Ex Parte Bertin et al

Patent Trial and Appeal BoardFeb 3, 2016

12444962 (P.T.A.B. Feb. 3, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 12/444,962 0410912009 Olivier Bertin 56436 7590 02/05/2016 Hewlett Packard Enterprise 3404 E. Harmony Road Mail Stop 79 Fort Collins, CO 80528 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 ATTORNEY DOCKET NO. CONFIRMATION NO. 82223756 4045 EXAMINER CHOU,ALANS ART UNIT PAPER NUMBER 2451 NOTIFICATION DATE DELIVERY MODE 02/05/2016 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): hpe.ip.mail@hpe.com mkraft@hpe.com chris.mania@hpe.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte OLIVIER BERTIN, JEAN-PHILIPPE CARADEC, and MARC LAMBERTON Appeal2014-003143 Application 12/444,962 1 Technology Center 2400 Before ST. JOHN COURTENAY III, THU A. DANG, and LARRY J. HUME, Administrative Patent Judges. HUME, Administrative Patent Judge. DECISION ON APPEAL This is a decision on appeal under 35 U.S.C. Â§ 134(a) of the final rejection of claims 1-20. We have jurisdiction under 35 U.S.C. Â§ 6(b). We AFFIRM. 1 According to Appellants, the real party in interest is Hewlett-Packard Development Company, LP. App. Br. 3. Appeal2014-003143 Application 12/444,962 STATEMENT OF THE CASE2 The Invention Appellants' disclosed and claimed invention relates to a data processing system and method. Spec. if 2. Exemplary Claims Claims 1 and 12, reproduced below, are representative of the subject matter on appeal (emphases added to contested limitations): 1. A method of managing access to address data that is accessible via a plurality of communication devices, the method comprising: accessing and/or establishing at least one access rule, associated with at least one communication device of the plurality of communication devices, for influencing access to the address data; and controlling access to the address data according to the at least one access rule associated with the at least one communication device. 12. A communications system, comprising: a plurality of communication devices; means for storing address data accessible via the plurality of communication devices; means for accessing and/or establishing at least one access rule, associated with at least one communication device of the plurality of communication devices, for influencing access to the address data; and 2 Our decision relies upon Appellants' Appeal Brief ("App. Br.," filed June 10, 2013); Reply Brief ("Reply Br.," filed Jan. 6, 2014); Examiner's Answer ("Ans.," mailed Nov. 4, 2013); Final Office Action ("Final Act.," mailed Jan. 11, 2013); and the original Specification ("Spec.," filed Apr. 9, 2009). 2 Appeal2014-003143 Application 12/444,962 means for controlling access to the address data according to the at least one access rule associated with the at least one communication device, wherein the address data comprises a first user's contact list, wherein the first user's contact list includes a plurality of contacts for different users and an address for each contact, and the at least one access rule includes a unique rule ID, the contact list and access rights for the different users to access the first user's contact list. Prior Art The Examiner relies upon the following prior art as evidence in rejecting the claims on appeal: McDowell et al. ("McDowell") US 2002/0035605 Al Mar. 21, 2002 Bobde et al. ("Bobde") US 2003/0217142 Al Nov. 20, 2003 Rejections on Appeal RI. Claims 1, 2, 5, 7, 8, 12, and 16 stand rejected under 35 U.S.C. Â§ 102(b) as being anticipated by Bobde. Final Act. 3. R2. Claims 3, 4, 6, 9-11, 13-15, and 17-20 stand rejected under 35 U.S.C. Â§ 103(a) as being unpatentable over the combination of Bobde and McDowell. Final Act. 7. CLAIM GROUPING3 Based on Appellants' arguments (App. Br. 6-15), we decide the appeal of Rejection RI of claims 1, 2, 5, 7, and 8 on the basis of 3 We note Appellants incorrectly argued against the rejection of claims 5 and 7 under Â§ 103 (Rejection R2), while the rejection of these claims is actually underÂ§ 102 (Rejection RI). We group these claims accordingly. 3 Appeal2014-003143 Application 12/444,962 representative claim 1. We decide the appeal of Rejection R 1 of separately argued independent claims 12 and 16 on the basis representative of claim 12. We address remaining claims 3, 4, 6, 9-11, 13-15, and 17-20 in Rejection R2, not argued separately, infra. ISSUES AND ANALYSIS In reaching this decision, we consider all evidence presented and all arguments actually made by Appellants. We do not consider arguments which Appellants could have made but chose not to make in the Briefs so that we deem any such arguments as waived. 37 C.F.R. Â§ 41.37(c)(l)(iv). We disagree with Appellants' arguments with respect to all argued claims, and we incorporate herein and adopt as our own: ( 1) the findings and reasons set forth by the Examiner in the action from which this appeal is taken, and (2) the reasons and rebuttals set forth in the Examiner's Answer in response to Appellants' arguments. We incorporate such findings, reasons, and rebuttals herein by reference unless otherwise noted. However, we highlight and address specific findings and arguments regarding claims 1 and 12 for emphases, as follows. 1. Â§ 102(b) Rejection RI of Claims 1, 2, 5, 7, and 8 Issue 1 Appellants argue (App. Br. 6-8; Reply Br. 4---6) the Examiner's rejection of claim 1 under 35 U.S.C. Â§ 102(b) as being anticipated by Bobde is in error. These contentions present us with the following issue: Did the Examiner err in finding Bobde discloses a method that includes, inter alia, the limitation of "controlling access to the address data 4 Appeal2014-003143 Application 12/444,962 according to the at least one access rule associated with the at least one communication device," as recited in claim 1? Analysis Appellants contend, "Bobde does not teach that the presence information includes address data or any type of address. Hence, Bobde does not teach controlling access to address data according to at least one access rule associated with at least one communication device," as recited in claim 1. App. Br. 7. Appellants further contend: The Examiner also asserts Bobde discloses computer devices are accessed through network telephony (see page 3 section [0023]) by network addresses .... Paragraph 23, however, does not disclose address data or an access rule to control access to network addresses. Accordingly, Bobde fails to teach "controlling access to address data according to the at least one access rule associated with the at least one communication device." App. Br. 8. The Examiner finds Bobde's access control list (ACL) teaches "controlling access to address data" of a particular group of users. Ans. 2 (citing Bobde i-fi-1 31, 46). The Examiner also finds Bobde's URI and network address teach claim 1 's claim term "address." Ans. 2 (citing Bobde i130). We note Appellants' Specification does not provide an explicit definition of the claim term "address data." The Specification discloses "[t]he representation of groups and contact lists is an embodiment of address data ... embodiments of address data are not limited thereto." Spec. i137. 5 Appeal2014-003143 Application 12/444,962 We find Appellants' exemplary, non-limiting embodiments of "address data" in the Specification (id.) do not provide an explicit definition per se, and thus do not preclude the Examiner's broader interpretation. 4 Thus, we find the Examiner's interpretation of the term "address data" to be reasonable and, under the broadest reasonable interpretation in light of the specification standard, we conclude the scope of the recited "address list" does not preclude Bobde's presence information. During examination, a claim must be given its broadest reasonable interpretation consistent with the Specification as it would be interpreted by one of ordinary skill in the art. Because the applicant has the opportunity to amend claims during prosecution, giving a claim its broadest reasonable interpretation will reduce the possibility that the claim, once issued, will be interpreted more broadly than is justified. In re Yamamoto, 740 F.2d 1569, 1571 (Fed. Cir. 1984); In re Zletz, 893 F.2d 319, 321 (Fed. Cir. 1989) 4 /\ny special meaning assigned to a tenn "must be sufficiently clear in the specification that any departure from common usage would be so understood by a person of experience in the field of the invention." Multiform Desiccants Inc. v. Medzam Ltd., 133 F.3d 1473, 1477 (Fed. Cir. 1998); see also Helmsderfer v. Bobrick Washroom Equip., Inc., 527 F.3d 1379, 1381 (Fed. Cir. 2008) ("A patentee may act as its own lexicographer and assign to a term a unique definition that is different from its ordinary and customary meaning; however, a patentee must clearly express that intent in the written description.") (citation omitted). See also Phillips v. AWH Corp., 415 F.3d 1303, 1323 (Fed. Cir. 2005) ("[A]Hhough the specification often describes very specific embodiments of the invention, we have repeatedly vvarned against confining the claims to those embodiments .... In particular~ we have expressly rejected the contention that if a patent describes only a single ernbodiment, the claims of the patent must be construed as being limited to that embodiment") (citations omitted). 6 Appeal2014-003143 Application 12/444,962 ("During patent examination the pending claims must be interpreted as broadly as their terms reasonably allow."). In addition, Appellants contend, in regards to claim 5: McDowell does not disclose at least one access rule that includes the contact list and access rights for different users in the contact list to access the contact list. McDowell also does not disclose at least one access rule includes access rights for the different users on the access list to access the first user's contact list. App. Br. 14. We are not persuaded by Appellants' arguments because Appellants are arguing a reference not relied upon for Rejection RI, i.e., the Examiner cites Bobde, not McDowell, in rejecting claim 5. Final Act. 3; and see supra note 3. Appellants make similar arguments with respect to claim 7, and we repeat our findings regarding claim 5 as being applicable to claim 7. See App. Br. 15. We are not persuaded of Appellants' contention because Appellants merely assert, without elaboration or specific criticism of the Examiner's findings that the reference does not disclose features recited in claims 5 and 7. Cf In re Lovin, 652 F.3d 1349, 1357 (Fed. Cir. 2011) ("[W]e hold that the Board reasonably interpreted Rule 41.37 to require more substantive arguments in an appeal brief than a mere recitation of the claim elements and a naked assertion that the corresponding elements were not found in the prior art."). Accordingly, based upon the findings above, on this record, we are not persuaded of error in the Examiner's reliance on the disclosure of the cited prior art to disclose the disputed limitation of claim 1, nor do we find 7 Appeal2014-003143 Application 12/444,962 error in the Examiner's resulting finding of anticipation. Therefore, we sustain the Examiner's anticipation rejection of independent claim 1, and grouped claims 2, 5, 7, and 8 which fall therewith. See Claim Grouping, supra. 2. Â§ 102(b) Rejection RI of Claims 12 and 16 Issue 2 Appellants argue (App. Br. 8-12; Reply Br. 6-8) the Examiner's rejection of claim 12 under 35 U.S.C. Â§ 102(b) as being anticipated by Bobde is in error. These contentions present us with the following issue: Did the Examiner err in finding Bobde discloses a communication system that includes, inter alia, the limitations of "means for controlling access to the address data according to the at least one access rule associated with the at least one communication device" and, wherein, (1) "the address data comprises a first user's contact list, wherein the first user's contact list includes a plurality of contacts for different users and an address for each contact," and (2) "the at least one access rule includes a unique rule ID, the contact list and access rights for the different users to access the first user's contact list," as recited in claim 12? Analysis Appellants contend Bobde fails to disclose the contested "means for controlling" limitation, "[fJor the reasons stated above with respect to claim 1." App. Br. 8. For the same reasons set forth above with respect to claim 1, Issue 1, we are not persuaded the Examiner erred in reading the contested "means for controlling" limitation onto the cited portions of Bobde. See Final Act. 5 (citing Bobde i-f 31 ); and see Ans. 2. 8 Appeal2014-003143 Application 12/444,962 Appellants also contend: The Examiner asserts the buddy list disclosed in paragraph 5 of Bobde is the claimed first user's contact list . . . paragraph 7 appears to discuss that the presence information of each device of a particular user being watched is determined and presented to the watcher (the watcher appears to be the person having the buddy list) in the compound document. However, Bobde does not disclose the compound document includes a user's entire contact list. In particular, Bobde does not teach the compound document or any information provided to the watcher includes a first user's contact list, wherein the first user's contact list includes a plurality of contacts for different users and an address for each contact, as recited in claims 12 and 16. App. Br. 9-10 (emphasis omitted). We agree with the Examiner's finding that Bobde's access control list, which provides access rights to a subscriber on a contact list (Ans. 3 (citing Bobde i-fi-1 29, 31) ), teaches the "user's contact list" limitation, as recited in claim 12. Furthermore, in regards to the "wherein" clause in claim 12 ("wherein the address data comprises a first user's contact list, wherein the first user's contact list includes a plurality of contacts for different users and an address for each contact, and the at least one access rule includes a unique rule ID, the contact list and access rights for the different users to access the first user's contact list. "), the determination of whether recitations or clauses introduced by terms such as "wherein" result in affirmative claim limitations which are to be given patentable weight depends on the specific facts of the case. See, e.g., Griffin v. Bertina, 285 F.3d 1029, 1034 (Fed. Cir. 2002) (finding that a "wherein" clause limited a process claim where the clause gave "meaning and purpose to the manipulative steps"). In re Hoffer v. 9 Appeal2014-003143 Application 12/444,962 Microsoft Corp., 405 F.3d 1326, 1329 (Fed. Cir. 2005), the court held that when a '"whereby' clause states a condition that is material to patentability, it cannot be ignored in order to change the substance of the invention." However, the court noted that a "whereby clause in a method claim is not given weight when it simply expresses the intended result of a process step positively recited." Id. (quoting Minton v. Nat'! Ass 'n of Securities Dealers, Inc., 336 F.3d 1373, 1381 (Fed. Cir. 2003)). Here, we find the clause that recites, "wherein the first user's contact list includes a plurality of contacts for different users and an address for each contact ... " merely expresses the content or type of the data without affecting the structure or function of the claimed system, such that we do not give any patentable weight to the limitation. We, therefore, find Appellants' arguments are not commensurate with the scope of the claims, as claims 12 and 16's system and storage, respectively, are not affected by the content or type of the data. Moreover, Appellants' Specification, again, provides no explicit definition for the claimed "contact list." We agree with the Examiner's findings and teachings of Bobde cited above, as well as the Examiner's finding of anticipation, because under a broad but reasonable interpretation, Bobde's Access Control List discloses a "contact list." Accordingly, Appellants have not provided sufficient evidence or argument to persuade us of any reversible error in the Examiner's reading of the contested limitations on Bobde. 10 Appeal2014-003143 Application 12/444,962 Therefore, we sustain the Examiner's anticipation rejection of independent claim 12 under 35 U.S.C. Â§ 103(a), and grouped claim 16 which falls therewith. See Claim Grouping, supra. 2. Â§ 103(a) RejectionR2 of Claims 3, 4, 6, 9-11, 13-15, and 17-20 Appellants summarily contend "McDowell fails to cure the deficiencies of Bobde" and "claims 3-7, 9-11, 13-15, and 17-20 should be reversed at least for the reasons the rejection of independent claims 1, 12 and 16 should be reversed." App. Br. 13. Mere attorney arguments and conclusory statements unsupported by factual evidence are entitled to little probative value. In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997); see also In re De Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984); and Ex parte Belinne, No. 2009-004693, slip op. at 7-8 (BP AI Aug. 10, 2009) (informative), available at http://www.uspto.gov/ web/offices/dcom/bpai/its/fd09004693.pdf. See In re Lovin, 652 F.3d at 1357 ("[W]e hold that the Board reasonably interpreted Rule 41.37 to require more substantive arguments in an appeal brief than a mere recitation of the claim elements and a naked assertion that the corresponding elements were not found in the prior art."); cf In re Baxter Travenol Labs., 952 F.2d 388, 391 (Fed. Cir. 1991) ("It is not the function of this court to examine the claims in greater detail than argued by an appellant, looking for [patentable] distinctions over the prior art."). Arguments not made are therefore waived. See 37 C.F.R. Â§ 41.37(c)(l)(iv). Accordingly, Appellants have not provided sufficient evidence or argument to persuade us of any reversible error in the Examiner's reading of the contested limitations on the cited prior art, or in the legal conclusion of 11 Appeal2014-003143 Application 12/444,962 obviousness. Therefore, we sustain the Examiner's obviousness Rejection R2 of claims 3, 4, 6, 9-11, 13-15, and 17-20. REPLY BRIEF To the extent Appellants may advance new arguments in the Reply Brief (Reply Br. 4--12) not in response to a shift in the Examiner's position in the Answer, we note arguments raised in a reply brief that were not raised in the appeal brief or are not responsive to arguments raised in the Examiner's Answer will not be considered except for good cause, which Appellants have not shown. See 37 C.F.R. Â§ 41.41(b)(2). CONCLUSIONS (1) The Examiner did not err with respect to anticipation Rejection RI of claims 1, 2, 5, 7, 8, 12, and 16 under 35 U.S.C. Â§ 102(b) over the cited prior art, and we sustain the rejection. (2) The Examiner did not err with respect to obviousness Rejection R2 of claims 3, 4, 6, 9-11, 13-15, and 17-20 under 35 U.S.C. Â§ 103(a) over the cited prior art combination of record, and we sustain the rejection. DECISION We affirm the Examiner's decision rejecting claims 1-20. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. Â§ 1.136(a)(l )(iv). AFFIRMED 12