Ex Parte Taylor et al

Patent Trial and Appeal Board

Aug 19, 2016

13034589 (P.T.A.B. Aug. 19, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/034,589 02/24/2011
29973 7590 08/23/2016
CRGOLAW
ATTN: STEVEN M. GREENBERG, ESQ.
7900 Glades Road
SUITE 520
BOCA RATON, FL 33434
FIRST NAMED INVENTOR
Jacob Taylor
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.
130 l -005DIV 1090
EXAMINER
BELANI, KISHIN G
ART UNIT PAPER NUMBER
2443
NOTIFICATION DATE DELIVERY MODE
08/23/2016 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):
docketing@crgolaw.com
PTOL-90A (Rev. 04/07)
NITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JACOB TAYLOR, CLINTON ORAM, and JOHN ROBERTS
Appeal2014-008748 1
Application 13/034,589
Technology Center 2400
Before JEAN R. HOMERE, JOHN A. EV ANS, and
DANIEL J. GALLIGAN, Administrative Patent Judges.
Per Curiam.
DECISION ON REQUEST FOR REHEARING
STATEMENT OF THE CASE
In papers filed Aug. 1, 2016, Appellants Request a Rehearing under 3 7
C.F.R. § 41.52 from the Decision on Appeal (Decision) of the Patent Trial and
Appeal Board (Board), mailed June 1, 2016. In the Decision, we affirmed the
Examiner's prior art rejections of claims 3-18 based on Sierer alone and in
combination with other references. Dec. 8.
ANALYSIS
Appellants allege that the Board erred by overlooking an argument
regarding the patentability of claim 3. Req. Reh'g. 4. In particular,
1 Appellants identify the real party in interest as SugarCRM Inc. App. Br. 2.
Appeal2014-008748
Application 13/034,589
Appellants contend the Board did not indicate a portion of Sierer that
describes multiple different computers each of which hosts a deployment of
the same application, as allegedly recited in the claim, and previously argued
in the Appeal Brief. Req. Reh'g. 4 (citing App. Br. 6).
Upon further consideration of Appellants' arguments in the Briefs, we
modify our Decision as follows:
Appellants argue the Examiner erred in finding Sierer' s disclosure
describes multiple different computers, each hosting a deployment of the
same application as recited in claim 3. App. Br. 6. We note Appellants'
argument is not commensurate with the scope of the claim 3, which does not
require the application deployed on multiple different computers to be the
same application. Rather, the disputed limitation merely requires the
multiple computers each having a deployment of a software application. As
pointed out in the Decision, we agree with the Examiner that this disputed
limitation is described in Sierer as each computer system accessing the
server to execute software. Dec. 5 (citing Sierer, col. 11, 11. 56-60 (cited in
Ans. 2-3)). Accordingly, we maintain our initial position regarding the
rejection of claim 3, as well as claim 12, which Appellants argue with claim
3 on rehearing.
CONCLUSION
In view of the foregoing discussion, we grant Appellants' Request for
Rehearing. We have modified the Decision by expanding upon our original
analysis. Consequently, this Decision on Request for Rehearing has
substantially modified the original Decision as to become a new Decision.
No time period for taking any subsequent action in connection with
2
Appeal2014-008748
Application 13/034,589
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
REHEARING GRANTED
3