13021470 (P.T.A.B. Dec. 21, 2016)

Ex Parte Lakshmanan et al

Patent Trial and Appeal BoardDec 21, 2016

13021470 (P.T.A.B. Dec. 21, 2016)

United States Patent and Trademark Office 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 APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO. 13/021,470 02/04/2011 Geetika T. Lakshmanan YOR920100481US1 (Oil) 4615 70672 7590 CRGO LAW 7900 Glades Road SUITE 520 BOCA RATON, EL 33434 EXAMINER NEWAY, SAMUEL G ART UNIT PAPER NUMBER 2657 NOTIFICATION DATE DELIVERY MODE 03/23/2017 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): docketing@crgolaw.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte GEETIKA T. LAKSHMANAN and MARTIN OBERHOFER Appeal 2015-008259 Application 13/021,470 Technology Center 2600 Before MARC S. HOFF, LINZY T. McCARTNEY, and NATHAN A. ENGELS, Administrative Patent Judges. MCCARTNEY, Administrative Patent Judge. DECISION ON REQUEST FOR REHEARING Appellants request rehearing of our December 23, 2016 decision (“Decision”) affirm the Examiner’s rejections of claims 1—21. We deny Appellants’ request. Appeal 2015-008259 Application 13/021,470 Appellants contend we misapprehended or overlooked certain arguments presented by Appellants in their briefing. Req. for Reh’g 2-4. In particular, Appellants argue “the Board appears to not have addressed directly Appellants[’] argument that an ‘event’ is not equivalent to a ‘rules base.’” Id. at 4. That is not the case. We explicitly addressed the Examiner’s findings regarding “events” with respect to the recited “rules” and “rules base”: Because the written description and the claims simply refer to a rule or rules “in a rules base,” Spec. H 14, 15; App. Br. 15, the broadest reasonable interpretation of “rules base” encompasses one or more rules stored in memory. Scherpa discloses “a rule in a rules base” under this understanding of “rules base.” For example, Scherpa teaches that “[rjesponsive to detecting the awareness triggering event, the collaborative server can output a notification to the user indicating the occurrence of the awareness triggering event in the collaborative session.” Scherpa 133 (reference numbers omitted); see also Scherpa 1137-41, Fig. 2 (describing a graphical user interface for specifying the data types included in a notification). Thus, as found by the Examiner, Scherpa teaches the collaborative server applies the following “rule”: upon detecting an awareness triggering event, output a notification to the user indicating the event has occurred. See Ans. 16. One of ordinary skill in the art would understand that because a server performs the rule, the instructions that form the rule reside in memory. The Examiner’s reference to Scherpa’s “awareness triggering events” in this context simply supports the idea that multiple such “rules ” may exist—one for each selected “awareness triggering event. ” See id.; see also Scherpa 147 (“It should be appreciated that the user can select two or more awareness triggering events for which the system can monitor during the collaborative session.”). Decision 5—6 (emphasis added) (citations omitted). 2 Appeal 2015-008259 Application 13/021,470 Appellants also contend “[t]he fact. . . that Scherpa outputs a notification in response to detecting an event is not a rule. There is no teaching at paragraph [0033] [of Scherpa] that such a rule exists.” Req. for Reh’g 4. But as explained in the portion of the Decision reproduced above, Scherpa discloses “the collaborative server applies the following ‘rule’: upon detecting an awareness triggering event, output a notification to the user indicating the event has occurred. One of ordinary skill in the art would understand that because a server performs the rule, the instructions that form the rule reside in memory.” Decision 6. This is sufficient to establish Scherpa anticipates the claimed subject matter. See Dayco Prod., Inc. v. Total Containment, Inc., 329 F.3d 1358, 1368 (Fed. Cir. 2003) (“[T]he dispositive question regarding anticipation [i]s whether one skilled in the art would reasonably understand or infer from the [prior art reference’s] teaching that every claim element was disclosed in that single reference.” (substitutions and first emphasis in original) (final emphasis added) (quotation marks omitted)). For the above reasons, Appellants have not identified any points we misapprehended or overlooked as required by 37 C.F.R. § 41.50(b)(2). We therefore deny Appellants’ rehearing request. REHEARING DENIED 3