Ex Parte Muller et al

Patent Trial and Appeal Board

Sep 13, 2016

11567969 (P.T.A.B. Sep. 13, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
111567,969 12/07/2006
46321 7590 09/15/2016
CRGOLAW
STEVEN M. GREENBERG
7900 Glades Road
SUITE 520
BOCA RATON, FL 33434
FIRST NAMED INVENTOR
Michael Muller
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
CAM920060124US1 (156) 8507
EXAMINER
NGUYEN, THUY-VI THI
ART UNIT PAPER NUMBER
3689
NOTIFICATION DATE DELIVERY MODE
09/15/2016 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 MICHAEL MULLER,
ANDREW L. SCHIRMER, and PAUL B. MOODY
Appeal2014-001082
Application 11/567 ,969
Technology Center 3600
Before ANTON W. PETTING, MICHAEL C. ASTORINO, and
MATTHEWS. MEYERS, Administrative Patent Judges.
MEYERS, Administrative Patent Judge.
DECISION ON REQUEST FOR REHEARil...JG
STATEMENT OF THE CASE
Appellants filed a Request for Rehearing ("Request"), dated May 21,
2016, seeking rehearing of the Patent Trial and Appeal Board ("Board")
Decision on Appeal, mailed March 23, 2016, (hereinafter the "Decision"), in
which we affirmed the Examiner's decision rejecting claims 1, 3-5, 7, 10,
11, 13-15, and 17 under 35 U.S.C. § 103(a) as unpatentable over Charisius
(US 2002/0075293 Al, pub. June 20, 2002) and McCauley (US
2005/0251505 Al, pub. Nov. 10, 2005), claims 2, 8, 9, 12, 18, and 19 under
35 U.S.C. § 103(a) as unpatentable over Charisius, McCauley, and Official
Appeal2014-001082
Application 11/567 ,969
Notice, and rejecting claims 6 and 16 under 35 U.S.C. § 103(a) as
unpatentable over Charisius, McCauley, and Ly (US 2004/0017400 Al, pub.
Jan. 29, 2004).
Based on the discussion which follows, the request for rehearing is
denied, other than providing additional clarification and discussion below,
which does not alter the disposition of this Appeal.
We have jurisdiction over the Request under 35 U.S.C. § 6(b).
ANALYSIS
Appellants allege in their Request
the Board appears inadvertently and in error, to have misquoted
Examiner. Examiner did not find that Charisius teaches the
document as an activity. Rather, the Examiner at page 15 of the
Reply Brief [sic, Answer] argued that Charisius only 'implied'
that an activity is the creation of a document - a statement of
inherency.
(Request 6). We agree with Appellants that the Decision inadvertently and
erroneously misquoted the Examiner's statement, at page 15 of the
Examiner's Answer, by stating that "[t]he activity is the creation of the
document" (Decision 8 (citing Ans. 15)), instead of "[t]he activity is the
implied creation of the document" (Ans. 15), as it appears properly in the
Examiner's Answer. Thus, the Request has persuaded us that the Decision
inadvertently, and in error, misquoted the Examiner, and as such, we modify
our Decision to reflect this omission. However, as discussed in greater
detail below, we find this omission fails to alter the outcome of the Decision.
Appellants further allege in the Request that the Board
misapprehended or overlooked points of law or fact with respect to
2
Appeal2014-001082
Application 11/567 ,969
Appellants' "core arguments of the Appeal Brief and Reply Brief at pages 7
and 8" (Request 3-5). More particularly, Appellants argue
neither the Examiner nor the Board has shown where in Charisius
the stages of the activity of creating a document are present. In
fact, the stages highlighted by the Board are not stages of creating
a document. Only DRAFT is a stage of creating a document.
APPROVED is a state of document already created and
subsequently approved by an individual. Thus, ... the Board has
erred in adopting Examiner's finding of inherency as to the
stages of an activity when the evidence presented by the
Examiner and recognized by the Board at pages 7 and 8 of the
Decision pertains to a state of a document - not to multiple
different states of the activity of creating a document.
(Id. at 7).
At the outset, we note that for the first time in this Request,
Appellants argue that the Examiner's rejection improperly relies on
inherency (id. at 6---7). That is, Appellants' argument that "[c]learly, the
creation of a document (a non-activity object) itself is not an 'activity' in an
activity thread in the sense of the Appellants' invention" (Reply Br. 6), fails
to address whether the Examiner's implicit finding, i.e., "[t]he activity is the
implied creation of the document" (Ans. 15) is based on inherency.
However, a request for rehearing is not an opportunity to raise arguments
that could have been made earlier. And Appellants have not shown good
cause for the Board to entertain any new argument for the first time on
rehearing. See 37 C.F.R. § 41.52(a)(l).
Moreover, even putting aside the untimeliness of Appellants'
argument, Appellants' Request provides no explanation as to why the
Examiner's statement that "[ t ]he activity is the implied creation of the
document" (Ans. 15) is improper or any other persuasive evidence to
3
Appeal2014-001082
Application 11/567 ,969
establish that Charisius does not possess the alleged inherent feature. See Jn
re King, 801 F.2d 1324, 1327 (Fed. Cir. 1986). That is, Appellants only
assert that "the Examiner nor the Board has shown where in Charisius the
stages of the activity of creating a document are present" (Request 7).
Notwithstanding, we find Charisius provides evidence to support the
Examiner's finding that "[t]he activity is the implied creation of the
document" (Ans. 15).
In this regard, we note that Charisius discloses that its "[ c ]lient
Interface 134 receives document state properties 3722 as one of the
Condition properties 3702 for the document-type condition model to be
created by the Client Interface" (Charisius i-f 146; see also id. Fig. 37). We
note that Charisius discloses that "[t]he condition properties 3702 include
condition-name property 3704 for the document-type condition model" (id.
i-f 142). Charisius further discloses
[ d]ocument state properties 3722 identify possible values for a
state property of a document condition that is created using the
document-type condition model. As further explained herein, an
enterprise affiliate who has been identified as the responsible
owner of an activated task may change the state property of a
document condition (e.g., from "DRAFT" to "APPROVED")
using the Client Interface, which sends a request to WebDA V
Server 140 in FIG. 2 to set the state property of the document
condition as indicated by the enterprise affiliate.
(Id.). As such, we find Charisius refers to the document as an activated task,
i.e., "condition-name property 3704" whereas the state property refers to "a
document condition (e.g., from 'DRAFT' to 'APPROVED')" (id. i-fi-1 142,
144; see also id. Fig. 37). Thus, in our view, the Examiner's statement that
"[t ]he activity is the implied creation of the document" is reasonably
supported by the portions of Charisius cited in the Examiner's Answer (see,
4
Appeal2014-001082
Application 11/567 ,969
e.g., Ans. 15 (citing Charisius if 146)), and relied upon by the Board in our
Decision (see Decision 4, 7-8). As such, we are not persuaded that the
Board misapprehended or overlooked any points of law or fact with respect
to Appellants' "core arguments of the Appeal Brief and Reply Brief at pages
7 and 8" (Request 3-5).
Accordingly, we modify our original Decision to the extent we
modify "[t]he activity is the creation of the document" (Decision 8 (citing
Ans. 15)) to state properly "[ t ]he activity is the implied creation of the
document" (see Ans. 15 (emphasis added)), but decline to modify its
ultimate disposition.
DECISION
Accordingly, although we have granted Appellants' request for
rehearing to the extent that we have reconsidered and modified our previous
decision, the request is denied with respect to making any pertinent
modification of the outcome of the Decision.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
REHEARING DENIED
5