11388411 (P.T.A.B. Mar. 20, 2013)

Ex Parte Walter

Patent Trial and Appeal BoardMar 20, 2013

11388411 (P.T.A.B. Mar. 20, 2013)

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. 11/388,411 03/24/2006 INV001Wolfgang E. Walter 6741P088 7437 45062 7590 03/21/2013 SAP/BSTZ BLAKELY SOKOLOFF TAYLOR & ZAFMAN 1279 Oakmead Parkway Sunnyvale, CA 94085-4040 EXAMINER KIM, PAUL ART UNIT PAPER NUMBER 2169 MAIL DATE DELIVERY MODE 03/21/2013 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 WOLFGANG E. WALTER Appeal 2010-001033 Application 11/388,411 Technology Center 2100 ____________ Before CARL W.WHITEHEAD, JR, ERIC S. FRAHM, and ANDREW J. DILLON, Administrative Patent Judges. DILLON, Administrative Patent Judge. DECISION ON APPEAL Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s rejection of claims 1-8. Claims 9-16 have been withdrawn. We have jurisdiction under 35 U.S.C. § 6(b). We reverse. STATEMENT OF THE CASE Appellant’s invention is directed to a method for storing one or more search parameters from a user as a preconfigured search. See Spec. 13, Abstract of the Disclosure. Appeal 2010-001033 Application 11/388,411 2 Claim 1 is illustrative, with key disputed limitations emphasized: 1. A method comprising: accepting at least one entry from a user for at least one of a plurality of search parameters; receiving a selection of one of a plurality of storage classes; and storing the at least one entry as a preconfigured search according to the selected storage class, wherein the selected storage class limits an availability of the preconfigured search to the user. The Examiner relies on the following as evidence of unpatentability: Coiera US 2005/0086204 A1 Apr. 21, 2005 Bradburn US 6,745,188 B2 Jun. 1, 2004 THE REJECTIONS 1. The Examiner rejected claims 1-5 under 35 U.S.C. §102(e) as anticipated by Coiera. Ans. 3-4.1 2. The Examiner rejected claims 6-8 under 35 U.S.C. §103(a) as unpatentable over Coiera and Bradburn. Ans. 4-6. ISSUE Based upon our review of the record, the arguments proffered by Appellant and the findings of the Examiner, we find the following issue to be dispositive of the claims on appeal: Under § 102, has the Examiner erred in rejecting claims 1-5 by finding that Coiera discloses accepting a plurality of search parameters and a 1 Throughout this opinion, we refer to the Appeal Brief filed April 23, 2009; the Examiner’s Answer mailed August 8, 2009; and, the Reply Brief filed September 25, 2009. Appeal 2010-001033 Application 11/388,411 3 selection of one of a plurality of storage classes and then storing the preconfigured search wherein the selected storage class limits an availability of the preconfigured search to the user? ANALYSIS The Examiner finds that Coiera discloses the selection of various search parameters, including a search profile that delimits the search according to a number of parameters, including selection of one of a plurality of storage classes. Ans. 6-7. Thereafter the Examiner concludes that a failure of the user to select a particular storage class will limit the availability of that preconfigured search to the user. Id. at 7. Appellant argues that nothing in Coiera discloses that the selection of a particular storage class limits the availability of the preconfigured search to the user. App. Br. 6. We find Appellant’s arguments persuasive. We find that the Examiner’s arguments would have been persuasive if Appellant’s claim 1 had read “wherein the storage class limits an availability of the preconfigured search.” However, Appellant’s claims require the “selected storage class” to limit availability of the preconfigured search to the user, rendering the Examiner’s hypothetical limitation based upon non-selection of a storage class irrelevant to our conclusion. Appeal 2010-001033 Application 11/388,411 4 CONCLUSION The Examiner erred in rejecting claims 1-5 under § 1022. To the extent the Examiner’s rejection of claims 6-8 is based upon the erroneous rejection of claims 1-5 as anticipated by Coiera, we find that the Examiner erred in that rejection for the reasons set forth above in our analysis of claims 1-5. ORDER The Examiner’s decision rejecting claims 1-8 is reversed. REVERSED tkl 2 Our finding is directed to a determination of whether or not Coiera anticipates the invention set forth in claims 1-5. We make no finding regarding whether or not it would have been obvious to limit access to a preconfigured search to a particular user, in the manner in which access to private files, email accounts and the like may be restricted. We leave such a conclusion to the Examiner’s consideration during subsequent prosecution.