Ex Parte Muller et al

Patent Trial and Appeal Board

Dec 26, 2013

11839857 (P.T.A.B. Dec. 26, 2013)

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.
11/839,857 08/16/2007 Michael Muller CAM920070008US1 (175) 9231
46321 7590 12/26/2013
CAREY, RODRIGUEZ, GREENBERG & O''''KEEFE, LLP
STEVEN M. GREENBERG
7900 Glades Road
SUITE 520
BOCA RATON, FL 33434
EXAMINER
PAPPAS, PETER
ART UNIT PAPER NUMBER
2444
MAIL DATE DELIVERY MODE
12/26/2013 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 PATENT TRIAL AND APPEAL BOARD
____________

Ex parte MICHAEL MULLER and ANDREW L. SCHIRMER
___________

Appeal 2011-006489
Application 11/839,857
Technology Center 2400
____________

Before ST. JOHN COURTENAY, III, THU A. DANG, and
CARL W. WHITEHEAD, JR., Administrative Patent Judges.

WHITEHEAD, JR., Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2011-006489
Application 11/839,857

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STATEMENT OF THE CASE
Appellants are appealing claims 1-13. Appeal Brief 5. We have
jurisdiction under 35 U.S.C. § 6(b) (2012).
We affirm.

Introduction
The invention is directed to “method for referencing relative roles
suffixes in a collaborative computing environment.” Appeal Brief 2.

Illustrative Claim (Emphasis Added)
1. A method for referencing relative role suffixes in a collaborative
computing environment, the method comprising:
receiving as input to a collaborative tool in the collaborative
computing environment, a relative reference to a member of the
collaborative computing environment;
decomposing the relative reference into a prefix and a suffix;
determining a member specified by the prefix and a role specified by
the suffix;
transforming the role to a member of the collaborative computing
environment relative to the member specified by the prefix; and,
returning the transformed member to the collaborative tool.

Rejections on Appeal
Claims 1, 2, 4-9, and 11-13 stand rejected under 35 U.S.C. § 102(b) as
being anticipated by Castro (U.S. Patent Application Publication Number
2006/0173936 A1; published August 3, 2006). Answer 3-5.
Claims 3 and 10 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Castro and Lindsey (International Application Publication
Number WO 01/86504 A2; published November 15, 2001). Answer 5-6.
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Application 11/839,857

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Issue
Do Castro and Lindsey, either alone or in combination, disclose or
would have suggested “transforming the role to a member of the
collaborative computing environment relative to the member specified by
the prefix” as recited in claim 1?

ANALYSIS
We have reviewed the Examiner’s rejections in light of Appellants’
arguments that the Examiner has erred. We disagree with Appellants’
arguments. We concur with the findings and reasons set forth by the
Examiner in the action from which this appeal is taken and the reasons set
forth by the Examiner in the Answer in response to Appellants’ Appeal
Brief. However, we highlight and address specific findings and arguments
for emphasis as follows.
Appellants argue that the act of transforming is an active step and
“Castro does not appear to teach any ‘transforming’ but instead only teaches
that a context predicate can include an entry such [sic] the ‘designated
human resource specialist for Jenny’s department.’” Appeal Brief 7.
Appellants argue that the Examiner’s analysis of Castro ignores Appellants’
arguments and the language of the claim. Id. at 8. Appellants contend:

As claimed, first the “relative reference” is decomposed
into a prefix and a suffix. There is no teaching of Castro that
shows a prefix and suffix as is recognize by one of reasonable
skill in the art. To the contrary, in figure 3, Castro teaches an
“initial” request having “a [first] set of explicitly identified user
or device identifiers” and “a second set of context predicates”.
This is not the “relative reference” as defined by Appellants’
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disclosure as [prefix] [delimiter] [suffix] in lines 10-13 of
paragraph [0021] and illustrated in the table of paragraph
[0018] which is presented below. For example, in the first entry
of the table, “A. McIntosh” is the [prefix], the “.” is the
[delimiter] and “self” is the [suffix].

Appeal Brief 8.
The Examiner finds Castro teaches the transforming limitation as
claimed:

Castro teaches resolving a request for implicit users and
transforming it into the corresponding user identifiers. Castro
0038. Appellant further states that Castro teaches no prefix and
a suffix in the [prefix][delimiter][suffix] format. Brief, p. 8.
However, the [prefix][delimiter][suffix] format is not part of the
claim language. Furthermore, Castro teaches a name-value
pair, which is equivalent to a prefix suffix format. Castro
teaches an example of the request that consists of a user
identifier (john@xyz.com) followed by an implicit user
identification that consists of “managers of John who are in the
same building as John.” Castro 0038. Identically as in
Appellant's claims, this format is nothing more than a prefix-
suffix combination where the user identifier is the prefix and
the relative reference is the suffix.

Answer 8.
We disagree with Appellants’ arguments that Castro fails to disclose
the claimed transforming step and agree with the Examiner’s findings. See
Answer 8.
Appellants further argue that Castro does not disclose a relative
reference as disclosed by Appellants’ disclosure and provides an example
[A. McIntosh]. Appeal Brief 8. We do not find Appellants’ arguments to be
persuasive because they are not commensurate with the scope of the claims.
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Although giving claims their broadest reasonable interpretation must
take into account any definitions given in the Specification, In re Morris,
127 F.3d 1048, 1054 (Fed. Cir. 1997), it is improper to read into the claims
limitations from examples given in the Specification. In re Zletz, 893 F.2d
319, 321-22 (Fed. Cir. 1989). See also Phillips v. AWH Corp., 415 F.3d
1303, 1323 (Fed. Cir. 2005)(“[A]lthough the specification often describes
very specific embodiments of the invention, we have repeatedly warned
against confining the claims to those embodiments . . . . In particular, we
have expressly rejected the contention that if a patent describes only a single
embodiment, the claims of the patent must be construed as being limited to
that embodiment”) (citations omitted).
The Examiner finds that Castro discloses a request for establishing the
collaborative session and not a request for explicitly identified users as
Appellants argue. Answer 8; Appeal Brief 8. Castro supports the Examiner
findings, “The entire interaction between the DCE, CIPE and CNAE
components is really triggered by the initial request from the requester,
requesting the establishment of the collaborative session.” See Castro,
[0038].
Consequently, we agree with the Examiner’s findings that Appellants’
claimed prefix-suffix format fails to distinguish over Castro’s name-value
pair format. See Answer 8.
Appellants further argue that Castro [0025] does not disclose
“locating a synonymous role to the role specified by the suffix” as recited in
dependent claims 5 and 12. Appeal Brief 10.
The “locating a synonymous role” limitation is broad and as such,
subject to a broad interpretation. During examination of a patent
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application, a claim is given its broadest reasonable construction “in light of
the specification as it would be interpreted by one of ordinary skill in the
art.” In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004)
(citations omitted) (internal quotation marks omitted). Consequently, the
Examiner finds and we agree, Castro discloses, if the multimedia session
between an available doctor and a patient is disconnected, the system will
query for an alternative “currently available doctor” and therefore teaches
the claim language recited in claims 5 and 12 Answer 9.
Therefore we sustain the Examiner’s anticipation rejection of claims
independent claim 1, as well as, independent claims 7 and 8 and dependent
2, 4-6, 9, and 11-13, not separately argued, for the reasons stated above.
Appellants then argue the combination of Castro and Lindsey fails to
disclose the invention as recited in claims 3 and 10 because Lindsey fails to
reveal any generation of a “list of valid roles” for the textually specified
member. Appeal Brief 11 and 14-15. We observe that Appellants attack the
cited references in isolation (Appeal Brief 14-15) and therefore Appellants’
arguments do not take into account what the collective teachings of the prior
art would have suggested to one of ordinary skill in the art and are therefore
ineffective to rebut the Examiner's prima facie case of obviousness. See
In re Keller, 642 F.2d 413, 425 (CCPA 1981)(“The test for obviousness is
not whether the features of a secondary reference may be bodily
incorporated into the structure of the primary reference; nor is it that the
claimed invention must be expressly suggested in any one or all of the
references. Rather, the test is what the combined teachings of the references
would have suggested to those of ordinary skill in the art.” (Emphasis added)
(citations omitted)).
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The Examiner finds that Lindsey “teaches displaying a list of possible
relationships between a selected record in a database and other records.
Lindsey, pg 4, lines 4-5” and articulates a reasoning with rational
underpinning to combine the references - “One of ordinary skill in the art
would take Castro's teachings of specifying a context predicate and apply
Lindsey's teachings of displaying a list of possible relationships in order to
facilitate specification of the context predicates.” Answer 10. “[R]ejections
on obviousness grounds cannot be sustained by mere conclusory statements;
instead, there must be some articulated reasoning with some rational
underpinning to support the legal conclusion of obviousness.” KSR Int’l.,
Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (citing In re Kahn, 441 F.3d
977, 988 (Fed. Cir. 2006)). We agree with the Examiner’s findings.
Consequently, we sustain the Examiner’s obviousness rejection of
claims 3 and 10 for the reasons stated above.

DECISION
The Examiner’s anticipation rejection of claims 1, 2, 4-9, and 11-13 is
affirmed.
The Examiner’s obviousness rejection of claims 3 and 10 is affirmed.
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). See 37
C.F.R. § 41.50(f).

AFFIRMED

kis