Ex Parte Wright

Board of Patent Appeals and Interferences

Mar 28, 2011

10756598 (B.P.A.I. Mar. 28, 2011)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte DAVID W. WRIGHT
____________________

Appeal 2009-007598
Application 10/756,598
Technology Center 2100
____________________

Before, JAY P. LUCAS, THU A. DANG, and JAMES R. HUGHES,
Administrative Patent Judges.

DANG, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2009-007598
Application 10/756,598

I. STATEMENT OF CASE
Appellant appeals the Examiner’s final rejection of claims 1-32 under
35 U.S.C. § 134(a). We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.

A. INVENTION
According to Appellant, the invention relates to a content
management method, and in particular, a method including identifying
digital sending devices which includes authoring an automated business
process design (Spec. 28, ll. 6-8).

B. ILLUSTRATIVE CLAIM
Claim 1 is exemplary and reproduced below:

1. A content management method comprising:

identifying digital sending devices, each identified digital
sending device including a combination of hardware and
software configured to effect digital sending of data;

authoring an automated business process design; and

translating the automated business process design into
information technology templates for configuring each of the
identified digital sending devices to achieve the automated
business process.

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C. REJECTIONS
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Janis US 6,115,549 Sep. 05, 2000
Nagai US 6,275,977 B1 Aug. 14, 2001
Charisius US 6,938,240 B2 Aug. 30, 2005
(filed on Aug. 31, 2001)

Claims 1-4, 6, 8, 11-13, 16-20, 22, 24, and 27-29 stand rejected under
35 U.S.C. § 102(b) as being anticipated by Nagai.
Claims 5 and 21 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Nagai in view of Charisius.
Claims 7 and 23 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Nagai in view of Janis.
Claims 9, 10, 14, 15, 25, 26, and 30-32 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Nagai.

II. ISSUE
Has the Examiner erred in finding that Nagai discloses “information
technology templates for configuring each of the identified digital sending
devices to achieve the automated business process” (claim 1), as Appellant
contends? In particular, the issue turns on whether claim 1’s “digital
sending device” read on Nagai’s distributed object server.

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Application 10/756,598

III. FINDINGS OF FACT
The following Findings of Fact (FF) are shown by a preponderance of
the evidence.
Nagai
1. Nagai discloses a distributed object server 120 connected via a
LAN 121 to a cooperation definition client 101, wherein the distributed
object server 120 has an object which sequentially executes applications in
accordance with the application cooperation defined by the cooperation
definition client 101 (col. 4, ll. 52-58; Fig. 1).
2. Nagai also discloses a shared object repository 126 comprising
a physical AP object 123 for defining a business AP which is a physical
execution means for executing an information (business) process converted
as an object in accordance with distributed object technologies (col. 6, ll. 35-
40; Fig. 1).

IV. ANALYSIS
35 U.S.C. § 102(b)
As to independent claim 1, Appellant admits that “Nagai’s logical AP
objects are converted to create the physical AP objects that are used to
configure the distributed object server” and thus “Nagai’s physical AP
objects are best compared to the recited information technology templates
that are used to configure a device [as required in claim 1]” (App. Br. 6).
However, Appellant argues that “[e]ven if Nagai’s distributed object server
(120) could function as a digital sending device, it could not do so until it is
configured with the appropriate physical AP object created from a logical
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Appeal 2009-007598
Application 10/756,598

AP object by the cooperation definition client (101)” (App. Br. 7). Thus,
Appellant argues that “identifying a yet to be configured distributed object
server (120) is not the same as ‘identifying digital sending devices’ as
recited in Claim 1” (id.).
Appellant’s argument that Nagai’s digital object server could not
function as a digital sending device “until it is configured with the
appropriate physical AP object” (App. Br. 7) is not commensurate in scope
with the recited language of claim 1. That is, claim 1 does not require any
physical AP object or that the “digital sending device” be already configured
“with the appropriate physical AP object” as argued.
To determine whether Nagai teaches the “digital sending device,” we
give the claims their broadest reasonable interpretation. See In re Bigio, 381
F.3d 1320, 1324 (Fed. Cir. 2004). Claim 1 merely requires that the “digital
sending device” include “a combination of hardware and software
configured to effect digital sending of data.” We note that claim 1 does not
even require any “digital sending” of data, but rather that the combination of
hardware and software is “configured to effect” the tasks (emphasis added).
Such an intended use to “effect digital sending” will not limit the scope of
the claim because it merely defines a context in which the combination of
hardware and software operates. Our reviewing court has determined that
“[an intended] use or purpose usually will not limit the scope of the claim
because such statements usually do no more than define a context in which
the invention operates.” Boehringer Ingelheim Vetmedica, Inc. v. Schering-
Plough Corp., 320 F.3d 1339, 1345 (Fed. Cir. 2003).
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Thus, we give “digital sending device” its broadest but reasonable
meaning of any device comprised of hardware and software that is capable
of effecting (i.e., “configured to effect”) digital sending data, as defined in
claim 1.
Nagai discloses a distributed object server which has an object which
sequentially executes applications in accordance with the application
cooperation (FF 1), wherein a physical AP object defining a business AP
executes a business process converted as an object in accordance with
distributed object technologies (FF 2). As Appellant admits, “Nagai’s
physical AP objects are best compared to the recited information templates
that are used to configure a device” (App. Br. 6). In fact, Appellant admits
also that “Nagai’s distributed object server (120) could function as a digital
sending device” even though “it could not do so until it is configured with
the appropriate physical AP object created from a logical AP object by the
cooperation definition client (101)” (App. Br. 7).
We agree with Appellant and find that claim 1’s “information
technology templates for configuring” a device “to achieve the automated
business process” to read on Nagai’s physical AP objects. Further, we agree
with Appellant that Nagai’s distributed object server (120) could function as
a “digital sending device.” That is, we find Nagai’s distributed object server
to be a device comprising hardware and software that is capable of effecting
digital sending of data. Thus, given our above claim construction, we find
that claim 1’s “digital sending device” reads on Nagai’s distributed object
server.
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Application 10/756,598

Appellant does not provide separate arguments for independent claim
17 from those of claim 1. As we find no error with respect to the rejection
of claim 1, we also find no error with the rejection of claim 17 falling with
claim 1 under 35 U.S.C. § 102(b).
As for independent claims 11 and 27, Appellant repeats the contention
from those of claim 1 that Nagai’s “AP objects are at best comparable to the
recited information technology templates” and thus do not disclose
information technology templates “configured to enable implementation of
the automated business process design through the plurality of digital
sending devices” (App. Br. 7-8). As discussed above with respect to claim
1, we find that Nagai discloses templates configured to enable
implementation of the automated business process design through digital
sending devices such as the distributed object server (FF 1-2). Accordingly,
we also find no error with the rejection of claim 11 and 27 falling with claim
1 under 35 U.S.C. § 102(b).
Accordingly, for the above reasons, we affirm the rejection of
independent claims 1, 11, 17, and 27, and claims 2-4, 6, 8, 12, 13, 16, 18-20,
22, 24, 28 and 29 depending respectively therefrom under 35 U.S.C.
§ 102(b) over Nagai.
35 U.S.C. § 103(a)
Appellant does not provide separate arguments for claims 5, 7, 9, 10,
14, 15, 21, 23, 25, 26, and 30-32 from those of independent claims 1, 11, 17,
and 27 from which they respectively depend. As we find no error with
respect to the rejection of claims 1, 11, 17, and 27 over Nagai, we also find
no error with the rejection of claims 5 and 21 over Nagai in view of
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Appeal 2009-007598
Application 10/756,598

Charisius, the rejection of claims 7 and 23 over Nagai in view of Janis, and
the rejection of claims 9, 10, 14, 15, 25, 26, and 30-32 over Nagai under 35
U.S.C. § 103(a).

V. CONCLUSIONS AND DECISION
We affirm the rejection of claims 1-4, 6, 8, 11-13, 16-20, 22, 24, and
27-29 under 35 U.S.C. § 102(b) and of claims 5, 7, 9, 10, 14, 15, 21, 23, 25,
26, and 30-32 under 35 U.S.C. § 103(a).
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED

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