Ex Parte Oh et al

Patent Trial and Appeal Board

Jun 14, 2016

12377829 (P.T.A.B. Jun. 14, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/377,829 02/17/2009
66547 7590 06/14/2016
THE FARRELL LAW FIRM, P,C
290 Broadhollow Road
Suite 210E
Melville, NY 11747
FIRST NAMED INVENTOR
Jae-Kwon Oh
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.
678-3637 PCT US
(Pl5811)
EXAMINER
MERCADO, ARIEL
9768
ART UNIT PAPER NUMBER
2176
MAILDATE DELIVERY MODE
06/14/2016 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
Exparte JAE-KWON OH, JEEDIGUNTA VENKATESWA, and
WUKKIM1
Appeal2014-007693
Application 12/377,829
Technology Center 2100
Before JOHNNY A. KUMAR, TERRENCE W. McMILLIN, and
KAMRAN JIVANI, Administrative Patent Judges.
McMILLIN, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision2 on appeal under 35 U.S.C. § 134(a) of the final
rejection of claims 18-36, 38, and 39, which are all the pending claims.
Final Act. 1. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
1 According to Appellants, the real party in interest is Samsung Electronics
Co, Ltd. App. Br. 1.
2 Our decision refers to the Final Office Action mailed December 26, 2013
("Final Act."); Appellants' Appeal Brief filed April 17, 2014 ("App. Br.");
the Examiner's Answer mailed May 6, 2014 ("Ans."); Appellants' Reply
Brief filed June 30, 2014 ("Reply Br."); and the Specification filed February
17, 2009 ("Spec.").
Appeal2014-007693
Application 12/377,829
THE CLAHvIED TI'-JVENTION
According to Appellants' Specification, "[t]he present invention
relates to a system and a method for implementing an XML Document
Management (XDM) forward function, which is one of document
management functions of an XDM v2.0 enabler." Spec. 1. Independent
claim 18 is directed to a server and independent claims 26 and 34 are
directed to methods. App. Br. 11-14 (Claims Appendix). Claim 18 recites:
A server for managing and forwarding an eXtensible
Markup Language (XML) document, the server comprising:
a receiver for receiving a forward request message, from a
first client, that requests forwarding of a target XML document,
wherein the forward request message comprises storing location
information corresponding to the target XML document; and
a processing engine for determining whether the first
client has been granted authority to forward the target XML
document, retrieving the target XML document through the
storing location information, determining whether a second
client accepts forwarding of thee target XML document when the
first client has been granted the authority to forward the target
XML document.
REJECTIONS ON APPEAL
Claims 18-21, 23, 25, 26-29, 31, 33, 34--36, 38, and 39 stand rejected
under 35 U.S.C. § 103 (a) as being unpatentable over Applicant Admitted
Prior Art ("AAP A") 3 and Open Mobile Alliance, XML Document
3 The Appeal Brief states, "[a]lthough not an issue in the present Appeal,
Applicants have never admitted that any of the material recited in the
Background is prior art to the present invention." App. Br. 5 (footnote).
Despite this statement by Appellants, we shall use the acronym AAP A to
refer to the material from the "Background" section of Specification cited by
the Examiner.
2
Appeal2014-007693
Application 12/377,829
J\lfanagement (XDJ\lf) Specification (Version 1.0; June 12, 2006) ("OivIA").
Final Act. 2.
Claims 22 and 30 stand rejected under 35 U.S.C. § 103 (a) as being
unpatentable over AAPA, OMA, and Laurila et al. (US 2007/0255714 Al,
published Nov. 1, 2007) ("Laurila"). Final Act. 16.
Claims 24 and 32 stand rejected under 35 U.S.C. § 103 (a) as being
unpatentable over AAPA, OMA, and Hoover (US 2006/0140173 Al,
published June 29, 2006) ("Hoover"). Final Act. 17.
ANALYSIS
Appellants argue, "[e]ach of independent Claims 18, 26, and 34 recite
a forward request message that requests forwarding of a target XML
document" and that the cited AAP A fails to teach or suggest this limitation.
App. Br. 5. The AAPA cited by the Examiner is paragraph 3 on page 1 of
the Specification which reads:
The XDM forward function refers to a document
management function for forwarding by a user an XML
document stored in an XDMS to other users. In performing the
forwarding, a user may either forward the whole of a
corresponding XML document, or selectively forward a part of
the XML document, or forward the XML document after
modifying a part thereof. Upon receiving the XML document,
a receiving user makes a decision as to whether the user will
accept the forwarded XML document or not. When the
receiving user accepts the XML document, the forwarded
document is owned by this user and is stored in a user directory
of the user within an XDMS.
Specifically, the Appellants argue, "the Background 'does not mention' any
message at all, whether a forward request message or any other type, or even
3
Appeal2014-007693
Application 12/377,829
identifying or locating the recipient of the forwarded XivIL document."
App. Br. 8; Reply Br. 1.
This appeal turns on a matter of claim interpretation relating to the
word "message." In the Examiner's Answer, the Examiner responds to
Appellants' argument with, "[t]he recited 'message' is nothing more than an
electronic command to communicate an instruction form a user to a server."
Ans. 21. See, also, Final Act. 19 ("the recited 'forward request message'
is a command that the XDM forward requesting user performs in order to
forward a XML document sorted in the XDM server.") Appellants fail to
present any interpretation of "message" or to argue any error in the
Examiner's interpretation of"message." App. Br. 5-10; Reply Br. 1--4. We
agree with the Examiner that the broadest reasonable interpretation4 of
"message" encompasses an electronic command such as taught or suggested
by the AAPA.
We are not persuaded by Appellants' argument relating to
independent claims 18, 26, and 34. Appellants do not present any separate
arguments relating to any of the dependent claims. App. Br. 9. Therefore,
we sustain the rejection of all the pending claims.
DECISION
The rejections of claims 18-36, 38, and 39 are affirmed.
AFFIRMED
4 During examination, claims must be interpreted as broadly as their terms
reasonably allow. In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1369
(Fed. Cir. 2004).
4