Ex Parte Nakada et al

Board of Patent Appeals and Interferences

Oct 5, 2009

09832488 (B.P.A.I. Oct. 5, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte AKIFUMI NAKADA, HAJIME TSUCHITANI,
OSAMU FURUSAWA, and TOSHIHIKO ZUZUKI
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Appeal 2008-000843
Application 09/832,488
Technology Center 2400
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Decided: October 5, 2009
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Before JAMES D. THOMAS, HOWARD B. BLANKENSHIP, and
ST. JOHN COURTENAY III, Administrative Patent Judges.

THOMAS, Administrative Patent Judge.

DECISION ON REQUEST FOR REHEARING

Appeal 2008-000843
Application 09/832,488

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In a paper filed on September 15, 2009, Appellants request that we
rehear our decision in the opinion dated July 22, 2009, wherein we affirmed
both rejections of the claims on appeal rejected under 35 U.S.C. § 102.
At page six of the prior decision we observed a claim construction
item of our analysis that the message processing method for execution in the
preamble did not necessarily, positively recite in the body of the claim an
actual execution of the method. We further observed that merely “halting”
and “resuming” did not recite that the execution of the threads themselves is
halted in one place and resumed in another as actually recited. It is
speculative that the execution is halted with respect to the plurality of
conversation threads and it is also speculative that the execution is resumed
with respect to the same conversation threads.
Appellants’ reference to page 7 of the Brief, first paragraph, that the
preamble was argued to us is misplaced since this portion of the Brief relates
to the Summary of the Claimed Subject Matter. The absence of execution of
anything in both Sudo and Bhanot was not presented to us as an argument
beginning in the Argument’s portion of the Brief at page 10. Moreover, the
term “execution” in the Preamble of representative claim 7 is not recited in
the body of the claim and is not referred back to as recited in the body of this
claim. In this Argument’s portion of the Brief, the Appellants did not argue
that Sudo and Bhanot do not provide halting and resuming to the extent
recited in the body of representative independent claim 7 on appeal.
The substance of the arguments beginning at page 10 of the Brief as to
the both references relates to the alleged non existence of mobile agents and
the alleged absence of control part that is capable of controlling a plurality of
Appeal 2008-000843
Application 09/832,488

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conversation threads. Both of these claimed features were discussed in
detail in our prior opinion beginning at page 6.
Our remarks with respect to the control part being recited as merely
“capable of controlling” rather than actually positively stating that the
control of the plurality of threads remain. The quoted portion relates to a
future act that may never positively occur and is not recited to exist in the
present tense. Nevertheless, we tailored our specific analysis with respect to
Sudo and Bhanot forming an actual controlling function of a plurality of
threads in the paragraph bridging pages 7 and 8. We did not and do not
presently consider “capable of controlling” a limitation that distinguishes
over the functionality of both of these references.
Lastly, the bulk of our analysis dealt with the issue of what comprises
a “mobile agent.” The term is actually passively recited “in the message
processor of a mobile agent” in representative independent claim 7 on
appeal. The scope of meaning of this term Appellants intend for it is noted
in detail in FF 1. Our FF 2 with respect to Sudo and FF3 with respect to
Bhanot indicated from an artisan’s perspective that the teachings of these
references were consistent with what Appellants have regarded as broadly as
the term of art is to encompass.
In view of foregoing, Appellants' Request for Rehearing is granted to
the extent that we have reviewed our findings, but is denied as to make any
change therein.

Appeal 2008-000843
Application 09/832,488

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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)(v).

DENIED

erc

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