Ex Parte Moses et al

Board of Patent Appeals and Interferences

Jun 11, 2010

10091513 (B.P.A.I. Jun. 11, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte DEAN MOSES, ED ANUFF, FERGUS GRIFFIN, JEAN
TESSIER, HANS AKENSSON, JOHN PETERSEN, THOM BELUNIS,
EDITH HARBAUGH, NOAH GUYOT, DAVE MACLEOD,
AMY PHILLIPS, and ETHAN VONDCRWEID
____________

Appeal 2008-000176
Application 10/091,513
Technology Center 2400
____________

Decided: June 11, 2010
____________

Before HOWARD B. BLANKENSHIP, ST. JOHN COURTENAY III, and
STEPHEN C. SIU, Administrative Patent Judges.

COURTENAY, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF THE CASE
Appellants seek our review under 35 U.S.C. § 134 of the Examiner’s
final decision rejecting claims 1-44. We have jurisdiction over the appeal
under 35 U.S.C. § 6(b). We Affirm.

Invention
Appellants’ invention relates to a method, a system and a computer
program product for providing a site as a collection of software web objects.
More particularly, the invention on appeal relates to a method, a system and
a computer program product for providing a site as a collection of web
objects that can be manipulated by a set of users having assigned privileges
defined by permissions associated with each software web object in the
collection of objects. (Spec. 1).

Claim 1 is illustrative:
1. A method of sharing an object in a portal framework, the
method comprising the steps of:

storing a reference to the object in a first repository,
wherein the object is an invokable software object; and

performing a first operation to store a duplicate of the
reference to the object in a second repository;

wherein the first operation is in accordance with a first
privilege granted as defined by a permission.

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Appellants appeal the following rejection:
1. Claims 1-441 as unpatentable under 35 U.S.C. § 103(a) over the
combination of Stefik (U.S. Patent 6,236,971 B1, May 22, 2001), and
Chang (U.S. Patent Application Publication No. 2002/0078377 A1,
Jun. 20, 2002).

ISSUES
Based upon our review of the administrative record, we have
determined that the following issues are dispositive in this appeal:

1. Under § 103, did the Examiner err by finding that the
combination of Stefik and Chang would have taught
or suggested storing a duplicate of a reference to an
object, within the meaning of representative claim 1?

2. Did the Examiner err by improperly combining the
Stefik and Chang references under § 103?

1 We note that dependent claim 42 improperly depends from itself. See 35
U.S.C. § 112, 4th paragraph. We assume this oversight to be a typographical
claim drafting error that will be corrected by amendment in the event of
further prosecution.
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FINDINGS OF FACT

1. Stefik teaches a system for controlling the distribution and use
of digital works using digital tickets where a ticket is described
as “an indicator that the ticket holder has already paid for or is
otherwise entitled to some specified right, product or service.”
(Col. 4, ll. 7-11).

2. Stefik teaches storing a digital ticket in a repository (col. 51, ll.
42-43).

3. Stefik teaches another repository obtaining a copy of the digital
ticket whereby the digital ticket is possessed by the repository.
(col. 51, ll. 45-46, 54-57).

4. Stefik teaches that digital works may be content, e.g., a
photograph, or digital works can also be executable software
programs. (Col. 8, l. 66 through col. 9, l. 1).

5. Chang teaches invoking operations on remote objects in a
distributed environment. (paras. [0037-0038]).

GROUPING OF CLAIMS
Appellants argue all of the rejected claims as a single group,
specifically addressing independent claim 1. (See App. Br. 12). We select
claim 1 as representative. See 37 C.F.R. § 41.37(c)(vii).
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ANALYSIS
Issue 1
We decide the question of whether the Examiner erred by finding that
the combination of Stefik and Chang would have taught or suggested storing
a duplicate of a reference to an object, within the meaning of representative
claim 1.
Appellants contend that the term “‘reference to an object’ as used in
the art is understood to mean a reference that points to the location of an
object in a database or file system and identifies the object type (for
example, a pointer).” (App. Br. 12, ¶2).
The Examiner reads the claimed “reference to an object” on Stefik’s
teaching of a digital ticket. (Ans. 8; see also FF 1). Specifically the
Examiner finds that Stefik’s “ticket is a reference to an object because it
refers to or associates with an object (i.e., a digital work).” (Ans. 8, ll. 2-4).
We begin our analysis by broadly but reasonably construing the
claimed “reference to an object.” (Claim 1). During prosecution, “the PTO
gives claims their ‘broadest reasonable interpretation.’” In re Bigio, 381
F.3d 1320, 1324 (Fed. Cir. 2004) (quoting In re Hyatt, 211 F.3d 1367, 1372
(Fed. Cir. 2000)).
We observe at the outset that Appellants’ argued definition for the
term “reference to an object” (i.e., as a pointer to a location of an object in a
database of a file system that also identifies the object type) is not
accompanied by a citation to specific support in Appellants’ Specification.
(App. Br. 12, ¶2). However, after reviewing the specific portions of
Appellants’ Specification listed under the “Summary of the Claimed Subject
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Matter” section of the principal Brief (p. 4), we find nothing more than the
claimed phrase itself as support: See e.g., “reference to the object” (Spec.
43, l. 14) or “reference to an object.” (Spec. 43, l. 10).
On this record, we conclude that the Examiner’s interpretation, while
broad, is reasonable in light of Appellants’ Specification. Although
Appellants strenuously argue that the term “reference to an object” is a
pointer to a location of an object in a database of a file system that also
identifies the object type (App. Br. 12, ¶2), we observe that these argued
additional limitations are not recited in representative claim 1. We note that
patentability is based upon the claims. “It is the claims that measure the
invention.” SRI Int’l v. Matsushita Elec. Corp. of America, 775 F.2d 1107,
1121 (Fed. Cir. 1985) (en banc). A basic canon of claim construction is that
one may not read a limitation into a claim from the written description.
Renishaw plc v. Marposs Societa' per Azioni, 158 F.3d 1243, 1248 (Fed. Cir.
1998).
This reasoning is applicable here. We will not endeavor to read
Appellants’ argued limitations into the claim. Appellants could have
amended their claims during prosecution to recite the specific argued
limitations to clarify the meaning and intended scope of the disputed claim
term “reference to an object.” However, Appellants chose not to do so.
Because “applicants may amend claims to narrow their scope, a broad
construction during prosecution creates no unfairness to the applicant or
patentee.” In re ICON Health and Fitness, Inc., 496 F.3d 1374, 1379 (Fed.
Cir. 2007) (citing In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1364
(Fed. Cir. 2004)).
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For the aforementioned reasons, we agree with and adopt the
Examiner’s claim construction of the claim term “reference to an object” as
an entity that “refers to or associates with an object.” (Ans. 8, ll. 2-4,
underline added).
Given this construction, we agree with the Examiner’s finding that the
combination of Stefik and Chang would have taught or suggested storing a
duplicate of a reference to an object, within the meaning of representative
claim 1. We note that Stefik teaches storing a digital ticket (reference to an
object) in a repository. (FF 2). Stefik teaches another repository obtaining a
copy of the digital ticket whereby the digital ticket is possessed by the
repository. (FF 3). We conclude that Stefik’s teaching of the copy
(duplicate) digital ticket being “possessed by the repository” is sufficiently
suggestive of the copied (duplicate) ticket (reference to the object) being
stored in a different (second) repository so as to render Appellants’
representative claim 1 obvious to an artisan at the time of the invention.
Therefore, for essentially the same reasons argued by the Examiner,
and as discussed above, we find the Examiner did not err in finding that the
combination of Stefik and Chang would have taught or suggested storing a
duplicate of a reference to an object, within the meaning of representative
claim 1.

Issue 2
We decide the question of whether the Examiner erred by improperly
combining the Stefik and Chang references under § 103.
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Appellants strenuously argue that the Examiner has failed to show a
suggestion or motivation to combine the teachings of Stefik and Chang.
(App. Br. 16-17). Appellants further contend that the Examiner’s proffered
combination would result in unacceptable performance and also that the
Examiner has not demonstrated a reasonable expectation of success. (App.
Br. 17-18).
At the outset, we observe that the Examiner merely looks to the
secondary Chang reference as evidence that invokable software objects were
known to artisans at the time of Appellants’ invention. (Ans. 3-4; see also
FF 5). Given this context, we find the thrust of Appellants’ arguments
attacking the proffered combination of Stefik and Chang are grounded on an
erroneous premise, i.e., the incorrect premise that the Examiner’s rejection is
based upon a physical or bodily incorporation of Chang into the invention of
Stefik.
“What appellants overlook is that it is not necessary that the
inventions of the references be physically combinable to render obvious the
invention under review.” In re Sneed, 710 F.2d 1544, 1550 (Fed. Cir. 1983)
(citations omitted); see also In re Nievelt, 482 F.2d 965, 968 (CCPA 1972)
(“Combining the teachings of references does not involve an ability to
combine their specific structures.”). The test for obviousness is not whether
the features of a reference may be bodily incorporated into the structure of
another reference but what the combined teachings of those references
would have suggested to one of ordinary skill in the art. In re Keller, 642
F.2d 413, 425 (CCPA 1981).
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This reasoning is applicable here. Thus, we are in agreement with the
Examiner that an artisan would have found it obvious to apply the usage and
distribution rights associated with Stefik’s digital ticket to Chang’s
executable (invokable) software objects. (Ans. 3-4; see also FF 5). We find
the Examiner’s proffered combination is further buttressed by Stefik’s
teaching that digital works can also be executable (i.e., invokable) software
programs, as opposed to being limited to non-executable content, such as a
digital photograph. (FF 4). Moreover, because an executable software
program (“digital work” as taught by Stefik) may be reasonably considered
as an “invokable software object,” we find the portion of Chang relied on by
the Examiner is essentially cumulative to the teachings of Stefik.2
Based on this record, we are of the view that Appellants’ purported
improvement over the prior art represents no more than the predictable use
of prior art elements (i.e., software objects, references to the objects, and
data repositories) according to their established functions, and thus would
have been obvious to one of ordinary skill in the art. See KSR Int’l Co. v.
Teleflex Inc. 550 U.S. 398, 417(2007) (“when a patent ‘simply arranges old
elements with each performing the same function it had been known to
perform’ and yields no more than one would expect from such an
arrangement, the combination is obvious.”) (citing Sakraida v. AG Pro, Inc.,
425 U.S. 273, 282 (1976).

2 We note that Stefik also contemplates object oriented concepts. (Col. 10, ll.
42-44).

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Moreover, given the breadth of Appellants’ representative claim 1, we
are not persuaded that combining the respective familiar elements of the
cited references in the manner proffered by the Examiner would have been
“uniquely challenging or difficult for one of ordinary skill in the art” at the
time of Appellants’ invention (see Leapfrog Enters., Inc. v. Fisher-Price,
Inc., 485 F.3d 1157, 1162 (Fed. Cir. 2007) (citing KSR, 550 U.S. at 418)).
Therefore, we find the Examiner’s proffered combination of familiar prior
art elements according to their established functions would have conveyed a
reasonable expectation of success to a person of ordinary skill having
common sense at the time of the invention.3
Lastly, we note that Appellants have not rebutted the Examiner’s legal
conclusion of obviousness by showing that the claimed combination of
familiar elements produces any new function. Appellants have not provided
any factual evidence of secondary considerations, such as unexpected or
unpredictable results, commercial success, or long felt but unmet need.
Thus, when we take account of the inferences and creative steps that a
person of ordinary skill in the art would have employed, we find the
Examiner has articulated an adequate reasoning with a rational underpinning
that reasonably supports the legal conclusion of obviousness.

3 Cf. Medichem, S.A. v. Rolabo, S.L., 437 F.3d 1157, 1165 (Fed. Cir. 2006)
(explaining that whether there is “a reasonable expectation of success in
making the invention via” a combination of prior art elements is a question
of fact).

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Therefore, we find Appellants’ arguments unavailing regarding the
combinability of the cited references for essentially the same reasons
proffered by the Examiner in the Answer, and as further discussed above.
Accordingly, we find the Examiner did not err by improperly combining the
Stefik and Chang references under § 103.

CONCLUSION
For at least the aforementioned reasons (discussion of Issues 1 and 2),
we affirm the Examiner’s rejection of representative claim 1. Claims 2-44
fall therewith. See 37 C.F.R. § 41.37(c)(vii).

DECISION
We affirm the Examiner’s § 103 rejection of claims 1-44.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

ORDER
AFFIRMED

pgc

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