not responsive to a
new argument the Examiner made in the Answer, we reiterate that
Appellant’s argument is deemed waived.
CONCLUSION
In view of the foregoing discussion, we grant Appellants’ Request for
Rehearing to the extent that we have modified the Decision by vacating our
affirmance of the double patenting rejection not before us. However, we
maintain our initial decision to affirm the rejection of all claims on appeal.
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).
REHEARING DENIED
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