Ex Parte Knighton et al

Patent Trial and Appeal Board

Oct 28, 2014

11480152 (P.T.A.B. Oct. 28, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte MARK S. KNIGHTON, SHANE R. ARNEY,
PETER J. DELAURENTIS, and TODD C. MOYER
____________________

Appeal 2012-006736
Application 11/480,152
Technology Center 2400
____________________

Before: JENNIFER D. BAHR, JILL D. HILL, and
TIMOTHY J. GOODSON, Administrative Patent Judges.

BAHR, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Mark S. Knighton et al. (Appellants) appeal under 35 U.S.C. § 134
from the Examiner’s decision rejecting claims 1–24. We have jurisdiction
under 35 U.S.C. § 6(b).
We REVERSE and enter a NEW GROUND OF REJECTION.
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THE CLAIMED SUBJECT MATTER
Claim 1, reproduced below, is illustrative of the claimed subject
matter.
1. A system comprising:
a subsystem of a computer to communicate over a
distributed network, the subsystem to:
organize a chat session in a hierarchy of subject
matter wherein a session comprises a sequential series of
communications from at least one participant;
automatically receive and display to a participant
new communications within the session;
allow a participant to compose a new
communication while receiving or viewing other
communications; and
at least one database to maintain a persistent record of the
sessions and the hierarchical organization; and
a user interface to allow the participant to view the
hierarchy and specify a relationship of the session to the
hierarchy.

REJECTIONS
Claims 18–21, 23, and 24 stand rejected under 35 U.S.C. § 102(b) as
being anticipated by Busey (US 6,785,708 B1, issued Aug. 31, 2004).
Claim 22 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Busey and Spoto (US 5,539,869, issued July 23, 1996).
Claims 1–3, 5–10, 12, and 14 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over Lueckhoff (US 2005/0132298 A1, published
June 16, 2005) and Marmaros (US 7,680,888 B1, issued Mar. 16, 2010).
Claim 4 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Lueckhoff, Marmaros, and Choksi (US 2006/008130 A1,
published Apr. 13, 2006).
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Claims 13, 15, and 16 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Lueckhoff, Marmaros, and Rice (US 2002/0174010
A1, published Nov. 21, 2002).
Claims 11 and 17 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Lueckhoff, Marmaros, and Giroti (US 2004/0034723 A1,
published Feb. 19, 2004).

OPINION
Claims 18–24
For the reasons discussed below in the new ground of rejection, we
determine that claims 18–24 are indefinite. Therefore, we must reverse the
rejection of claims 18–21, 23, and 24 under 35 U.S.C. § 102(b) as being
anticipated by Busey, and the rejection of claim 22 under 35 U.S.C. § 103(a)
as being unpatentable over Busey and Spoto, because a determination of
anticipation or obviousness would require speculation as to the scope of the
claims.1 See In re Steele, 305 F.2d 859, 862–63 (CCPA 1962) (holding that
the Board erred in affirming a rejection of indefinite claims under 35 U.S.C.
§ 103(a), because the rejection was based on speculative assumptions as to
the meaning of the claims).

1 Appellant makes a compelling argument that Busey suggests that the image
458 is added to the chat session in response to action (i.e., input) by the chat
participant (Ursula), not in response to input by the repair advisor. Reply
Br. 5. The determination as to whether this distinction patentably defines
over Busey turns in part on whether the chat participant action can be
considered the “distinct user input” called for in claim 18, which, itself, turns
on what effect is given to the term “local.”
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Claims 1–3, 5, and 6
Independent claim 1 requires, in pertinent part, “a user interface to
allow the participant to view the hierarchy and specify a relationship of the
session to the hierarchy.” Appeal Br. 19, Claims App. Appellants argue that
neither Lueckhoff nor Marmaros teaches or discloses this feature. Appeal
Br. 13.
Neither the Examiner’s rejection nor the Examiner’s response to
Appellants’ argument directly addresses the user interface limitation at issue.
The Examiner points to Marmaros’s teaching of an indexer that receives an
event (such as an instant messaging session) and categorizes it with other
related events by assigning it an ID to index it for future reference. Answer
14. However, Appellants point out that this teaching is not germane to the
user interface limitation of claim 1, because, in accordance with Marmaros’s
teaching, the computer establishes a relationship following a schema, and
“the participant has no choice and cannot specify what the relationship
should be.” Reply Br. 7. The Examiner does not explain, and it is not
readily apparent, how the Examiner proposes to combine the indexer
teachings of Marmaros with Lueckhoff to arrive at the subject matter of
claim 1, including “a user interface to allow the participant to view the
hierarchy and specify a relationship of the session to the hierarchy.”
For the above reasons, we do not sustain the rejection of claim 1 and
its dependent claims 2, 3, 5, and 6 as being unpatentable over Lueckhoff and
Marmaros.

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Claim 4
The Examiner’s rejection of claim 4 as being unpatentable over
Lueckhoff, Marmaros, and Choksi suffers from the same deficiency as the
rejection of claim 1, from which claim 4 depends. Thus, we also do not
sustain the rejection of claim 4.

Claims 7–10
Independent claim 7 requires, in pertinent part, a step of “accepting a
user input to specify a relationship of the session within the hierarchy.”
Appeal Br. 20, Claims App. For essentially the same reasons discussed
above with regard to claim 1, the Examiner’s rejection of independent claim
7 is deficient. See Appeal Br. 14 (“The Examiner has failed to identify what
input is accepted in either reference that specifies a relationship of the
session within the hierarchy.”); Reply Br. 8; Answer 6–7, 16.
Thus, we do not sustain the rejection of independent claim 7 and its
dependent claims 8–10 as being unpatentable over Lueckhoff and
Marmaros.

Claim 11
The Examiner’s rejection of claim 11 as being unpatentable over
Lueckhoff, Marmaros, and Giroti suffers from the same deficiency as the
rejection of claim 7, from which claim 11 depends. Thus, we also do not
sustain the rejection of claim 11.

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Claims 12 and 14
Independent claim 12 requires, in pertinent part, “a user interface to
allow the participant to view articles and specify an association of the
session to a knowledge article.” Appeal Br. 21, Claims App. Independent
claim 14 requires, in pertinent part, a step of “accepting a user specification
of an association between the session and a knowledge article.” Appeal Br.
21, Claims App. Appellants argue that the combination of Lueckhoff and
Marmaros proposed by the Examiner “in no event permits a chat participant
to establish [an association between a chat session and a knowledge
article].” Appeal Br. 15–16. For essentially the same reasons discussed
above with respect to claims 1 and 7, we agree with Appellants. The
Examiner’s explanation on page 18 of the Answer fails to address the
requirement in claim 12 of a user interface to allow the participant to specify
an association of the session to a knowledge article and the requirement in
claim 14 of accepting a user specification of such an association, and thus is
unavailing.
We, therefore, do not sustain the Examiner’s rejection of claims 12
and 14 as being unpatentable over Lueckhoff and Marmaros.

Claims 13 and 15–17
The Examiner’s rejections of claims 13 and 15–17 suffer from the
same deficiency as the rejection of claims 12 and 14, from which they
depend. Neither the Examiner’s application of Rice nor the Examiner’s
application of Giroti cures this deficiency. Thus, we sustain neither the
rejection of claims 13, 15, and 16 as being unpatentable over Lueckhoff,
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Marmaros, and Rice nor the rejection of claim 17 as being unpatentable over
Lueckhoff, Marmaros, and Giroti.

NEW GROUND OF REJECTION
Pursuant to our authority under 37 C.F.R. § 41.50(b), we enter the
following new ground of rejection.
Claims 18–24 are rejected under 35 U.S.C. § 112, second paragraph,
as being indefinite.
Claim 18 recites a step of “automatically selecting a local image in
response to a discrete user input while viewing the article.” Appeal Br. 22,
Claims App. Claim 18 does not specify in relation to what or whom the
selected image must be “local,” and thus does not present any ascertainable
limitation on the location of the “local image” relative to other entities or
structures set forth in the claim. However, we are mindful that claims are
interpreted with an eye toward giving effect to all terms in the claim. See,
e.g., Elekta Instrument S.A. v. O.U.R. Scientific Int'l, Inc., 214 F.3d 1302,
1305, 1307 (Fed. Cir. 2000). Thus, it would be improper to simply ignore
the term “local” in claim 18. See Stumbo v. Eastman Outdoors, Inc., 508
F.3d 1358, 1362 (Fed. Cir. 2007) (denouncing claim constructions which
render phrases in claims superfluous). Moreover, although the Specification
repeatedly uses the words local and locally (see, e.g., Spec. ¶¶ 27–29, 35, 90,
95, 100, 111–113), the Specification does not define “local” or otherwise
resolve the ambiguity as to where a “local” image can and cannot be located.
Inasmuch as a person of ordinary skill in the art would not be able to
ascertain what effect to give to the term “local” in claim 18, the claim is
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indefinite. Claims 19–24 depend from claim 18, and thus incorporate all of
the limitations thereof. Accordingly, claims 19–24 likewise are indefinite.

DECISION
We reverse the Examiner’s decision rejecting claims 18–21, 23, and
24 under 35 U.S.C. § 102(b) as being anticipated by Busey, because these
claims are indefinite, and the rejection necessarily is based on speculation as
to the metes and bounds of the claims.
We reverse the Examiner’s decision rejecting claim 22 under
35 U.S.C. § 103(a) as being unpatentable over Busey and Spoto, because
this claim is indefinite, and the rejection necessarily is based on speculation
as to the metes and bounds of the claim.
We reverse the Examiner’s decision rejecting claims 1–3, 5–10, 12,
and 14 under 35 U.S.C. § 103(a) as being unpatentable over Lueckhoff and
Marmaros.
We reverse the Examiner’s decision rejecting claim 4 under 35 U.S.C.
§ 103(a) as being unpatentable over Lueckhoff, Marmaros, and Choksi.
We reverse the Examiner’s decision rejecting claims 13, 15, and 16
under 35 U.S.C. § 103(a) as being unpatentable over Lueckhoff, Marmaros,
and Rice.
We reverse the Examiner’s decision rejecting claims 11 and 17 under
35 U.S.C. § 103(a) as being unpatentable over Lueckhoff, Marmaros, and
Giroti.
Pursuant to 37 C.F.R. § 41.50(b), we reject claims 18–24 under
35 U.S.C. § 112, second paragraph.

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FINALITY OF DECISION
This decision contains a new ground of rejection pursuant to
37 C.F.R. § 41.50(b). 37 C.F.R. § 41.50(b) provides “[a] new ground of
rejection pursuant to this paragraph shall not be considered final for judicial
review.”
37 C.F.R. § 41.50(b) also provides that Appellants, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new ground of rejection to
avoid termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new evidence relating
to the claims so rejected, or both, and have the matter
reconsidered by the examiner, in which event the proceeding
will be remanded to the examiner. . . .
(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same record. . . .

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).
REVERSED; 37 C.F.R. § 41.50(b)

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