Ex Parte Overby et al

Patent Trial and Appeal Board

Feb 22, 2017

11354360 (P.T.A.B. Feb. 22, 2017)

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.
11/354,360 02/15/2006 Linwood H. Overby JR. RSW920060014U S1 (235) 7036
46320 7590
CRGO LAW
STEVEN M. GREENBERG
7900 Glades Road
SUITE 520
BOCA RATON, EL 33434
EXAMINER
CROMPTON, CHRISTOPHER R
ART UNIT PAPER NUMBER
2463
NOTIFICATION DATE DELIVERY MODE
02/24/2017 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 LINWOOD H. OVERBY JR. and
MARK T. WRIGHT
Appeal 2016-000789
Application 11/354,360
Technology Center 2400
Before JOSEPH L. DIXON, JAMES R. HUGHES, and ERIC S. FRAHM,
Administrative Patent Judges.
DIXON, Administrative Patent Judge.
DECISION ON REQUEST FOR REHEARING
Appeal 2016-000789
Application 11/354,360
Appellants filed a Request for Rehearing under 37 C.F.R. § 41.52 on
January 30, 2017 (“Request”), requesting that we reconsider our Decision on
Appeal of November 30, 2016 (“Decision”). In our Decision, we affirmed
the Examiner’s rejection of claims 1, 2, 7, 9, 18, and 26 under 35 U.S.C.
§ 103(a) as obvious over the combination of Brown in view of Newstadt in
view of Jordan in view of Chandrashekhar in view of Moore. Also, we
affirmed the rejections of particular dependent claims in view of Brown,
Newstadt, Jordan, Chandrashekhar, and Moore, as well as additional
references. Appellants limit their Request to the rejection and decision
regarding the independent claims.
We reconsider our Decision in light of Appellants’ arguments in the
Request, but we decline to change the Decision. We are not persuaded that
we misapprehended or overlooked the points argued by Appellants in
rendering our Decision.
ANALYSIS
In the Request, Appellants contend that in the Decision, at least one
finding by the Board was unsupported by substantial evidence and that the
Board misapprehended or overlooked certain arguments presented by
Appellants in the Appeal Brief and Reply Brief (Request 2).
Appellants repeat the claim language and contend:
previously Examiner referred to the teaching in Moore of a
thumbnail image as being equivalent to the claimed “thumbnail
image representing a different network topology”. But, at pages
8 and 9 of the Appeal Brief and again at page 8 of the Reply
Brief, Appellants pointed out that while Moore referenced both
thumbnails and “network topologies”, Moore did not show a
thumbnail that represented a network topology. As such, since
Examiner did not rely upon any other reference to account for
the claimed thumbnail representing a different network topology,
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Application 11/354,360
the combination of cited references necessarily lacked the
claimed thumbnail that represented a network topology. In the
Decision, however, the Board appears to have overlooked this
critical argument.
Request 4. We disagree with Appellants and find that the Examiner clearly
identified that the combination of the Brown and Jordan references were
relied upon for the different network topologies and the Moore reference
was relied upon to teach and suggest the use of thumbnails to represent those
topologies (Ans. 4—7).
Appellants further contend that
the findings of the Board begin at page 4 of the Decision. At
pages 4 and 5, the Board acknowledges the existence of this
argument, but the Board does not provide a finding of fact in
connection with this argument. At page 5 of the Decision, the
Board proceeds then to address a different argument in respect to
the “to detect a selection” language of Appellants’ claims. At
pages 5 and 6 of the Decision, the Board continues to address yet
another argument in respect to the claimed “security services
protocol implementation”. But, the Board never returns to the
core argument of the claimed “thumbnail image representing a
different network topology.”
Request 4—5. We find our Decision addresses the claim language and the
prior art references as set forth in the rejection as set forth by the Examiner
with regards to independent claim 1. In the Decision, we stated:
The Examiner further maintains that the combination of the
Brown and Jordan references were used to teach and suggest the
display and selection of a network topology which includes a
detection of a selection of a topology because configuration
settings for a selected topology are applied in response to the
selection of the topology. (Ans. 5, 6—7).
Decision 5. We modify the citation “(Ans. 5, 6—7)” to additionally cite to
the Examiner’s Answer at the bottom of page 4 where the Examiner
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acknowledges that the combination of Brown and Jordan with respect to the
network topologies are not taught as thumbnails, but the Moore reference is
relied upon to teach the well-known use of thumbnails for the graphic
display interface of the combined teachings of the Brown and Jordan
references. The Examiner stated:
Moore, used in combination with Brown and Jordan, discloses
that network topologies, which are displayed as images in the
combination of Brown and Moore, can be displayed as associated
thumbnail images (paragraph 127 a graphic can be used to
display information, including topologies, the information can be
displayed as a thumbnail image).
Therefore Moore is used to show that the displayed
topologies descriptions in the GUI of the combination of Brown
and Jordan can be represented by thumbnail images.
Therefore the combination of Brown, Jordan, and Moore would
disclose the claimed limitation.
Ans. 4—5.
We note Appellants have not identified any specific argument for
patentability based upon the content of the displayed thumbnails or the
functionality of the thumbnails. Again, Appellants merely repeat the
language of the claim and generally assert that the prior art does not teach or
suggest the claimed invention and the Board has not made a specific finding
regarding a claim limitation. We find the Examiner has made specific
factual findings in combination with the references (Ans. 4—7). As a result,
Appellants’ argument does not identify any points misapprehended or
overlooked by the Board in its Decision. Consequently, it is unclear what
Appellants’ “core argument” and “critical” language Appellants contend has
been overlooked or misapprehended because the Examiner did not rely upon
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Application 11/354,360
the Moore reference for the totality of the claimed “thumbnail image
representing a different network topology.”
We find Appellants’ argument is not commensurate in scope with the
rejection as applied by the Examiner regarding “a set of network topology
descriptions, each network topology description comprising a thumbnail
image representing a different network topology.” Consequently, the Board
has not overlooked or misapprehended Appellants’ argument nor did the
Board misapprehended or overlooked the broad language recited in
independent claim 1 and corresponding language in independent claims 9
and 18.
In summary, Appellants attempt to characterize the combination and,
specifically, the Moore reference as insufficient regarding the core argument
of the claimed “thumbnail image representing a different network topology.”
In our Decision, we found that the Examiner made specific findings and
explained how the combination of references would have at least suggested
the disputed claim limitation. Appellants have not explained with specificity
how the Board’s decision erred. Thus, we are not persuaded that we
misapprehended or overlooked the points argued by Appellants in rendering
our Decision, and Appellants thus have not persuaded us of error in our
Decision.
DECISION
We grant Appellants’ Request for Rehearing to the extent that we
have reconsidered our Decision, but we deny the Request with respect to
making any changes thereto beyond extending the citation on page 5 of the
decision to also include page 4 of the Examiner’s Answer in the citation
“(Ans. 5, 6-7).”
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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)(l)(iv).
REQUEST FOR REHEARING DENIED
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