2019004744 (P.T.A.B. Dec. 28, 2020)

INTERNATIONAL BUSINESS MACHINES CORPORATION

Patent Trials and Appeals BoardDec 28, 2020

2019004744 (P.T.A.B. Dec. 28, 2020)

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. 15/728,501 10/10/2017 THOMAS J. BURRIS IN920110184US04_8150-804 6184 112978 7590 12/28/2020 Cuenot, Forsythe & Kim, LLC 20283 State Road 7, Suite 300 Boca Raton, FL 33498 EXAMINER VU, VIET D ART UNIT PAPER NUMBER 2448 NOTIFICATION DATE DELIVERY MODE 12/28/2020 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): ibmptomail@iplawpro.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte THOMAS J. BURRIS and MANISH KATARIA ___________ Appeal 2019-004744 Application 15/728,501 Technology Center 2400 ____________ Before JOHNNY A. KUMAR, BETH Z. SHAW, and JAMES W. DEJMEK, Administrative Patent Judges. KUMAR, Administrative Patent Judge. DECISION ON APPEAL Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s final rejection of claims 26–31. We have jurisdiction over the rejected claims under 35 U.S.C. § 6(b). We affirm. 1 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42(a) (2018). According to Appellant, the real party in interest is IBM Corporation. See Appeal Br. 1. Appeal 2019-004744 Application 15/728,501 2 STATEMENT OF THE CASE Embodiments of Appellant’s invention relate to collaborative systems within organizations. Spec. ¶¶ 1, 2. Exemplary Claim 26. A computer-implemented method within a computer hardware system, comprising: evaluating each of a plurality of collaborative systems for suitability hosting an artifact according to at least one attribute of the artifact; selecting a first collaborative system from the plurality of collaborative systems according to the evaluation; storing the artifact in the first collaborative system; and automatically creating a link within a second collaborative system different from the first collaborative system pointing to the artifact in the first collaborative system. Appeal Br. 18, Claims App. Rejections (A). Claims 26–31 are rejected under judicially created doctrine of double patenting as being unpatentable over Burris et al., US 9,766,906 B2 issued September 19, 2017. (B). Claims 26–31 are rejected on under judicially created doctrine of double patenting as being unpatentable over Burris et al., US 9,804,863 B2 issued October 31, 2017. (C). Claims 26–29 and 31 are rejected under 35 U.S.C. § 103 as being unpatentable over Souza et al., US 2012/0036105 A1 published February 9, 2012. (D). Claim 30 is rejected under 35 U.S.C. § 103 as being unpatentable over Souza in view of Chavez et al., US 2008/0133666 A1 published June 5, 2008. Appeal 2019-004744 Application 15/728,501 3 ANALYSIS Rejections A and B under the Judicially created Doctrine of Double Patenting Appellant advances no arguments regarding claims 26–31 as rejected by the Examiner under Rejections A and B. Arguments not made are waived. See 37 C.F.R. § 41.37(c)(1)(iv) (2018). Accordingly, we pro forma sustain the Examiner’s Rejections A and B on the grounds of the judicially created doctrine of double patenting. Rejections C and D under 35 U.S.C. § 103 We have reviewed the Examiner’s rejection in light of Appellant’s arguments that the Examiner has erred. Appellant disputes the Examiner’s findings that Souza teaches “automatically creating a link within a second collaborative system different from the first collaborative system pointing to the artifact in the first collaborative system,” (hereinafter disputed limitation), as recited in claim 26. Appeal Br. 14–15. Regarding the disputed limitation, the Examiner summarily points to Souza ¶¶ 8 and 9 in support of the rejection. Final Act. 3. Appellant contends: [t]o the extent that ‘other VOD clients’ [in Souza] could be considered a ‘second collaborative system different from the first collaborative system,’ the tracker is not. As described in paragraph [0056] of Souza, ‘the tracker functionality merely keeps track of which peers hold which items of data.’ The Examiner has pointed to no teaching that supports a finding that the tracker 3 is part of a VOD client. Appeal Br. 14–15. Appeal 2019-004744 Application 15/728,501 4 In the Reply Brief, Appellant contends, and we agree “[u]pon review the Examiner's Answer, Appellants have been unable to identify any portion of the Examiner's response that addresses either these [disputed] limitations or Appellants' arguments as to these [disputed] limitations.” Reply Br. 6 We conclude that the Examiner’s findings are not supported by the cited portions of Souza for the reasons set forth by Appellant. The Examiner does not explain how the cited portions of Souza teach a logical association, or how such an association would meet the recited requirements for the link to “point[] to the artifact in the first collaborative system.” The Examiner has not established where the cited portions of Souza teach the disputed limitation. To affirm the Examiner on this record would require considerable speculation on our part. We decline to engage in speculation. See In re Steele, 305 F.2d 859, 862 (CCPA 1962). Therefore, on this record, we find the weight of the evidence supports the positions articulated by Appellant in the briefs. As such, we cannot sustain the Examiner’s rejections of independent claim 26. For the same reasons, we also reverse the rejections of dependent claims 27–31, which depend on claim 26. Accordingly, we are constrained on this record to reverse the Examiner’s Rejections C and D under 35 U.S.C. § 103. DECISION SUMMARY Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 26–31 Judicially created Doctrine of Double- Patenting 26–31 Appeal 2019-004744 Application 15/728,501 5 FINALITY AND RESPONSE 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). See 37 C.F.R. § 41.50(f). AFFIRMED (U.S. Pat. No. 9,766,906) 26–31 Judicially created Doctrine of Double- Patenting (U.S. Pat. No. 9,804,863) 26–31 26–29, 31 103 Souza 26–29, 31 30 103 Souza, Chavez 30 Overall outcome 26–31