Ex Parte Theobald

Patent Trial and Appeal Board

Jan 28, 2016

12184924 (P.T.A.B. Jan. 28, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/184,924 08/01/2008 Dietmar C. Theobald
50400 7590 02/01/2016
SCHWEGMAN LUNDBERG & WOESSNER/SAP
P.O. BOX 2938
MINNEAPOLIS, MN 55402
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.
2058.517US 1 8346
EXAMINER
GARMON, BRIAN
ART UNIT PAPER NUMBER
2176
NOTIFICATION DATE DELIVERY MODE
02/01/2016 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):
uspto@slwip.com
SLW@blackhillsip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DIETMAR C. THEOBALD
Appeal2014-002336
Application 12/184,924 1
Technology Center 2100
Before THU A. DANG, LARRY J. HUME, and CARLL. SILVERMAN,
Administrative Patent Judges.
HUME, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a) of the Final
Rejection of claims 1-15, 17, and 19-22. Appellant has previously canceled
claims 16 and 18. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 According to Appellant, the real party in interest is SAP AG. App. Br. 2.
Appeal2014-002336
Application 12/184,924
STATEMENT OF THE CASE2
The Invention
Appellant's claimed invention "generally relate[s] to the field of
computer systems and, more particularly, to a method and apparatus for
annotation data handlers for data stream processing." Spec. i-f 3.
Exemplary Claim
Claim 1, reproduced below, is representative of the subject matter on
appeal (emphasis and formatting added to contested limitations):
1. A method of processing annotations in computer
program files, the method comprising:
receiving a data stream input at a scanner component, the
data stream input comprising program elements of one or more
computer program class files, at least some of the program
elements being annotated with annotation values in the one or
more computer program class files, the data stream input
comprising the annotation values;
scanning the data stream input for the annotated program
elements;
generating a data stream comprising a plurality of the
annotated program elements and the annotation values
associated with the plurality of the annotated program elements
from the data stream input;
providing the plurality of the annotated program
elements and the annotation values as input to a handler
component,
2 Our decision relies upon Appellant's Appeal Brief ("App. Br.," filed
July 15, 2013); Reply Brief ("Reply Br.," filed Dec. 9, 2013); Examiner's
Answer ("Ans.," mailed Oct. 28, 2013); Final Office Action ("Final Act.,"
mailed Feb. 14, 2013); and the original Specification ("Spec.," filed
Aug. 1, 2008).
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Application 12/184,924
the handler component performing at least one of a
plurality of handling functions comprising:
filtering the plurality of the annotated program
elements and the annotation values, and
echoing the plurality of the annotated program
elements and the annotation values; and
generating an output from the handler
component based on the at least one of the plurality of
handling functions.
Prior Art
The Examiner relies upon the following prior art as evidence in
rejecting the claims on appeal:
Bays et al. ("Bays") US 6,519,603 Bl Feb. 11, 2003
"Getting Started with the Annotation Processing Tool (apt),"
http://java.sun.com/j2se/l.5.0/docs/guide/apt/GettingStarted.html,
2004, accessed by Examiner Apr. 6, 2007 (hereinafter "Apt").
Rejections on Appeal
RI. Claims 1-10, 12-15, 17, and 19-22 stand rejected under 35
U.S.C. § 102(b) as being anticipated by Apt. Ans. 2-11.
R2. Claim 11 stands rejected under 35 U.S.C. § 103(a) as being
obvious over the combination of Apt and Bays. Ans. 12-13.
CLAIM GROUPING
Based on Appellant's arguments (App. Br. 7-10), we decide the
appeal of anticipation Rejection RI of claims 1-10, 12-15, 17, and 19-22 on
the basis of representative claim 1.
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Application 12/184,924
Rejection R2 of claim 11, not argued separately, stands or falls with
independent claim 8 from which it depends. See 37 C.F.R. § 41.37(c)(l)(iv).
ISSUE
Appellant argues (App. Br. 7-10; Reply Br. 2-5) the Examiner's
rejection of claim 1under35 U.S.C. § 102(b) as being anticipated by Apt is
in error. These contentions present us with the following issue:
Did the Examiner err in finding the cited prior art discloses a method
that includes, inter alia, the step of providing a plurality of annotated
program elements and annotation values as input to a handler component,
wherein "the handler component perform[ s] at least one of a plurality of
handling functions comprising ... filtering the plurality of the annotated
program elements and the annotation values, and echoing the plurality of the
annotated program elements and the annotation values," as recited in
claim 1?
ANALYSIS
In reaching this decision, we consider all evidence presented and all
arguments actually made by Appellant. We do not consider arguments
which Appellant could have made but chose not to make in the Briefs so that
we deem any such arguments as waived. 37 C.F.R. § 41.37(c)(l)(iv).
We disagree with Appellant's arguments with respect to claim 1, and
we incorporate herein and adopt as our own: (1) the findings and reasons set
forth by the Examiner in the action from which this appeal is taken, and
(2) the reasons and rebuttals set forth in the Examiner's Answer in response
to Appellant's arguments. We incorporate such findings, reasons, and
rebuttals herein by reference unless otherwise noted. However, we highlight
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Application 12/184,924
and address specific findings and arguments regarding claim 1 for emphasis
as follows.
Appellant contends, "claim 1 recites that the claimed filtering step is
performed by the claimed handler component," such that
the operation of passing the factory the set of annotations
discussed in APT is not equivalent to the factory (the alleged
handler component) performing the filtering since the filtering
is performed prior to the factory receiving the annotations . . .
[and] APT does not disclose or suggest that the factory (the
alleged handler component) performs filtering of any type.
App. Br. 8. Appellant additionally contends the cited prior art does not
disclose the claimed echoing step because the print function of Apt is not
equivalent to the claimed "echoing." App. Br. 8-9.
"In the patentability context, claims are to be given their broadest
reasonable interpretations ... limitations are not to be read into the claims
from the specification." In re Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir.
1993) (citations omitted). Any special meaning assigned to a term "must be
sufficiently clear in the specification that any departure from common usage
would be so understood by a person of experience in the field of the
invention." Multiform Desiccants, Inc. v. Medzam, Ltd., 133 F.3d 1473,
1477 (Fed. Cir. 1998); see also Helmsdeifer v. Bobrick Washroom Equip.,
Inc., 527 F.3d 1379, 1381 (Fed. Cir. 2008) ("A patentee may act as its own
lexicographer and assign to a term a unique definition that is different from
its ordinary and customary meaning; however, a patentee must clearly
express that intent in the written description."). Absent an express intent to
impart a novel meaning to a claim term, the words take on the ordinary and
customary meanings attributed to them by those of ordinary skill in the art.
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Brookhill-Wilk 1, LLC v. Intuitive Surgical, Inc., 334 F.3d 1294, 1298 (Fed.
Cir. 2003) (citation omitted).
We note Appellant has not cited to a definition of "filtering the
plurality of the annotated program elements and the annotation values" or
"echoing the plurality of the annotated program elements and the annotation
values" in the Specification that would preclude the Examiner's broader
reading. 3 See Ans. 4, 5, and 15. For example, with respect to the claimed
"echoing," we find Appellant's Specification discloses:
In an embodiment of the invention, an echo utility handler is a
module that echoes, or prints, the data elements of a data stream
input so that the annotation data may be read or processed. In
one embodiment, an annotation echo module produces a text
stream output from a data stream input including annotated
program elements and annotation values, thereby providing a
user with a readable output of annotation information.
Spec. i-f 38. Thus, we see no error in the Examiner's interpretation that the
claimed "echoing" encompasses the cited print function disclosure of Apt.
Moreover, in response to Appellant's arguments, the Examiner finds:
APT discloses a software tool made up of code. APT also
discloses inputting Java class files, or program files, into the
software tool and the software tool processing those inputted
Java class files to generate output files based the annotations.
3 Any special meaning assigned to a term "must be sufficiently clear in the
specification that any departure from common usage would be so understood
by a person of experience in the field of the invention." Multiform
Desiccants Inc. v. Medzam Ltd., 133 F.3d 1473, 1477 (Fed. Cir. 1998); see
also Helmsderfer v. Bobrick Washroom Equip., Inc., 527 F.3d 1379, 1381
(Fed. Cir. 2008) ("A patentee may act as its own lexicographer and assign to
a term a unique definition that is different from its ordinary and customary
meaning; however, a patentee must clearly express that intent in the written
description.").
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Application 12/184,924
Thus, those parts of the code in the software tool that filter the
annotations disclose the claimed "handler component."
Ans. 15. Further, "[a]s previously indicated, the APT [reference] discloses a
software tool made up of code. Thus, those parts of the code in the software
tool that print or 'echo' the annotations disclose the claimed 'handler
component.' Accordingly, APT discloses all limitations of Claim 1."
Ans. 16.4
Based upon the findings above, on this record, we are not persuaded
of error in the Examiner's reliance on the teachings of the cited prior art to
disclose the disputed limitations of claim 1, nor do we find error in the
Examiner's resulting finding of anticipation. Therefore, we sustain the
Examiner's anticipation rejection of independent claim 1, and grouped
claims 2-10, 12-15, 17, and 19-22 which fall therewith. See Claim
Grouping, supra.
§ 103(a) Rejection R2 of Claim 11
In view of the lack of any substantive or separate arguments directed
to the obviousness Rejection R2 of claim 11 under § 103 (see App.
Br. 9-10), we sustain the Examiner's rejection of this claim. Arguments not
made are considered waived. Accordingly, we sustain the rejection of
claim 11.
4 As a matter of claim construction, we conclude the recitation in claim 1 of
"the handler component performing at least one of a plurality of handling
functions" only requires the Examiner to find one of the recited functions in
the prior art, for example, the claimed "echoing" step.
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Application 12/184,924
REPLY BRIEF
To the extent Appellant may advance new arguments in the Reply
Brief (Reply Br. 2-5) not in response to a shift in the Examiner's position in
the Answer, we note arguments raised in a Reply Briefthat were not raised
in the Appeal Brief or are not responsive to arguments raised in the
Examiner's Answer will not be considered except for good cause (see 37
C.F.R. § 41.41(b)(2)), which Appellant has not shown.
CONCLUSIONS
( 1) The Examiner did not err with respect to anticipation Rejection
RI of claims 1-10, 12-15, 17, and 19-22 under35 U.S.C. § 102(b) over the
cited prior art of record, and we sustain the rejection.
(2) The Examiner did not err with respect to obviousness Rejection
R2 of claim 11 under 35 U.S.C. § 103(a) over the cited prior art combination
of record, and we sustain the rejection.
DECISION
We affirm the Examiner's decision rejecting claims 1-15, 17,
and 19-22.
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).
AFFIRMED
JRG
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