Ex Parte Chatenay

Patent Trial and Appeal BoardJun 19, 2014

11738719 (P.T.A.B. Jun. 19, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE ________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ________________ Ex parte DAVID CHATENAY ________________ Appeal 2012-004297 Application 11/738,719 Technology Center 2400 ________________ Before MICHAEL L. HOELTER, ANNETTE R. REIMERS, and BRANDON J. WARNER, Administrative Patent Judges. HOELTER, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE This is a decision on appeal, under 35 U.S.C. § 134(a), from a final rejection of claims 1–20. App. Br. 4. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. THE CLAIMED SUBJECT MATTER The disclosed subject matter relates to “a system and method with which a single account can be used to access multiple sites of a given organization and with which the same customer data can be directly accessed using any of those sites.” Spec. 3:5–7. Independent method claim 1 is illustrative of the claims on appeal and is reproduced below: Appeal 2012-004297 Application 11/738,719 2 1. A method for sharing customer assets, the method comprising: receiving with a first regional service universal login information provided by a customer, the first regional service comprising one of multiple regional services that each comprises a distinct version of a website offering a network- based service that is specific to a particular geographical region for which the website is being offered; accessing a central database with the first regional service to verify the universal login information, wherein the central database is accessible to each of the multiple regional services; and accessing the central database with the first regional service to access shared customer assets that are associated with the customer, wherein the shared customer assets stored in the central database are accessible to each of the multiple regional services to enable the customer to access different versions of the website with the universal login information. REFERENCES RELIED ON BY THE EXAMINER Rawat US 7,330,876 B1 Feb. 12, 2008 O’Brien US 7,337,207 B2 Feb. 26, 2008 THE REJECTION ON APPEAL Claims 1–20 are rejected under 35 U.S.C. § 103(a) as being unpatentable over O’Brien and Rawat. Ans. 5. ANALYSIS Independent claim 1 includes a limitation directed to “one of multiple regional services that each comprises a distinct version of a website offering a network-based service that is specific to a particular geographical region.” App. Br. 16, Claims App’x. Independent claims 11 and 16 contain substantively similar, albeit not exactly the same, limitations. App. Br. 18, 19, Claims App’x. The Examiner references O’Brien as disclosing this Appeal 2012-004297 Application 11/738,719 3 limitation. Ans. 5. The Examiner also identifies Appellant’s Specification as indicating that this limitation “is typical and commonly known in the art.” Ans. 5, referencing Spec. 1:6 to 2:10. Appellant’s Specification states that “[o]ften times, organizations support multiple versions of a web site associated with a given online service, with each version being specific to a different geographical region. For example, a single enterprise may support a separate web site in each of multiple countries around the globe.” Spec. 1:6–9, see also Ans. 5, 9. The Examiner deems this, and other portions of Appellant’s Specification, as “AAPA (applicant admitted prior art)” but does not include or list AAPA in the statement of the rejection. Ans. 4, 5. Appellant addresses the Examiner’s reference to O’Brien regarding this limitation and contends that “[n]owhere does O’Brien teach or even suggest a first regional service comprising one of multiple regional services that each comprises a distinct version of a website offering a network-based service that is specific to a particular geographical region for which the website is being offered.” App. Br. 12; see also Reply Br. 5. Appellant repeats this contention regarding Rawat. App. Br. 13. Appellant further addresses Rawat, contending that “Rawat teaches that a universal username and password enable a user to log into different websites, not different versions of a website. Two distinct websites are not different versions of a website.” App. Br. 13. Each of these arguments presented by Appellant is directed only to the two stated references of record, namely O’Brien and Rawat. App. Br. 12– 13. Appellant does not dispute that the indicated AAPA fails to teach this limitation, that AAPA is not combinable with O’Brien and Rawat, or that the Examiner’s reason to combine is faulty. Instead, the issue Appellant addresses is the Examiner’s failure to formally reference AAPA as a ground Appeal 2012-004297 Application 11/738,719 4 of rejection. See Reply Br. 6. To be more specific, Appellant contends that “acknowledging the disclosure of the Background section of the instant application is not the same as rejecting a feature recited in the claims based on the disclosure of the Background section of the instant application. As such, the Examiner fails to reject claim 1 using the disclosure of the Background section of the instant application.” Reply Br. 6. The Examiner acknowledges/admits “that neither O’Brien nor Rawat is separately relied [on] by the examiner to show the above argued limitation.” Ans. 8, see also Reply Br. 4. Instead, as “support for the examiner’s assertion, the examiner, as set forth in the Office Action, once again point[s] to the appellant’s admitted prior art” where such is taught. Ans. 8–9. On the topic of not listing a reference relied upon, our reviewing court in In re Hoch (428 F.2d 1341 (CCPA 1970)) affirmed a decision by the Board that approved the use of non-referenced art but stated that if we did not find the rejections based solely on [the referenced art] to be sound, we might well feel constrained to reverse the decision of the board. Where a reference is relied on to support a rejection, whether or not in a “minor capacity,” there would appear to be no excuse for not positively including the reference in the statement of the rejection. Hoch, 428 F.2d at 1342, n.3 (emphasis added). The omission here by the Examiner of not including AAPA in the statement of the rejection suggests that Appellant was not afforded a fair opportunity to react to the thrust of the Examiner’s rejection. See In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011) (“It is well-established that the Board is free to affirm an examiner’s rejection so long as ‘appellants have had a fair opportunity to react to the thrust of the rejection.’”) (citing In re Kronig, 539 F.2d 1300, 1302–03 Appeal 2012-004297 Application 11/738,719 5 (CCPA 1976)). Accordingly, the Examiner’s failure to list AAPA in the statement of the rejection, when the Examiner clearly relies on the same, suggests that Appellant was not afforded a fair opportunity to respond to the rejection. Appellant also sets forth a contention premised on “assuming for the sake of argument that the Examiner did use the disclosure in the Background section of the instant application to reject the features recited above in claim 1.” Reply Br. 6. In this contention, Appellant asserts that the referenced AAPA “do[es] not have ‘universal login information’ as recited in claim 1.” Reply Br. 6. However, the Examiner did not rely on AAPA for teaching universal login information; but instead, the Examiner relied on the teachings of O’Brien and Rawat for this. Ans. 5–6. Appellant’s contention in this regard is not persuasive. Appellant further addresses O’Brien regarding the limitation directed to verification of the login information (Reply Br. 7), but Appellant does not address O’Brien’s teaching that “[p]assword protection or other security protocols may be used to limit or discriminate access to the user’s files.” O’Brien 4:39–40; Ans. 5. In other words, Appellant does not indicate how O’Brien’s teaching of password protection is a failure to teach verification of login information. Furthermore, Appellant recites the limitation in question and succinctly contends that O’Brien does “not . . . verify login information.” Reply Br. 7. In a similar situation, where the limitation in question was recited and an assertion that the cited art lacked this teaching was made, our reviewing court stated 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.” In re Lovin, 652 Appeal 2012-004297 Application 11/738,719 6 F.3d 1349, 1357 (Fed. Cir. 2011). In view of the above, Appellant’s contention is not persuasive. Appellant also addresses O’Brien by contending that this reference does not disclose “the ‘central database’ that ‘is accessible to each of the multiple regional services.’” Reply Br. 7. The Examiner relies on O’Brien for disclosing “accessing the central database” but relies on AAPA for finding that regional services are “typical and commonly known in the art.” Ans. 5. However, as indicated above, AAPA is not included in the statement of the rejection, which would have provided Appellant with an opportunity to react to the thrust of the Examiner’s rejection. Appellant further addresses Rawat’s “central database” and its accessibility to “multiple regional services” (Reply Br. 8), but the Examiner did not rely on Rawat for such disclosure and, as such, Appellant’s contention is not persuasive. See Ans. 5–6. Appellant additionally, and separately, addresses the Examiner’s rejection of dependent claim 4. App. Br. 13–14. Here, Appellant contends that “[n]owhere does O’Brien teach or even suggest that each regional service hosts a regional web site that is specific to a particular geographic region.” App. Br. 13–14. It is clear from the Examiner’s Answer that the Examiner relies, at least partially, on AAPA for this teaching. Ans. 6, 9. We reach a similar conclusion regarding Appellant’s separate, and additional, argument regarding dependent claims 5, 13, and 19. App. Br. 14. For these three claims, Appellant contends that “[n]owhere does O’Brien teach or even suggest a user accessing network based services that are particular to different countries.” App. Br. 14. As above, it is clear from the Examiner’s Answer that the Examiner relies, at least partially, on AAPA for this teaching. Ans. 6, 7, 9. Appeal 2012-004297 Application 11/738,719 7 In summary, based on the record before us, and in view of the omission of AAPA in the statement of the rejection as discussed supra, and considering our reviewing court’s position in the matter as discussed in Hoch and Jung, we reverse the Examiner’s rejection of claims 1–20. DECISION The Examiner’s rejection of claims 1–20 is reversed. REVERSED mls