Ex Parte Charters et al

Patent Trial and Appeal BoardJan 10, 2017

10907034 (P.T.A.B. Jan. 10, 2017)

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. 10/907,034 03/17/2005 Graham C. Charters GB920030109US1 4034 46320 7590 CRGO LAW STEVEN M. GREENBERG 7900 Glades Road SUITE 520 BOCA RATON, EL 33434 EXAMINER CAO, DIEM K ART UNIT PAPER NUMBER 2196 NOTIFICATION DATE DELIVERY MODE 01/12/2017 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): docketing@crgolaw.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte GRAHAM C. CHARTERS, AMANDA E. CHESSELL, MICHAEL FRIESS, VERNON M. GREEN, and KEITH B. MANTELL Appeal 2016-001773 Application 10/907,034 Technology Center 2100 Before ALLEN R. MacDONALD, ROBERT E. NAPPI, and JOHNNY A. KUMAR, Administrative Patent Judges. NAPPI, Administrative Patent Judge. DECISION ON APPEAL This is a decision on appeal under 35 U.S.C. § 134(a) of the rejection of claims 1,11 and 23 through 43. Claims 2—10 and 12—22. We affirm. INVENTION The invention is directed to a method that provides real world contexts to computer applications for outputting data describing one or more real world contexts. See Abstract of Appellants’ Specification. Claim 1 is illustrative of the invention and reproduced below: 1. A computer-implemented method for providing real world contexts to computer applications for outputting data describing one or more real world contexts, the method comprising: Appeal 2016-001773 Application 10/907,034 identifying components in a computer application which implement instances of real world contexts; and updating application components so that a real world context instance is active during the execution by the computer application of a function for the real world context instance; wherein the real world context instance has an instance identifier and is referenced by a type of real world context being a string value and including any of a solution, a conversation, a task, and a data. REJECTIONS AT ISSUE The Examiner has rejected claims 1, 11, 23 through 30, 32 through 35, 42, and 43 under 35 U.S.C. § 102(e) as being anticipated by Racca (US 2008/0307392 Al; Dec. 11, 2008). Final Rej. 2-7.1 The Examiner has rejected claims 36 through 38 and 41 under 35 U.S.C. § 103(a) as being unpatentable over Racca and Felt (US 7,213,049 B2; May 1, 2007). Final Rej. 7-9. The Examiner has rejected claims 31, 39, and 40 under 35 U.S.C. § 103(a) as being unpatentable over Racca and Monson-Hafel (Enterprise JavaBeans, O’Reilly & Associates, March 2000). Final Rej. 9-10. ISSUES Appellants argues on pages 5 through 12 of the Appeal Brief, and pages 2 through 5 of the Reply Brief, that the Examiner’s rejection of independent claim 1 is in error: These arguments present us with the following issue: Did the Examiner err in finding Racca teaches a real world context instance has an instance identifier and is referenced by a type of real 1 Throughout this opinion we refer to the Appeal Brief filed June 22, 2015, Reply Brief filed November 27, 2015, Final Rejection mailed, January 27, 2015, and the Examiner’s Answer mailed October 2, 2015. 2 Appeal 2016-001773 Application 10/907,034 world context being a string value and including any of a solution, a conversation, a task, and a data? ANALYSIS We have reviewed the Examiner’s rejections in light of Appellants’ contentions that the Examiner has erred. Further, we have reviewed the Examiner’s response to Appellants’ arguments. Appellants’ arguments are premised on the assertion that the claim recites the real world context being referenced by a string and that the string value includes one of the words “solution,” “conversation,” “task” and “data”. See App. Br. 7—9, (see also Reply Br. 3 in which Appellant state “Appellants’ claim language does require setting a string value equal to ‘solution,’ ‘conversation,’ ‘task,’ or ‘data’ as a type of real world context for an instance identifier”). The Examiner provides a comprehensive response to Appellants’ arguments on pages 3 and 4 of the Answer. The Examiner identifies that claim 1 does not recite the string must contain the recited words but rather that the real world context be of the type of a solution, conversation, task or data. Answer 3, 4. Further, the Examiner finds that Racca teaches this limitation. We have reviewed the Examiner’s claim interpretation and the cited portions of the references relied upon by the Examiner to support the finding that Racca teaches the disputed claim limitation. We concur with the Examiner’s claim interpretation and findings and adopt them as our own. Further, we note that even if the claim were construed, as Appellants argue, such that the string value include one of the listed words, we do not find that the limitation would define over the teachings of Racca as the limitation would not be afforded patentable weight. The limitations directed to the use of specific words in a string are merely labels on the information content 3 Appeal 2016-001773 Application 10/907,034 (i.e., analogous to printed matter). Our reviewing court has said “once it is determined that the limitation is directed to printed matter, one must then determine if the matter is functionally or structurally related to the associated physical substrate, and only of the answer is ‘no’ is the printed matter owed no patentable weight.” In re Distefano 808 F.3d. 845, 851 (Fed Cir. Dec. 17, 2015). Independent claim 1 and 11 do not recite a functional or structural relationship between the words “solution,” “conversation,” “task” and “data” and the method/computer readable storage medium (further the Examiner has shown that Racca teaches labels which correspond to similar functions). Thus, Appellants’ arguments have not persuaded us of error in the Examiner’s rejection of claim 1 and we sustain the Examiner’s rejection of independent claims 1,11 and dependent claims 3 through 30, 32 through 35, 42, and 43 which are grouped with claim 1. On pages 12 and 13 of the Appeal Brief, Appellants address the rejections of claims 31 and 36 through 41, by arguing that the rejections are in error for the same reasons as argued with respect to independent claims 1 and 11. As discussed above we are not persuaded of error in the rejections of claims 1 and 11 accordingly, we sustain the Examiner’s rejections of claims 31 and 36 through 41. DECISION The decision of the Examiner to reject claims 1,11, and 23 through 43 is affirmed. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv). 4 Appeal 2016-001773 Application 10/907,034 AFFIRMED 5