Ex Parte Sampath et al

Patent Trial and Appeal Board

Aug 11, 2016

11466043 (P.T.A.B. Aug. 11, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
111466,043 08/21/2006
120423 7590
Google Inc./Finnegan
901 New York Ave., NW
Washington, DC 20001
08/15/2016
FIRST NAMED INVENTOR
Satish Kumar Sampath
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.
12437.0081-00000 1337
EXAMINER
BADAWI, ANGIE M
ART UNIT PAPER NUMBER
2172
NOTIFICATION DATE DELIVERY MODE
08/15/2016 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):
michelle.murray@finnegan.com
regional-desk@finnegan.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte SA TISH KUMAR SAMPATH, STEVE LAWRENCE,
NIKHIL BHATLA, and TOMAS GUNNARSSON
Appeal2015-002779
Application 11/466,043
Technology Center 2100
Before JASON V. MORGAN, MELISSA A. HAAPALA, and
NABEEL U. KHAN, Administrative Patent Judges.
KHAN, Administrative Patent Judge.
DECISION ON APPEAL
Appellants 1 appeal under 35 U.S.C. § 134(a) from the Final Rejection
of claims 1-22, 24, and 25.2 We have jurisdiction under 35 U.S.C. § 6(b).
We affirm-in-part.
1 According to Appellants, the real party in interest is Google Inc. App.
Br. 3.
2 Claim 23 is cancelled. Claim 26 is pending but not rejected.
Appeal2015-002779
Application 11/466,043
THE INVENTION
Appellants' invention "relates generally to computer software, and in
particular to a computer software architecture employing plug-in modules
for displaying informational content in a user interface of one or more
applications, such as a sidebar application." Spec. iJ 2.
1. A computer program product providing a user interface for
user customizable content, the computer program product
comprising a computer-readable medium containing computer
program code comprising:
a plug-in module configured to provide informational content
received from a content source for presentation on a plurality of
user interfaces and adapted to provide a list of information items
representing the content, wherein the plug-in module is
device-independent and configured to register with a user
interface for automatic loading by the user interface, the plug-in
module further configured to define one or more user interactions
allowed with the information items, each user interface
configured to present the list of information items and allow the
defined user interactions with the information items, different
user interfaces configured to present the list of information items
in different ways;
a first software development kit configured to receive the
information items and the one or more user interactions from the
plug-in module, present the information items on a first user
interface and to manage the one or more user interactions with
the information items in the first user interface, wherein the
presentation of the information items and user interactions are
managed by a first set of helper objects comprising instructions
within the first software development kit; and
a second software development kit configured to receive the
information items and the one or more user interactions from the
plug-in module, present the information items on a second user
interface and to manage the one or more user interactions with
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Application 11/466,043
the information items in the second user interface, wherein the
presentation of the information items and user interactions are
managed by a second set of helper objects comprising
instructions within the second software development kit.
REFERENCES and REJECTIONS
The Examiner rejects claims 1, 8, 12, 18, and 22 under 35 U.S.C.
§ 112, second paragraph, as being indefinite. Final Act. 3-4.
The Examiner rejects claim 2 under 35 U.S.C. § 112, fourth
paragraph, as failing to further limit the claim from which it depends. Final
Act. 5.
The Examiner rejects claims 1-4, 6, 8, 12, and 13 under 35 U.S.C.
§ 103(a) as unpatentable over Roztocil et al. (US 2001/0043346 Al,
publication Nov. 22, 2001) and Dideriksen et al. (US 2004/00267940 Al,
publication Dec. 30, 2004). Final Act. 6-14.
The Examiner rejects claims 5, 7, 9-11, and 14-22, 24, and 25 under
35 U.S.C. § 103(a) as unpatentable over Roztocil, Dideriksen, and Chaudhri
et al. (US 2006/0015818 Al, published Jan. 19, 2006). Final Act. 15-29.
REJECTION OF CLAIMS 1, 8, 12, 18, AND 22 UNDER
35 U.S.C. § 112, SECOND PARAGRAPH
Independent claims 1, 8, 12, 18, and 22 are rejected for indefiniteness
and, particularly, because the Examiner finds some claim features lack an
antecedent basis.
We agree with Appellants' arguments against the rejection of
claims 1, 12, 18, and 22 (not claim 8; see below). App. Br. 22-23. For the
reasons stated by Appellants, the at-issue claim features are plainly
introduced by earlier claim recitations. Id. at 23. Moreover, even assuming
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Application 11/466,043
( arguendo) a lack of explicit antecedent basis, the Examiner fails to establish
a resulting indefiniteness of claim scope. A lack of antecedent basis does
not render a claim indefinite per se. See Energizer Holdings Inc. v. Int 'l
Trade Comm 'n, 435 F.3d 1366, 1370-71 (Fed. Cir. 2006). If a skilled
artisan could nonetheless ascertain the claim language's meaning, as here,
the claim is not indefinite. Id.
Accordingly, we do not sustain the Examiner's rejection of claims 1,
12, 18, and 22 under 35 U.S.C. § 112, second paragraph.
We do not agree with Appellants' arguments, however, against the
rejection of claim 8. As found by the Examiner, claim 8 introduces a
singular "plug-in module" and then recites pluralities of "each plug-in
module" and "from the plug-in modules." It is unclear whether the claimed
invention may comprise one or more plug-in modules or must rather
comprise a plurality of plug-in modules.
Accordingly, we sustain the Examiner's rejection of claim 8 under
35 U.S.C. § 112, second paragraph.
REJECTION OF CLAIM 2 UNDER
35 U.S.C. § 112, FOURTH PARAGRAPH
The Examiner finds: "Claim 2 recites the limitation 'wherein the
plug-in module defines a set of allowed user interaction for one or more of
the information items' which is recited in and does not further limit
claim l." Ans. 6; see also id. at 49; Final Act. 5.
Appellants argue: "The Examiner asserts that, 'Claim 2 ... does not
further limit claim 1.' Final Office Action, p. 5. However, the Examiner has
failed to present any rationale as to how claim 2 fails to further limit
claim 1. See id." App. Br. 24 (orig. emph.).
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Application 11/466,043
We are not persuaded by Appellants' argument. The Examiner's
rationale is self-evident. Claim 1 recites: "the plug-in module further
configured to define one or more user interactions allowed with the
information items." Claim 2 depends from claim 1 and merely recites the
above claim 1 language near verbatim.
Accordingly, we sustain the Examiner's rejection of claim 2 under
35 U.S.C. § 112, fourth paragraph.
REJECTIONS OF CLAIMS 1-22, 24, AND 25
UNDER 35 U.S.C. § 103
Appellants argue3:
Roztocil does not disclose or suggest "a plug-in module," as
recited in claim 1. Rather, Roztocil discloses that the desktop,
workflow, and viewer are separate components that may be
designed to receive plug-ins. See Roztocil, ,-i,-i [0051 ], [0052];
Fig. 3. Thus, these components are not plug-in modules
themselves, much less "a plug-in module," as recited in claim 1.
Further, the plug-ins that are described by Roztocil "add one or
more of the page level assembly, editing and annotation
functions," rather than "provide informational content received
from a content source for presentation on a plurality of user
interfaces," as required by the "plug-in module" of claim 1.
Roztocil, ,-i [0052].
Reply Br. 3-4 (orig. emph.).
The Examiner finds Roztocil's plug-ins and accommodating software
of the desktop 302, workflow 304, and viewer 306 provide the recited
functions of claim l's plug-in module. Ans. 33-34. Additionally, the
Examiner finds the recitation of "module" within claim l's "plug-in
3 Appellants present additional arguments in their briefing, however, because
the identified argument is dispositive of the appeal, we do not reach the
merits of these additional arguments.
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Application 11/466,043
module" expands the feature's scope beyond the ordinary understanding of a
plug-in; e.g., encompasses the entire plug-in architecture of Roztocil's
Figure 3. Id. We agree with Appellants that the Examiner has not
established the cited sections teach or suggest the "plug-in module." The
Examiner's interpretation of "plug-in module" is not consistent with
Appellants' Specification, which evidences an intent for "plug-in module" to
carry the ordinary meaning of "plug-in" by: (i) introducing the terminology
with quotation emphasis on "plug-in" (Spec. ,-i 4 ("'plug-in' module")); (ii)
interchangeably referencing a "plug-in" and "plug-in module" (id. ,-i,-i 5, 6,
18, 39); (iii) describing a "plug-in module" as being, like Roztocil's
"plug-ins," installed on a client computer to "enhance" (not replace) a
system's "built-in" capabilities (id. ,-i,-i 15-16; see also Roztocil ,-i 52, 55);
and (iv) differentiating a "plug-in module" from a "plug-in architecture"
(Spec. ,-i,-i 5-6, 15). Though the Examiner need not establish an ipsissimis
verbis correlation between the claimed invention and Roztocil's cited
teachings, in light of the specification, one of ordinary skill would not have
understood a plug-in module to encompass Roztocil's entire plug-in
architecture.
For these reasons, we do not sustain the Examiner's obviousness
rejections of independent claims 1, 8, 12, 18, and 22 under 35 U.S.C.
§ 103(a). We also do not sustain the Examiner's obviousness rejection of
claims 2-7, 9-11, 13-17, 19-21, 24, and 25 which depend from one of
independent claims 1, 8, 12, 18, and22.
DECISION
The Examiner's rejection of claim 8 under 35 U.S.C. § 112, second
paragraph, is affirmed.
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Application 11/466,043
The Examiner's rejection of claims 1, 12, 18, and 22 under 35 U.S.C.
§ 112, second paragraph, is reversed.
The Examiner's rejection of claim 2 under 35 U.S.C. § 112, fourth
paragraph, is affirmed.
The Examiner's rejection of claims 1-22, 24, and 25 under 35 U.S.C.
§ 103(a) is reversed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § l .136(a)(l )(iv).
AFFIRMED-IN-PART
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