10906592 (B.P.A.I. Nov. 16, 2011)

Ex Parte Mourra

Board of Patent Appeals and InterferencesNov 16, 2011

10906592 (B.P.A.I. Nov. 16, 2011)

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. 10/906,592 02/25/2005 John Mourra CA920040044US1 3592 46320 7590 11/17/2011 CAREY, RODRIGUEZ, GREENBERG & O''KEEFE, LLP STEVEN M. GREENBERG 950 PENINSULA CORPORATE CIRCLE SUITE 2022 BOCA RATON, FL 33487 EXAMINER VU, TUAN A ART UNIT PAPER NUMBER 2193 MAIL DATE DELIVERY MODE 11/17/2011 PAPER 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. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES ____________ Ex parte JOHN MOURRA ____________ Appeal 2010-000739 Application 10/906,592 Technology Center 2100 ____________ Before KRISTEN L. DROESCH, JEFFREY S. SMITH, and ERIC B. CHEN, Administrative Patent Judges. SMITH, Administrative Patent Judge. DECISION ON APPEAL Appeal 2010-000739 Application 10/906,592 2 STATEMENT OF THE CASE This is an appeal under 35 U.S.C. § 134(a) from the Examiner’s final rejection of claims 4-11, which are all the claims remaining in the application. Claims 1-3 and 12-19 have been canceled. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. Representative Claim 4. A method for accommodating multi-style application component invocation comprising the steps of: registering a plurality of commands for invocation within a multi-style application component invocation framework; configuring at least one invocation adapter to morph to a specified one of said registered commands; and, invoking said specified one of said registered commands through said configured invocation adapter. Examiner’s Rejections Claims 4-11 stand rejected under 35 U.S.C. § 102(e) as being anticipated by Brown (US 7,047,517 B1). Claim Groupings In view of Appellant’s arguments in the Appeal Brief, we will decide the appeal on the basis of claim 4. See 37 C.F.R. § 41.37(c)(1)(vii). Appeal 2010-000739 Application 10/906,592 3 ISSUE Did the Examiner err in finding that Brown discloses “configuring at least one invocation adapter to morph to a specified one of said registered commands” as recited in claim 4? ANALYSIS Appellant contends that the Examiner has not provided a claim construction for the claim term “morph.” Appellant further contends that the “configuration of at least one invocation adapter to morph a specified registered command” cannot be located in Brown. To support this contention, Appellant cites a definition of morph from a dictionary, and alleges that the dictionary definition of morph is not described by Brown. Br. 5-8. Appellant’s definition of morph refers to extrinsic evidence that we have not considered. The place for extrinsic evidence in an appeal from an Examiner’s rejection is the Evidence Appendix of the Appeal Brief. See 37 C.F.R. § 41.37(c)(1)(ix)(“Reference to un-entered evidence is not permitted in the brief.”). 1 Moreover, Appellant has not presented evidence to show that the alleged definition from the dictionary was publicly available at the time of invention. We have thus not attempted to retrieve, nor have we considered, Appellant’s extrinsic evidence. 1 For persuasive power, evidence should be submitted for evaluation, as opposed to merely alleging existence of the evidence. As one problematic example, an applicant might cite one narrower definition among several that are available, which does not necessarily reflect the “broadest reasonable” interpretation for the term in question. Or an applicant might, without deceptive intent, redact language in a document that broadens, or actually contradicts, the hearsay statement that is presented. Appeal 2010-000739 Application 10/906,592 4 Even if we were arguendo to consider Appellant’s alleged extrinsic dictionary evidence, our reviewing court guides that extrinsic evidence is unlikely to result in a reliable interpretation of patent claim scope unless considered in the context of the intrinsic evidence. Phillips v. AWH Corp., 415 F.3d 1303, 1319 (Fed. Cir. 2005). The court in Phillips guided that “different dictionaries may contain somewhat different sets of definitions for the same words. A claim should not rise or fall based upon the preferences of a particular dictionary editor, or the court’s independent decision, uninformed by the specification, to rely on one dictionary rather than the other. Id. at 1322. The court in Phillips reaffirmed its view that the specification “is always highly relevant to the claim construction analysis. Usually, it is dispositive; it is the single best guide to the meaning of a disputed term.” Id. at 1315. In the “Summary of Claimed Subject Matter” section of the Appeal Brief, Appellant points to paragraphs 16 and 20 of the Specification to show support for “configuring at least one invocation adapter to morph to a specified one of said registered commands.” Br. 3-4. Paragraph 20 states that “the commands and configurations can be activated to run as multiple types of components, morphing to fit into any enabled invocation style by way of the invocation adapters.” The Examiner finds that the interface disclosed by Brown enables an object class to be added or modified, which describes “configuring at least one invocation adapter to morph to a specified one of said registered Appeal 2010-000739 Application 10/906,592 5 commands.” 2 Ans. 3-4, 11-12. Appellant has not provided a definition of “morph” in the Specification that excludes the interface that enables an object class to be modified as described by Brown. Appellant has also not provided evidence or persuasive argument to rebut the Examiner’s findings. We sustain the rejection of claim 4 under 35 U.S.C. §102(e). Appellant has not provided arguments for separate patentability of claims 5- 11, which thus fall with claim 4. CONCLUSION OF LAW The Examiner did not err in finding that Brown discloses “configuring at least one invocation adapter to morph to a specified one of said registered commands” as recited in claim 4. DECISION The rejection of claims 4-11 under 35 U.S.C. § 102(e) as being anticipated by Brown is affirmed. 2 The Examiner questions whether this limitation satisfies the requirements of 35 U.S.C. §112, first and second paragraph, in the “Response to Arguments” section of the Answer. Ans. 6-11. However, because a rejection under 35 U.S.C. §112 is not before us, we do not address these questions. Appeal 2010-000739 Application 10/906,592 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)(1)(iv). AFFIRMED ELD