Ex Parte Wickman

Patent Trial and Appeal Board

May 26, 2017

13470152 (P.T.A.B. May. 26, 2017)

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.
13/470,152 05/11/2012 Glenn W. WICKMAN 3683.001US1 7248
21186 7590 05/31/2017
SCHWEGMAN LUNDBERG & WOESSNER, P.A.
P.O. BOX 2938
MINNEAPOLIS, MN 55402
EXAMINER
MALINOWSKI, WALTER J
ART UNIT PAPER NUMBER
2439
NOTIFICATION DATE DELIVERY MODE
05/31/2017 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 GLENN W. WICKMAN
Appeal 2017-000752
Application 13/470,152
Technology Center 2400
Before ST. JOHN COURTENAY III, CATHERINE SHIANG, and
JAMES W. DEJMEK, Administrative Patent Judges.
COURTENAY, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) from the Examiner’s Non-
Final rejection of claims 1—4, 16, and 19, which are all the claims pending in
this application.1 Claims 5—15, 17, 18, and 20 are withdrawn. (See
Amendment received June 1, 2015). We have jurisdiction under 35 U.S.C.
§ 6(b). We affirm.
1 We refer herein to the Non-Final Office Action, mailed December 22,
2015, in which the Examiner reopened prosecution after a first Appeal Brief
was filed on August 13, 2015. We refer herein to the second Appeal Brief,
filed on January 12, 2016. No Reply Brief was filed in response to the
Examiner’s Answer that was mailed on June 10, 2016, and referred to
herein.
Appeal 2017-000752
Application 13/470,152
STATEMENT OF THE CASE
Invention
The disclosed and claimed invention on appeal generally relates to
enterprise solutions. “More specifically, the present invention relates to
authenticating visitors to a thin client server website.” (Spec. 12).
Claim 1 is representative, and is reproduced below:
1. A method for starting a session between a user and a smart
thin client server, wherein the smart thin client server permits
users to create, manage, and deploy enterprise applications, the
method comprising:
receiving a request, at the thin client server, [L] the thin
client server being one of multiple smart, thin client servers and
having the same functionality as each of the other multiple
smart, thin client servers, each of the multiple smart thin client
servers connected to a single data store, the request to initiate a
session from a user, wherein the request does not include log-in
credentials;
selecting, using a processor of the thin client server, an
anonymous account from a pool of anonymous accounts;
obtaining credentials from the anonymous account; and
establishing a session for the user using the credentials from the
anonymous account;
presenting one or more applications to the user over the
session, the one or more applications being a default set of one
or more applications for the thin client server, the default set of
one or more applications for the thin client server being different
than a default set of one or more applications for another of the
multiple smart thin client servers accessible to the user.
(Bracketed matter and emphasis added with respect to contested limitation
L)-
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Application 13/470,152
Rejections
A. Claims 16 and 19 are rejected under pre-AIA 35 U.S.C. § 112, first
paragraph, for failing to comply with the written description
requirement.
B. Claims 1 and 4 are rejected under pre-AIA 35 U.S.C. § 103(a), as
being obvious over the combined teachings and suggestions of
Koshiba (US 2007/0294414 Al, pub. Dec. 20, 2007), Camenisch (US
2011/0035241 Al, pub. Feb. 10, 2011), and Logston (US
2004/0236860 Al, pub. Nov. 25, 2004).
C. Claim 2 is rejected under pre-AIA 35 U.S.C. § 103(a), as being
obvious over the combined teachings and suggestions of Koshiba,
Camenisch, Logston, and Sullivan (US 2010/0281178 Al, pub.
Nov. 4, 2010).
D. Claim 3 is rejected under pre-AIA 35 U.S.C. § 103(a), as being
obvious over the combined teachings and suggestions of Koshiba,
Camenisch, Logston, and Seamons (US 2002/0016777 Al, pub.
Feb. 7, 2002).
E. Claims 16 and 19 are is rejected under pre-AIA 35 U.S.C. § 103(a), as
being obvious over the combined teachings and suggestions of
Koshiba, Camenisch, Logston, and Mishra (US 2009/0019535 Al,
pub. Jan. 15, 2009).
Grouping of Claims
We address rejection A under § 112 of claims 16 and 19 at the outset,
infra. Based upon Appellant’s arguments, we decide the appeal of § 103
rejection B of claims 1 and 4 on the basis of representative independent
claim 1. See 37 C.F.R. § 41.37(c)(l)(iv). We address § 103 rejections C—E
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Application 13/470,152
of claims 2, 3, 16, and 19, infra. To the extent Appellant has not advanced
separate, substantive arguments for particular claims, or other issues, such
arguments are waived. See 37 C.F.R. § 41.37(c)(l)(iv).
ANALYSIS
Rejection A under pre-AIA § 112, first paragraph (written description)
Our reviewing court guides the written description “must clearly
allow persons of ordinary skill in the art to recognize that [the inventor]
invented what is claimed.” Ariad Pharm., Inc. v. Eli Lilly & Co., 598 F.3d
1336, 1351 (Fed. Cir. 2010) (en banc) (citation and quotations omitted). The
test is whether the disclosure “conveys to those skilled in the art that the
inventor had possession of the claimed subject matter as of the filing date.”
Id. “[AJctual ‘possession’ or reduction to practice outside of the
specification is not enough. Rather,... it is the specification itself that must
demonstrate possession.” Id. at 1352; see also PowerOasis, Inc. v. T-Mobile
USA, Inc., 522 F.3d 1299, 1306-07 (Fed. Cir. 2008) (explaining that § 112,
11 “requires that the written description actually or inherently disclose the
claim element”). “[I]t is not a question of whether one skilled in the art
might be able to construct the patentee’s device from the teachings of the
disclosure . . . Rather, it is a question whether the application necessarily
discloses that particular device ... A description which renders obvious the
invention for which an earlier filing date is sought is not sufficient.”
Lockwood v. Am. Airlines, Inc., 107 F.3d 1565, 1572 (Fed. Cir.
1997) (quoting Jepson v. Coleman, 314 F.2d 533, 536 (CCPA 1963))
(emphasis added).
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Application 13/470,152
Rejection A under pre-AIA § 112, first paragraph of Claims 16 and 19
The Examiner finds the following limitations recited in claims 16 and
19 are not supported by Appellant’s original Specification:
thin client servers by virtue of having identical applications
installed thereon . . .
such that a particular user is assigned to a particular smart thin
client server and isolated from other smart thin client servers
by having requests directed to the particular smart thin client
server and not to any of the other of the multiple smart thin
client servers .... (Claims 16 and 19)
(Non-Final Action 6—7) (emphasis added).
At the outset, we note the aforementioned claim limitations were
added by amendment during the prosecution. Cf original claims, Spec. 17—
18. Appellant urges, inter alia: “Claims 16 and 19 are allowable under 35
U.S.C [§] 112 because the original disclosure implicitly describes the
language.” (App. Br. 8) (emphasis added).
Although Appellant proceeds to discuss the “same functionality”
language {id.), we note that “having the same functionality” is recited in
limitation L, as contested under § 103 rejection B (addressed infra), and is
not found in the claim language the Examiner finds is lacking support in the
original Specification, as reproduced above regarding claims 16 and 19.
(Non-Final Action 6—7).
Although Appellant cites to paragraphs 24, 25, 29, 30-34 of the
Specification in support (App. Br. 9), we find these paragraphs are silent
regarding any mention of “thin client servers by virtue of having identical
applications installed thereon” (Claims 16 and 19) (emphasis added). To
the extent that Appellant urges the Specification “implies” support for what
is claimed {id.), “[a] description which renders obvious the invention for
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Application 13/470,152
which an earlier filing date is sought is not sufficient.” Lockwood, 107 F.3d
at 1572. Applying this reasoning to the facts presented here, we find
Appellant’s subsequent arguments (App. Br. 9) are unavailing:
Since the Specification describes an embodiment where
multiple functions, in the form of installed applications, are
available to users and also describe an embodiment where
multiple smart thin client servers are segregated by users and
not functionality, it is clear that the Specification implies an
embodiment where multiple smart thin client servers are
segregated by users while maintaining identical functionality in
the form of identical installed applications - because that is the
only way segregation by users and not by functionality could be
accomplished.
(App. Br. 9).
Turning to the second portion2 of the claim language the Examiner
finds (Non-Final Action 6—7) is unsupported in the original Specification,
we find Appellant’s extended discussion (App. Br. 10) of the claim term
“segregate” is not persuasive, because Appellant fails to point to any
specific support in the Specification. As pointed out by the Examiner
(Ans. 11), the Specification is silent regarding the claim term “isolated” that
was added by amendment. (Claims 16 and 19) (emphasis added).
Regarding the claim 16 and claim 19 language found unsupported by
the Examiner (Non-Final Action 6—8), we find no actual or inherent support
in the portions of the Specification (|| 24, 25, 29, 30-34) cited by Appellant
that is sufficient to demonstrate possession of the claimed invention under
2 “such that a particular user is assigned to a particular smart thin client
server and isolated from other smart thin client servers by having requests
directed to the particular smart thin client server and not to any of the other
of the multiple smart thin client servers . . . .” (Claims 16 and 19).
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Application 13/470,152
§ 112, first paragraph. See PowerOasis, Inc., 522 F.3d at 1306-07.
Therefore, we find a preponderance of the evidence supports the Examiner’s
finding (Non-Final Action 6—7) the Specification fails to comply with the
written description requirement of 35 U.S.C. § 112, first paragraph, for the
cited amended portions of independent claims 16 and 19.3 Accordingly, we
sustain the Examiner’s written description rejection A of claims 16 and 19
under pre-AIA 35 U.S.C. 1112, first paragraph.
Rejection B of Representative Independent Claim 1 under §103
ANALYSIS
Regarding the remaining rejections under § 103, we have considered
all of Appellant’s arguments and any evidence presented. We disagree with
Appellant’s arguments, and we adopt as our own: (1) the findings and legal
conclusions set forth by the Examiner in the action from which this appeal is
taken (Non-Final Act. 6—27), and (2) the findings, legal conclusions, and
explanations set forth in the Answer in response to Appellant’s arguments.
(Ans. 3—18). We highlight and address specific findings and arguments for
emphasis in our analysis below.
Issue: Under § 103(a), did the Examiner err in finding Koshiba
Camenisch, and Logston would have taught or suggested contested
limitation L: “the thin client server being one of multiple smart, thin client
3 See 35 U.S.C. § 132(a), which requires that “[n]o amendment shall
introduce new matter into the disclosure of the invention.” See also MPEP
§ 2163.06: “Relationship of Written Description Requirement to New
Matter.”
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Application 13/470,152
servers and having the same functionality as each of the other multiple
small, thin client servers,” within the meaning of claim 1? 4
The Examiner finds:
Koshiba discloses a method for starting a session
(Koshiba, title) between a user and a smart thin client server
(Koshiba, abstract), the thin client server being one of multiple
smart, thin client servers (Koshiba, FIG. 1), having the same
functionality as each of the other multiple smart, thin client
servers (Koshiba, FIG. 1, shows thin client server 1 and thin
client server N, each with a client status acquiring section,
client OS, business ap, and data; thus, having the same
functionality).
(Non-Final Action 9).
Appellant does not contest the Examiner’s findings regarding the
secondary cited Camenisch and Fogston references (Rejection B).
Appellant focuses on Koshiba, Figures 1, 2, and 5, and contends, inter alia:
in order for Koshiba to teach each thin client server having the
same functionality, the Examiner would have to show that not
only are the application programs on thin client server 10-1
identical to the application programs on thin client server 10-n,
but also the data on thin client server 10-1 is identical to the
data on this client server 10-n. Appellant respectfully asserts
4 We give the contested claim limitations the broadest reasonable
interpretation consistent with the Specification. See In re Morris, 111 F.3d
1048, 1054 (Fed. Cir. 1997). Cf. Spec. 1 60: “Although only a few
embodiments of the invention have been described in detail, it should be
appreciated that the invention may be implemented in many other forms
without departing from the spirit or scope of the invention. Therefore,
the present embodiments should be considered illustrative and not
restrictive and the invention is not to be limited to the details given herein,
but may be modified within the scope and equivalents of the appended
claims, (emphases added).
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Application 13/470,152
that is not the case. In fact, [Koshiba] paragraph [0040]
describes:
In FIG. 5, for example, a user A 40A serves a task
a and a task b, and the task a is executed from a terminal
TC-A30Ain a head office A, and the task b is executed
from the terminal TC-B 3 0B in a branch B, and the data
and applications which are used for the respective
tasks are different. Therefore, the connection
destination setting table is defined as shown in FIG. 2.
(App. Br. 16—17).
The Examiner disagrees:
In FIG. 1, Koshiba shows thin client server 1 and thin
client server N, each with a client status acquiring section,
client OS, business ap, and data; thus, having the same
functionality. That a user A would perform task A on thin client
server A and a user B would perform task B on thin client
server B means that different tasks are performed on thin client
servers having the same functionality as shown by Koshiba.
Applicant argues task assignment. Task assignment is
different from functionality.
We find a preponderance of the evidence supports the Examiner’s
findings (Non-Final Action 9), because Koshiba’s Figure 1 depicts identical
thin client servers, which we find would have been capable of performing
with the same functionality using identical applications and identical data.
See e.g., Koshiba (]f 23), describing Figure 1 in pertinent part.
The thin client server 10 contains executing sections
(task image) 11(11 -k-i, k=l to m, i=l to n) and client
status acquiring sections 12 (12-k-i, k=l to m, i=l to n).
The executing section 11 includes a client operating
system (OS) 111, an application program (AP) 112 for a
task and a data 113 for the task. The application program
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112 is executed on the operating system 111 by using the
data 113.
Therefore, we find Koshiba (Figure 1,123) at least suggests contested
limitation L under § 103, even if Koshiba (§ 40) teaches an alternative
embodiment in which “task a is executed from a terminal TC-A30A in a
head office A, and the task b is executed from the terminal TC-B 30B in a
branch B, and the data and applications which are used for the respective
tasks are different.” 5 6
For at least the aforementioned reasons, and based upon a
preponderance of the evidence, Appellant has not persuaded us the Examiner
erred. (See Final Act. 3 4). Accordingly, we sustain rejection B of
representative independent claim 1, and rejection B of the dependent
grouped claim 4, which falls with claim 1. See Grouping of Claims, supra.
Rejections C, D, and E of Claims 2, 3, 16, and 19 under §103
Appellant advances no separate, substantive arguments for rejection C
of dependent claim 2, rejection D of dependent claim 3, and rejection E of
independent claims 16 and 19. Nor has Appellant filed a Reply Brief to
5 Prior art must be evaluated for what the reference would have fairly
suggested to one of ordinary skill in the art at the time of the invention. Merck
6 Co., Inc. v. Biocraft Laboratories, Inc., 874 F.2d 804, 807—808 (Fed. Cir.
1989) (quoting In re Lamberti, 545 F.2d 747, 750 (CCPA 1976) (“[T]he fact
that a specific [embodiment] is taught to be preferred is not controlling, since
all disclosures of the prior art, including unpreferred embodiments, must be
considered.”)); In re Fracalossi, 681 F.2d 792, 794 n.l (CCPA 1982)
(A prior art reference's disclosure is not limited to its examples.); In re Boe,
355 F.2d 961, 965 (CCPA 1966) (All of the disclosures in a prior art reference
“must be evaluated for what they fairly teach one of ordinary skill in the art.”).
See also MPEP § 2123.
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further rebut the Examiner findings and responsive explanations in the
Answer. Arguments not made are waived. See 37 C.F.R. § 41.37(c)(l)(iv).
Accordingly, we sustain the Examiner’s § 103 rejections C, D, and E, of
claims 2, 3, 16, and 19.
Conclusion 6
For at least the aforementioned reasons, on this record, and based
upon a preponderance of the evidence, we are not persuaded the Examiner
erred in finding that claims 16 and 19 fail to comply with the written
description requirement under pre-AIA § 112, first paragraph (Rejection A).
Based upon a preponderance of the evidence, Appellant has not
persuaded us the Examiner erred in concluding that all contested claims
rejected under § 103 are obvious over the cited prior art (Rejections B—E).
6 We note the Examiner’s repeated reference to himself as “Appellee” in the
Answer is misplaced, because the Examiner is not a party to the
proceeding. An Ex parte Appellant is the party who appeals the Examiner’s
decision. An Appellee is the party who argues, on appeal, against setting
aside the judgment below (here, the Examiner’s decision). However, this is
an Ex parte appeal (meaning a single party before the Patent Office).
Examiners and Judges at the Board engage in similar activities: we make
findings of fact, reach conclusions of law and make decisions involving the
exercise of discretion. We do not “admit”, “allege”, “argue”, “assert”,
“concede”, “maintain” or engage in other like actions because we are not
“parties” to any proceeding. Rather, we are both quasi-judicial officials
making decisions on a record before us. See Western Electric Co. v. Piezo
Technology, Inc. v. Quigg, 860 F.2d 428, 431 (Fed. Cir. 1988); Lindberg v.
Brenner, 399 F.2d 990, 990 (D.C. Cir. 1968) (Board of Appeals is a “quasi­
judicial” body); Compagnie de St. Gobain v. Brenner, 386 F.2d 985, 987
(D.C. Cir. 1967); Hirsch v. United States, 203 USPQ 779 (D. D.C. 1978).
See also “Some Thoughts” 29 Jan. 2013 PTAB “Boardwalk” newsletter
article by Administrative Patent Judge Fred E. McKelvey.
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DECISION
We affirm the Examiner’s decision rejecting claims 16 and 19 under
pre-AIA 35 U.S.C. § 112, first paragraph (written description).
We affirm the Examiner’s decision rejecting claims 1—4, 16, and 19
under pre-AIA 35 U.S.C. § 103(a).
No time for taking any action connected with this appeal may be
extended under 37 C.F.R. § 1.136(a)(l)(iv). See 37 C.F.R. § 41.50(f).
AFFIRMED
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