Joanna Ng et al.

Patent Trials and Appeals Board

Apr 6, 2020

10527136 - (D) (P.T.A.B. Apr. 6, 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.
10/527,136 03/08/2005 Joanna Ng CA920020069US1 9461
11445 7590 04/06/2020
IBM Corporation - Endicott Drafting Center
1701 North Street
Building 256-3
Endicott, NY 13760
EXAMINER
MCADAMS, BRAD
ART UNIT PAPER NUMBER
2456
NOTIFICATION DATE DELIVERY MODE
04/06/2020 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):
edciplaw@us.ibm.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte JOANNA NG, ROHIT KAPOOR, and LEHO NIGUL
____________

Appeal 2018–007606
Application 10/527,1361
Technology Center 2400
____________

Before MURRIEL E. CRAWFORD, MICHAEL W. KIM, and
CARL L. SILVERMAN, Administrative Patent Judges.

SILVERMAN, Administrative Patent Judge.

DECISION ON APPEAL
Appellant appeals2 under 35 U.S.C. § 134(a) from the Examiner’s
final rejection of claims 22–51. We have jurisdiction under 35 U.S.C.
§ 6(b).
We Reverse.

1 Throughout this Decision, we use the word “Appellant” to refer to
“applicant” as defined in 37 C.F.R. § 1.42(a). Appellant identifies
International Business Machines Corporation as the real party in interest.
Appeal Br. 2.

2 This application has been the subject of Appeal 2012–005009, decided
September 8, 2014.
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STATEMENT OF THE CASE
The claims are directed to a portal server system and managing a
collection of associated portals. Independent claims 22, 32, and 42 include
the disputed claim language. Independent claim 22, reproduced below
(emphasis and labeling added), is representative3:
22. A method, within a portal server hardware system,
for managing a collection of associated portlets comprising:
initiating, by the portal server hardware system, a plurality
of portlets associated with one another in a portlet application;
(L1) determining whether a shared portlet application
session object exists for the plurality of portlets by using a client
key to access a portlet application data store;
(L2) upon determining that no shared portlet application
session object exists, creating, by the portal server hardware
system, the shared portlet application session object for the
associated portlets on a per user and a per portlet application
basis, each of the plurality of associated portlets having an
independent portlet session, but sharing a same portlet
application session;
calling, by the portal server hardware system, a web
application using the same portlet application session of the
shared portlet application session object, wherein
the shared portlet application session object accessible by
and storing session data for each of the plurality of associated
portlets.

3 Appellant argues claims 22, 32, and 42 as a group (Appeal Br. 5–8). We
select claim 22 as the representative claim for this group and the remaining
other claims 23–51 stand or fall with claim 22.
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Appeal Br. 9 (Claims Appendix).
THE REJECTION
Claims 22–51 stand rejected under 35 U.S.C. § 102(b) as being
anticipated by Hesmer (“Portlet Development Guide” Edition 1.1, pp. 1–59
issued on January 30, 2002), hereinafter “Hesmer.” Final Act. 3–7.

ANALYSIS
Appellant argues that Hesmer does not disclose the claim 22
limitations “(L1) . . . determining whether a shared portlet application
session object exists for the plurality of portlets by using a client key to
access a portlet application data store” and “(L2) upon determining that no
shared portlet application session object exists, creating, by the portal server
hardware system, the shared portlet application session object . . . .” Appeal
Br. 4–8.
In the Final Action, the Examiner finds Hesmer teaches limitations L1
and L2 of claim 22 (and independent claims 32 and 42). Regarding “(L1)
determining whether a shared portlet application session object exists for the
plurality of portlets by using a client key to access a portlet application data
store,” the Examiner finds:
PortletSessions are not available on anonymous pages as they
require a User to login, creating a unique PortletSession. The
unique PortletSession associated with the User is saved,
equivalent to the claimed “client key”. If a User returns to a
portlet and the portlet is created, the getSession() method
retrieves the unique PortletSession, “client key”, associated with
the User to recreate the PortletSession associated with said User.
Section 3.7, Page 21).

Final Act. 3–4 (emphasis omitted).
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Regarding “(L2) upon determining that no shared portlet application
session object exists, creating, by the portal server hardware system, the
shared portlet application session object . . . ,” the Examiner finds
upon determining that no shared portlet application
session object exists creating (Else, if the User is new, a new
PortletSession object is created for the User. Section 3.7, Page
21), by the portal server hardware system, a shared portlet
application session object for the associated portlets on a per user
and a per portlet application basis, each of the plurality of
associated portlets having an independent portlet session, but
sharing a s[]ame portlet application session (Context Parameters,
such as Attributes, are objects common to all portlets within the
portlet application. PortletSession Objects are variables used in
each virtual instance of a portlet on a per user basis enabling an
independent portlet session within the singular portlet
application session. Unlike PortletContext Objects, they are not
shared globally between all Portlet sessions. Section 3.6. Page
19 and 3.7 Portlet Session, Pages 21-22).

Id. at 4 (emphasis omitted).
Appellant argues the Examiner errs because Hesmer does not teach
limitation L1 “determining whether a shared portlet application session
object exists for the plurality of portlets by using a client key to access a
portlet application data store (emphasis added).” Appeal Br. 7. In
particular, Appellant argues the Examiner’s mapping of the PortletSession
associated with a user login as the claimed “client key” does not teach
“using a client key to access a portlet application data store.” Id. According
to Appellant, there is no teaching that the mapped PortletSession is used to
access a portlet application data store. Id. According to Appellant
[t]he getSession() method returns the current session or creates
one if there is no current session and the given parameter “create”
is set to true. More specifically, based on Examiner’s mapping
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and Appellants’ claim language, Hesmer would need to
determine whether a shared context parameter (mapped by
Examiner to Appellants’ “shared portlet application session
object”) exists by using a PortletSession to access a portlet
application data store. But no specific disclosure is found in
Hesmer, as Hesmer only describes that the getSession() method
is used to either return the current session or create one and return
the created one. As such, Examiner fails to identify the presence
of an essential element.

Id. at 7–8.
In the Answer, the Examiner refers to section 3.7 of Hesmer and
disagrees with Appellant’s argument that “Hesmer fails to disclose wherein
a PortletSession, ‘i.e., client key’ is used to access a portlet application data
store.” Ans. 6 (emphasis omitted). The Examiner finds:
Section 3.7 of Hesmer teaches during login, a
PortletSession is automatically created for each portlet which
associates the users login information, “client key”, with the
PortletSession. PortletSessions are not available on anonymous
pages as they require a User to login, creating a unique
PortletSession. The unique PortletSession associated with the
User is saved, equivalent to the claimed “client key” in the
portlet application data store. If a User returns to a portlet and
the portlet is created, the getSession() method retrieves the
unique PortletSession, “client key”, associated with the User
from said data store, to recreate the PortletSession associated
with said User. Else, if the User is new, a new PortletSession
object is created for the User. In the example of Hesmer's
Bookmark Portlet, a user logs into the portal, the user login
information, “i.e. client key”, is used to load from the portlet
application data store the related PortletSession which retrieves
bookmarks associated with the user.

Id. (Emphasis added).
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In the Reply Brief, Appellant reiterates arguments presented in the
Appeal Brief and argues the Examiner further errs by construing the claim
term “client key” to mean both “user’s login information” and “unique
PortletSession.” Reply Br. 5–6 (citing Ans. 6). According to Appellant:
As can be seen, Examiner has pivoted from Examiner’s initial
analysis, no longer comparing the claimed “client key” to the
“shared portlet application session object”, but first comparing
the “client key” to a “users login information” in the first
sentence and the sixth sentence of Examiner’s rebuttal, and then
second comparing the “client key” to the “unique PortletSession”
in the third sentence and the fourth sentence of Examiner’s
rebuttal. Thus, on its face, Examiner’s arguments are not
convincing because Examiner cannot construe the claim term
“client key” to mean both “users login information” and “unique
PortletSession”. In any case, irrespective of which claim
construction Examiner intended, neither is used to determine
whether a shared portlet application session object exists. Indeed,
section 3.7 of Hes[]mer makes clear, the login is used only to
retrieve “The BookmarkCount value’ from the session (if the
user is logged in) and otherwise, if the user is not logged in, then
obviously the user login information does not exist and cannot
be used at all. As for the “unique PortletSession”, section 3.7 is
quite clear that the getSession() method retrieves the unique
PortletSession, and from the prototype of the getSession()
method which takes no arguments, it is not possible for the
“unique PortletSession” to be passed into the getSession()
method in order to determine whether a shared context parameter
exists by using a PortletSession to access a portlet application
data store as argued by Appellants at page 8 of the Appeal Brief
and not rebutted by Examiner in the Examiner’s Answer.

Id. at 6–7.
A claim is anticipated only if each and every element as set forth in
the claims is found, either expressly or inherently described in a single prior
art reference, and arranged as required by the claim. Verdegaal Bros., Inc. v.
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Union Oil Co. of Cal., 814 F.2d 628, 631 (Fed. Cir. 1987). A claim in a
patent application is given the broadest reasonable interpretation consistent
with the specification, as understood by one of ordinary skill in the art. In re
Crish, 393 F.3d 1253, 1256 (Fed. Cir. 2004). Great care should be taken to
avoid reading limitations of the specification into the claims. E-Pass Techs.,
Inc. v. 3Com Corp., 343 F.3d 1364, 1369 (Fed. Cir. 2003).
Hesmer teaches a login to create and access a unique PortletSession
and, if the User returns to the created PortletSession, the getSession method
returns the unique PortletSession. Hesmer, section 3.7. The Examiner finds
the unique PortletSession is saved in the portlet application data store. Ans.
6–7 (citing Hesmer section 3.7). L1 recitations include “shared portlet
application session,” “client key,” and “access a portlet application data
store.” Hesmer’s login is a “client key” which is associated with a unique
Session. That key is utilized to log in as well as to recreate the Session. The
unique Session is stored in the data store. Hesmer, section 3.7.
We are persuaded by Appellant’s argument that the Examiner’s
mapping is insufficient to support a finding that Hesmer discloses claim
limitation L1 as required for anticipation. In particular, the Examiner maps
the claim term “client key” to the Hesmer login and also to the Hesmer
PortletSession associated with the Hesmer login.
The Federal Circuit has held that “[w]here a claim lists elements
separately, ‘the clear implication of the claim language’ is that those
elements are ‘distinct component[s]’ of the patented invention.” Becton,
Dickinson & Co. v. Tyco Healthcare Grp., LP, 616 F.3d 1249, 1254 (Fed.
Cir. 2010) (quoting Gaus v. Conair Corp., 363 F.3d 1284, 1288 (Fed. Cir.
2004)). See Engel Indus., Inc. v. Lockformer Co., 96 F.3d 1398, 1404–05
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(Fed. Cir. 1996) (concluding that where a claim provides for two separate
elements, a “second portion” and a “return portion,” these two elements
“logically cannot be one and the same”). There is nothing in the claims to
suggest that the claimed LRU and the claimed terminal controller can be the
same structure. See CAE Screenplates, Inc. v. Heinrich Fiedler GmbH &
Co., 224 F.3d 1308, 1317 (Fed. Cir. 2000) (“In the absence of any evidence
to the contrary, we must presume that the use of . . . different terms in the
claims connotes different meanings.”).
Therefore, in view of the Examiner’s mapping and the record before
us, we do not sustain the rejection of claim 22, and claims 23–51. Because
our decision with regard to the disputed limitation is dispositive of the
rejections made pursuant to 35 U.S.C. § 102, we do not address additional
arguments raised by Appellant.

CONCLUSION
The Examiner erred in rejecting claims 22–51 under 35 U.S.C.
§ 102(b) over Hesmer.

DECISION
For the above reasons, the Examiner’s decision rejecting claims
22–51 is Reversed.

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DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
22–51 102(a) Hesmer 22–51
Overall
Outcome:
22–51

REVERSED