Ex Parte Lundberg et alDownload PDFPatent Trial and Appeal BoardOct 31, 201411061312 (P.T.A.B. Oct. 31, 2014) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________________ Ex parte STEVEN W. LUNDBERG, THOMAS F. BRENNAN, JANAL M. KALIS, SHAL JAIN, and PRADEEP SINHA ____________________ Appeal 2012-004166 Application 11/061,312 Technology Center 2400 ____________________ Before: JOHN C. KERINS, JAMES P. CALVE, and JILL D. HILL, Administrative Patent Judges. HILL, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Steven W. Lundberg et al. (Appellants) appeal under 35 U.S.C. § 134 from the Examiner’s decision rejecting claims 1 and 4–13. Appeal Br. 2. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE and enter a NEW GROUND OF REJECTION. Appeal 2012-004166 Application 11/061,312 2 CLAIMED SUBJECT MATTER Independent claim 1, reproduced below, illustrates the claimed subject matter. 1. In a patent data processing system for tracking patent application matters, a method comprising: storing and processing intellectual property information in the processing system that is operated by one or more users, said users being able to send and receive internal email messages from within the processing system; restricting a plurality of users' access to said information according to a classification of said information as confidential, trade secret, or invention disclosure; sending an electronic message from within the processing system to one or more said users within said system; receiving an electronic message in the processing system from an e-mail sender, the electronic message specifying a first user and a second user to receive the electronic message from within said system; determining if the second user is allowed access to data for a particular legal matter; determining if the second user is prohibited from accessing contents the electronic message; and if the second user is not specified to receive the electronic message because of the prohibited contents in the message, then said electronic message delivered to said second user and said second user accessing the contents if the contents contain the data for the particular legal matter. EVIDENCE The Examiner relied on the following evidence in rejecting the claims on appeal: Heckman US 5,875,431 Feb. 23, 1999 Brown US 5,941,947 Aug. 24, 1999 Appeal 2012-004166 Application 11/061,312 3 REJECTION Claims 1 and 4–13 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Brown and Heckman. Ans. 4; App. Br. 7.1 OPINION For the reasons discussed below in the new ground of rejection, we determine that claims 1 and 4–13 are indefinite. We further reverse the rejection of claims 1 and 4–13 under 35 U.S.C. § 103(a) as being unpatentable over Brown and Heckman, pro forma, without addressing the merits of that rejection, because a determination of obviousness would require speculation as to the scope of the claims. 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). 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 1 and 4–13 are rejected under 35 U.S.C. § 112, second paragraph, as being indefinite. Independent claim 1 recites receiving an email “specifying a first user and a second user to receive” the email, and then certain actions taken “if the second user is not specified to receive” the email. If the second user is specified initially to receive the email, there cannot be a condition where a 1 Although the Examiner initially states that claims 1, 4, and 5 are rejected under 35 U.S.C. § 103(a), the rejection treats all of claims 1 and 4–13 as subject to this rejection. Ans. 4–9. Appeal 2012-004166 Application 11/061,312 4 second user is not “specified to receive the [email]” as recited in claim 1. Even if the second user is later denied access to or prohibited from viewing content, the second user is still initially a specified recipient of the email. It is unclear how both conditions can be met in claim 1. Further, claim 1 recites: “determining if the second user is allowed access to data for a particular legal matter;” “determining if the second user is prohibited from accessing contents [of] the [email];” and the second user accessing the email contents “if the contents contain the data for the particular legal matter.” Content of the email is only referred to once in the Specification, at line 11 of page 19. Data is discussed throughout the Specification, but data relating to a legal matter is addressed only at lines 6– 9 of page 12, and the relationship between the email, its contents, and associated data relating to a legal matter is unclear, such that it is not sufficiently clear if, when, or why a user would be allowed to access data for a legal matter, but be prohibited from accessing the content of an email, when it appears that the content comprises data because claim 1 also recites “said second user accessing the contents if the contents contain the data for the particular legal matter,” or vice versa. For the reasons set forth above, one skilled in the art would not understand what is claimed, even when the claim is read in light of the Specification. See Power-One, Inc. v. Artesyn Techs., Inc., 599 F.3d 1343, 1350 (Fed. Cir. 2010). Independent claims 4 and 5 include the same recitation, and therefore are similarly indefinite. Claims 6–13 depend from one of independent claims 1, 4, or 5, and thus incorporate all of the limitations thereof. Accordingly, claims 6–13 likewise are indefinite. Appeal 2012-004166 Application 11/061,312 5 DECISION We REVERSE the rejection of claims 1 and 4–13 under 35 U.S.C. § 103(a) as unpatentable over Brown and Heckman. Pursuant to 37 C.F.R. § 41.50(b), we reject claims 1 and 4–13 under 35 U.S.C. § 112, second paragraph. 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. . . . Appeal 2012-004166 Application 11/061,312 6 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) hh Copy with citationCopy as parenthetical citation