Ex Parte Putzolu

Patent Trial and Appeal Board

May 6, 2013

11365297 (P.T.A.B. May. 6, 2013)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
11/365,297 02/28/2006 Gianfranco Putzolu 50277-3077 1396
42425 7590 05/07/2013
HICKMAN PALERMO TRUONG BECKER BINGHAMWONG/ORACLE
1 Almaden Boulevard
Floor 12
SAN JOSE, CA 95113
EXAMINER
CHEN, TE Y
ART UNIT PAPER NUMBER
2168
MAIL DATE DELIVERY MODE
05/07/2013 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 GIANFRANCO PUTZOLU

________________

Appeal 2010-009686
Application 11/365,297
Technology Center 2100
________________

Before JASON V. MORGAN, ERIC B. CHEN, and JOHN G. NEW,
Administrative Patent Judges.

NEW, Administrative Patent Judge.

DECISION ON REQUEST FOR REHEARING
Appellant has filed a Request for Rehearing (hereinafter “Request”)
under 37 C.F.R. § 41.52(a)(1) for reconsideration of our Decision of
February 28, 2013 (hereinafter “Decision”).

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Application 11/365,297

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The Decision affirmed the Examiner’s rejections of claims 1-40
under 35 U.S.C. § 112(b), as follows:
1. Specifically, we affirmed the Examiner’s rejection of
claims 1-40 as unpatentable under 35 U.S.C. § 112(b) as
being indefinite for failing to particularly point out and
distinctly claim the subject matter which applicant regards
as the invention.
2. We reversed the Examiner’s rejection of claims 1-6, 11-16,
21-26, and 31-36 as unpatentable under 35 U.S.C. § 102(e)
as being anticipated by Moiin et al. (US 6,192,483 B1,
February 20, 2001) (“Moiin”).1
Appellant now seeks reconsideration of our Decision affirming the
Examiner’s rejection of claims 1-40 under 35 U.S.C. § 112(b).
Specifically, Appellant presents the argument that the Examiner erred
because a person of ordinary skill in the art could interpret the metes and
bounds of the respective terms as to understand how to avoid infringement.
Request at 2.

1 In our Decision, we noted that the issue of the Examiner’s rejection of
claims 1-6, 11-16, 21-26, and 31-36 under 35 U.S.C. § 103(a) as being
obvious was not before us in the instant appeal and we therefore do not
reach any conclusion in that respect. Decision at 7. Such remains the case
in Appellant’s instant Request.
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Consideration of claim 1
Claim 1 is representative of the rejected claims. Decision at 3.
Appellant argues that the claim term “a certain node of said plurality of
nodes” is not indefinite because claim 1 clearly recites that “a certain node”
is “of said plurality of nodes,” which have access “to a plurality of
persistent data items on a persistent storage.” Request at 3. According to
Appellant, a “certain node” is one of the nodes in the plurality of nodes,
which have access to persistent data items on a persistent storage. Id.
Appellant argues that the meaning of “a particular data item” is not
indefinite because claim 1 clearly recites that “a particular data item” is “of
said plurality of persistent data items.” Request at 3. Appellant contends
that “particular data item” is one of the items of the plurality of persistent
data items. Id. Further, maintains Appellant, the meaning of “a particular
node” is not indefinite because claim 1 clearly recites that “a particular
node” is “assigned as an owner to the particular data item.” Request at 3-4.
Appellant argues that a “particular node” is assigned as an owner of the
particular data item of the plurality of persistent data items and that,
therefore, a person skilled in the art would discern the terms' meanings from
the language of claim 1. Request at 4.
Appellant argues further that the meaning of the claim term “an
operation” recited in lines 7-8 is distinguishable from the meaning of the
claim term “an operation” recited in lines 15-16 because a person of
ordinary skill in the art could distinguish the respective terms based on the
language of claim 1. Request at 4. Appellant argues that, in lines 7-12,
claim 1 recites that “a certain node of said plurality of nodes [is] sending a
request to perform an operation, and the request is sent before reassigning
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Application 11/365,297

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ownership […].” Id. In contrast, contends Appellant, in lines 15-16, claim
1 recites that “after the reassignment, when any node of said plurality of
nodes wants an operation [...].” Hence, a person of ordinary skill in the art
will understand that “an operation” recited in lines 7-8 is requested prior to
reassignment, while “an operation” recited in lines 15 -16 is requested after
the reassignment. Id.
Finally, Appellant argues that the Examiner’s § 112(b) rejection of
claim 1 on the basis that, due to improper punctuation, renders the claim
language hard to understand. Request at 4. Appellant argues that if the
language used by applicant satisfies the statutory requirements of 35 U.S.C.
§ 112(b), but the examiner merely wants the applicant to improve the clarity
or precision of the language used, then the claim must not be rejected under
35 U.S.C. § 112(b). Request at 4-5 (citing Morton Int’l, Inc. v. Cardinal
Chem. Co., 5 F.3d 1464, 1470 (Fed. Cir. 1993)).
Appellant’s sole argument on appeal was based upon: (1)
Appellant’s unsupported belief that the language of the claims is such that a
person of ordinary skill in the art would be able to interpret the metes and
bounds of the claims based upon their well-recognized meanings; and (2)
Appellant’s belief that the punctuation and indentation in the claims is
proper and that the language of the claims is such that a person of ordinary
skill in the art would be able to interpret the metes and bounds of the
claims. Decision at 4 (citing App. Br. 10-11). As we pointed out in our
Decision, arguments of counsel cannot take the place of factually supported
objective evidence. Decision at 4-5 (citing In re Huang, 100 F.3d 135, 139-
140 (Fed. Cir. 1996).
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Appellant’s Request, therefore, constitutes new argument, which is
expressly prohibited by 37 C.F.R. § 41.52 in requests for rehearing. 37
C.F.R. § 41.52 (a)(1) (“Arguments not raised, and Evidence not previously
relied upon, pursuant to §§ 41.37, 41.41, or 41.47 are not permitted in the
request for rehearing”). Two exceptions only to this rule are permitted: (1)
Appellant may present a new argument based upon a recent relevant
decision of either the Board or a Federal Court; and (2) new arguments that
the Board’s decision contains an undesignated new ground of rejection are
permitted. 37 C.F.R. 41.52(a)(2) and (4). Appellant makes no argument
that either exception applies in this case. Nor does Appellant argue that the
Board misapprehended or overlooked any of the arguments or evidence
adduced by Appellant on appeal, which constitutes the requisite basis for
rehearing. 37 C.F.R. 41.52(a)(1). We consequently reaffirm the
Examiner’s rejection of claims 1-40 under 35 U.S.C. § 112(b).

CONCLUSION
We have granted Appellant’s request for rehearing to the extent that
we have considered the arguments raised by Appellant in the Request and
reconsidered our Decision, but decline to grant the relief requested. The
request for rehearing is denied.
This Decision on Appellant’s “Request for Rehearing” is deemed to
incorporate our earlier Decision by reference. See 37 C.F.R. § 41.52(a)(1).

REHEARING DENIED

Appeal 2010-009686
Application 11/365,297

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