Ex Parte Boss et al

Patent Trial and Appeal BoardAug 21, 2014

11170441 (P.T.A.B. Aug. 21, 2014)

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. 11/170,441 06/30/2005 Greg Boss YOR920050090US1 5985 48150 7590 08/21/2014 MCGINN INTELLECTUAL PROPERTY LAW GROUP, PLLC 8321 OLD COURTHOUSE ROAD SUITE 200 VIENNA, VA 22182-3817 EXAMINER DICKERSON, TIPHANY B ART UNIT PAPER NUMBER 3623 MAIL DATE DELIVERY MODE 08/21/2014 PAPER 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. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE 1 ____________________ 2 3 BEFORE THE PATENT TRIAL AND APPEAL BOARD 4 ____________________ 5 6 Ex parte GREG BOSS, DAVID BURNS, ANDREW RICHARD JONES, 7 and KEVIN C. MCCONNELL 8 ____________________ 9 10 Appeal 2011-005114 11 Application 11/170,441 12 Technology Center 3600 13 ____________________ 14 15 16 Before: MURRIEL E. CRAWFORD, JOSEPH A. FISCHETTI, and 17 MICHAEL W. KIM, Administrative Patent Judges. 18 19 CRAWFORD, Administrative Patent Judge. 20 21 22 DECISION ON REQUEST FOR REHEARING 23 Appellants filed a Second Request for Rehearing on April 28, 2014 24 (hereinafter “Request”) contending that the Board erred in the Decision on 25 Request for Rehearing of February 28, 2014 (hereinafter “Decision”), and 26 asking that the decision be reheard (Request 1). In the Decision, we 27 declined to modify our original Decision to affirm the Examiner’s rejection, 28 but granted the request in that we clarified our claim construction and 29 denominated our affirmance of the rejections as a new ground of rejection. 30 We initially note that Requests for Rehearing are limited to matters 31 misapprehended or overlooked by the Board in rendering a decision, or to 32 responses to a new ground of rejection designated pursuant to 37 C.F.R. 33 § 41.50(b). See 37 C.F.R. § 41.52. 34 Appeal 2011-005114 Application 11/170,441 2 Appellants argue that we erred in denying the request in regard to 1 claims 30 and 32, because these claims are not method claims, and therefore 2 the rejection of these claims should have been reversed in view of our 3 discussion about the different scope of the method, apparatus, and medium 4 claims found on pages 9 and 10 of the Decision. 5 In this regard, we stated that the method claims are construed 6 differently from the apparatus and medium claims (Decision 9–10). We also 7 determined that in our original Decision on Appeal of August 30, 2013, we 8 properly selected claim 1, a method claim, as a representative claim because 9 the Appellants did not argue the separate patentability of claims 30 and 32 10 (Id. at 10–11). We note that the Examiner, on page 4 of the Final Office 11 Action (mailed May 11, 2010) and also on page 6 of the Answer (mailed 12 November 22, 2010), stated that the method and apparatus claims were 13 treated differently. Specifically, the Examiner stated that system claims and 14 method claims would be treated differently because a programmed processor 15 must be capable of performing the entirety of the three-stage process (Final 16 Act. 4; Ans. 6). The Examiner went on to say that in contrast, a method is 17 defined as a series of actions. 18 As such, the Appellants were on notice that the method claims and 19 apparatus and medium claims were being treated differently for purposes of 20 the rejection. The Appellants did not argue the separate patentability of 21 claims 30 and 32 in the Appeal Brief, the Reply Brief, or in the first Request 22 for Rehearing. The Appellants argued claims 30 and 32 in the group with 23 claim 1. As such, the Appellants have waived any arguments related to the 24 separate patentability of these claims. See 37 C.F.R. § 41.37 (c)(1). We 25 Appeal 2011-005114 Application 11/170,441 3 properly selected claim 1 as a representative claim. Therefore, we decline to 1 make any changes in our Decision regarding claims 30 and 32. 2 Appellants argue that there is an apparent contradiction in our 3 Decision between explaining “for the first time” the distinction between 4 method and apparatus/medium claims, and Appellants not previously 5 arguing method and apparatus/medium claims separately (Request 2-3). 6 Specifically, Appellants do not understand how they could have previously 7 argued method and apparatus/medium claims separately, when the 8 distinction between them was mentioned for the first time in our Decision. 9 Appellants’ arguments are misplaced. As set forth above, the Examiner 10 explained previously, and thus Appellants were on notice, of the distinction 11 between method and apparatus/medium claims. What was set forth for the 12 first time in the Decision was a more in depth analysis of the distinction. 13 While it is our view that the analysis did not change the thrust of the 14 rejection, in order to provide Appellants every benefit of the doubt that the 15 thrust may have changed1, we exercised our discretion in designating the 16 rejection of claims 30 and 32 as a new ground: to provide Appellants an 17 opportunity to respond to the more in depth analysis concerning the 18 distinction between claims 1, 30, and 32. 19 Appellants argue that that we misapprehended the construction of 20 claim 1 because (1) a module is inherent in the subject matter of claim 1; (2) 21 1 As specifically noted at page 11 of the Decision, “[b]ecause this may be interpreted as changing the basic thrust of the rejections, and in the interest of justice, we denominate the rejections we have affirmed as new grounds of rejection” (emphasis added). Appeal 2011-005114 Application 11/170,441 4 the functional language in claim 1 defines the structure of a three stage 1 process; and (3) all of the steps in the claim are always performed. 2 We do not agree that we misapprehended the construction of claim 1, 3 based on Appellants’ argument that a module is inherent in the subject 4 matter of claim 1. Claim 1 is directed to a method of automatically 5 scheduling a meeting which comprises a series of steps. No module is 6 claimed. Two of the steps are not performed if a free time slot is found for 7 all participants in a previous step. Therefore, as we said on page 9 of our 8 Decision, it is only necessary that the prior art describe or suggest the earlier 9 step. 10 We do not agree that we misapprehended the construction of claim 1, 11 based on Appellants’ argument that the functional language defines structure 12 of a three stage process. As we stated above, the claim is directed to a 13 method comprising a series of steps, not to a structure. 14 We do not agree that we misapprehended the construction of claim 1 15 based on Appellants’ argument that all of the steps are always performed 16 and none of the steps are conditional. As we found in our Decision on page 17 8 in reliance on In re Am. Acad. of Sci. Tech. Cir., 367 F3d 1359, 1364 (Fed. 18 Cir. 2004), during prosecution claims are given their broadest reasonable 19 construction. When the method claim is given its broadest reasonable 20 construction, it is broad enough to cover a method which stops if at least one 21 free time slot is found. We also stated that this use of the broadest 22 reasonable construction in construing conditional steps in a method claim 23 was in accord with the view of our reviewing court in Cybersettle, Inc. v. 24 Nat’l Arbitration Forum, Inc., 243 Fed.Appx. 603, 607 (Fed. Cir. 2007) 25 Appeal 2011-005114 Application 11/170,441 5 (unpublished), which though designated as unpublished, can be found on the 1 Court of Appeals for the Federal Circuit website. 2 3 DECISION 4 On the record before us, we DENY the Second Request for Rehearing 5 and decline to modify our Decision on Request for Rehearing in any way. 6 No time period for taking any subsequent action in connection with 7 this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. 8 1.136(a)(1)(iv). 9 DENIED 10 11 12 hh 13