Ex Parte Knawa et al

Patent Trial and Appeal Board

Sep 8, 2016

13159058 (P.T.A.B. Sep. 8, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/159,058 06/13/2011
63759 7590 09/12/2016
DUKEW. YEE
YEE & AS SOCIA TES, P.C.
P.O. BOX 802333
DALLAS, TX 75380
FIRST NAMED INVENTOR
David P. Knawa
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.
10-1034-US-NP 1701
EXAMINER
SAAVEDRA, EMILIO J
ART UNIT PAPER NUMBER
2127
NOTIFICATION DATE DELIVERY MODE
09/12/2016 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):
ptonotifs@yeeiplaw.com
mgamez@yeeiplaw.com
patentadmin@boeing.com
PTOL-90A (Rev. 04/07)
UNITEn STATES PATENT ANn TRA.nEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Exparte DAVID P. KNAWA,
CRAIG EDWARD MCDONEL, MARK A. DAHL,
STEVEN E. FRANZEN, DONNA WYNN MCWATERS,
DARWIN G. REED, ROBERT J. SCHREIBER, and
GERALDINE RAE SUMMERS
Appeal2015-002827
Application 13/159,058
Technology Center 2100
Before ALLEN R MACDONALD, CARL W. WHITEHEAD JR., and
ADAM J. PYONIN, Administrative Patent Judges.
PYONIN, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a) from a final
rejection of claims 1-20, which are all pending claims. We have jurisdiction
under 35 U.S.C. § 6(b).
We REVERSE.
Appeal2015-002827
Application 13/159,058
STATEMENT OF THE CASE
Introduction
Appellants' disclosure is directed to "managing products using
product designs and standards information obtained from product
standards." Specification i-f 1. Claims 1, 11, and 18 are independent. Claim
1 is reproduced below for reference (with emphasis added) 1:
1. A product management system comprising:
a computer system;
a processing module in the computer system, wherein the
processing module is configured to display a product design in
the computer system; and
a proxy object in the product design, wherein the proxy
object refers to a number of product standards and is associated
with a component in the product design and wherein the proxy
object is configured to receive user input requesting standards
information for the component; identifY a role of an operator;
and obtain the standards information in a format based on the
role of the operator such that the standards information is
displayed in the computer system.
The Examiners Rejection
Claims 1-20 stand rejected under 35 U.S.C. § 102(b), as being
anticipated by "Integration-Based Cooperation in Concurrent Engineering"
by Hillebrand et al., Enterprise Distributed Object Computing Workshop,
1998, page. 344--355 (hereinafter, "Hillebrand"). Final Action 2.
1 Herein, we refer to the emphasized claim language as the "proxy object
limitations."
2
Appeal2015-002827
Application 13/159,058
ANALYSIS
Appellants argue the Examiner erred in rejecting claim 1, because
"the Office Action has not properly assessed the breadth of claim 1 and thus
has not properly compared claim 1 to Hillebrand." Appeal Brief 14.
Particularly, Appellants contend:
Hillebrand does not disclose a proxy object in the product design,
as claimed .... Hillebrand does not actually disclose that all of
the claimed functions are within the proxy object [as required by
claim 1] . . . . The Office Action attempts to infer that all such
functions would have to be handled by the CORBA objects in
Hillebrand; however, the Office Action interpretation is based on
assumption and inference, not on a direct teaching of Hillebrand
that a proxy object contains all of the claimed functions. Again,
anticipation focuses on whether a claim reads on the product or
process a prior art reference discloses, not on what the reference
broadly teaches.
Appeal Brief 16.
We agree with Appellants. We are persuaded the Examiner erred in
finding the recited "product design" is tantamount to Hillebrand's Product
and Production Model (PPM). See Reply Brief 9; Answer 10; see also
Figure 5 (item 502).
Further, the Examiner finds the claimed "a product design in the
computer system; and a proxy object in the product design" encompasses
Hillebrand's disclosure of the PPM, which is "represented by [p]roxy objects
as client-local and server objects on a system." Final Action 3 (citing
Hillebrand 353, column 1 ). The Examiner does not, however, show or
explain how Hillebrand's proxy objects-which are only briefly mentioned
in Hillebrand---correspond to the requirements of the proxy object
3
Appeal2015-002827
Application 13/159,058
limitations recited in claim 1.2 See Reply Brief 15. Rather, Hillebrand
broadly discloses that various components, such as a CORBA layer/object
bus (including proxy objects), databases, and repositories, are configured for
the functionality required by the proxy object limitations. See, e.g.,
Hillebrand 348.
Thus we do not agree with the Examiner that Hillebrand discloses a
proxy object configured with the proxy object limitations, within the
meaning of claim 1. See Answer 2-31; see also Net Money In, Inc. v.
VeriSign, Inc., 545 F.3d 1359, 1371 (Fed. Cir. 2008) (citation omitted) ("it is
not enough that the prior art reference ... includes multiple, distinct
teachings that the artisan might somehow combine to achieve the claimed
invention.")
Accordingly, we are constrained by the record before us to reverse the
Examiner's anticipation rejection of independent claim 1, and independent
claims 11 and 18 which recite similar limitations, as well as the claims
dependent thereon.
DECISION
The Examiner's rejection of claims 1-20 is reversed.
REVERSED
2 For example, although the Examiner provides charts comparing different
portions of Appellants' Specification and/ or Hillebrand' s disclosure, the
Examiner does not provide charts comparing Appellants' claims to the
disclosure of Hillebrand. See Answer 5-7, 22, 29.
4