Ex Parte Chessell et al

Patent Trial and Appeal Board

Oct 31, 2016

12266737 (P.T.A.B. Oct. 31, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/266,737 11/07/2008
46320 7590 11/02/2016
CRGOLAW
STEVEN M. GREENBERG
7900 Glades Road
SUITE 520
BOCA RATON, FL 33434
FIRST NAMED INVENTOR
Amanda E. Ches sell
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.
GB920070143US1 (478) 4706
EXAMINER
VICARY, KEITH E
ART UNIT PAPER NUMBER
2182
NOTIFICATION DATE DELIVERY MODE
11/02/2016 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):
docketing@crgolaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte AMANDA E. CRESSELL and
ANDREW J. STANFORD-CLARK1
Appeal2015-006151
Application 12/266,737
Technology Center 2100
Before MICHAEL J. STRAUSS, DANIEL N. FISHMAN, and
JAMES W. DEJMEK, Administrative Patent Judges.
STRAUSS, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's
Final Rejection of claims 1, 4--8, 18, and 20-28. Claims 2, 3, 9-17, and 19
have been cancelled. App. Br. 15, 17-18. We have jurisdiction over the
remaining pending claims under 35 U.S.C. § 6(b).
We affirm.
1 Appellants identify International Business Machines Corporation as the
real party in interest. App. Br. 2.
Appeal2015-006151
Application 12/266,737
STATEMENT OF THE CASE
Introduction
Appellants' invention is directed to modifying a message upon
determining the message contains a scope sensitive field. Abstract.
Claim 1 is representative of the subject matter on appeal and is
reproduced below with the disputed limitations emphasized in italics:
1. A method for modifying a message to account for scope
sensitive fields of the message, the method comprising:
receiving the message from a first entity directed to a second
entity over a computer communications network, the message
comprising data fields with at least one data field able to be populated
with content of different levels of detail including a first level of detail
appropriate to the first entity;
determining, by a computer, whether the at least one data field
of the message includes a scope sensitive field by accessing a data
schema associated with the message, the data schema indicating
which of the data fields of the message are scope sensitive;
responsive to determining that the at least one data field of the
message contains the scope sensitive field, transforming the scope
sensitive field by populating the scope sensitive field with content of a
second level of detail appropriate to the second entity; and,
transmitting the message including the transformed scope
sensitive field to the second entity.
The Examiner's References and Rejections
Claims 1, 4--8, 18, and 20-28 stand rejected under 35 U.S.C. § 112,
first paragraph, as failing to comply with the written description
requirement. Final Act. 3-8.
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Claims 1, 4--8, 18, and 20-28 stand rejected under 35 U.S.C. § 112,
second paragraph, as being indefinite for failing to particularly point out and
distinctly claim the subject matter that the applicant regards as the invention.
Final Act. 8-10.
Claims 1, 4--6, 8, 18, 20-22, and 24--26 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Abjanic et al. (US 2003/0069975 Al;
Apr. 10, 2003) ("Abjanic") and Phippen et al. (US 2001/0049743 Al;
Dec. 6, 2001) ("Phippen"). Final Act. 10-20.
Claims 7 and 23 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Abjanic, Phippen, and Williams (US 5,251,314; Oct. 5,
1993). Final Act. 20-23.
Claims 27 and 28 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Abjanic, Phippen, and Birk et al. (US 2005/0278790 Al;
Dec. 15, 2005) ("Birk"). Final Act. 23-25.
ANALYSIS2
Rejections under 35 U.S.C. § 112,firstparagraph
Claims 1, 4, 18, 20
Claim 1 recites, inter alia, "data fields with at least one data field able
to be populated with content of different levels of detail" and "the data
schema indicating which of the data fields of the message are scope
sensitive." The Examiner finds these features are not supported by the
2 In this Opinion, we refer to Appellants' Appeal Brief ("App. Br.," filed
January 21, 2015); Appellants' Reply Brief ("Reply Br.," filed May 29,
2015); the Final Office Action ("Final Act.," mailed August 28, 2014); and
the Examiner's Answer ("Ans.," mailed April 7, 2015).
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Application 12/266,737
original disclosure and, therefore, claims 1, 4--8, 18, and 20-28 fail to
comply with the written description requirement. Final Act. 3--4. In
particular, the Examiner interprets these two recitations as collectively
encompassing data fields that are not able to be populated with content of
different levels of detail when the number of "at least one data field" is not
equal to the number of "data fields." See Ans. 3--4; see also Final Act. 4. In
other words, the Examiner's findings assume if there is only "at least one"
data field able to be populated as claimed, there must be some other fields
that are not able to be so populated and the Examiner finds no support for
such fields. The Examiner concludes, "one skilled in the art would not
reasonably conclude based on Figure 4a that the inventor had possession of
data fields which are not able to be populated with content of different levels
of detail." Ans. 3 (emphasis added). Appellants contend support for the two
limitations at issue is found in Figure 4a and paragraphs 10, 37, and 38 of
the Specification. App. Br. 6; Reply Br. 2-3).
We are persuaded by Appellants' contention. Figure 4a of
Appellants' Specification is reproduced below.
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Application 12/266,737
Schema
Inventory Record
Item: char
Code: int
Loe:: Aisle
Shelf
Slot
Exp: Date
Time
Figure 4a
int
int
int
dd/mm/yy
hh:mm~ss
--1
!
!
Appellants' Figure 4a above depicts a schema of an inventory record, the
record comprising four fields two of which are scope sensitive fields
(''SSF").
Paragraph 37 of Appellants' Specification, in describing Figure 4a,
provides an example of an inventory record comprising "two fields which
are denoted as scope sensitive fields (SSF) ... the location (loc) and Expiry
(Exp) fields." Thus, even under the Examiner's interpretation of claim 1 as
requiring fields able to be populated as recited as well as fields not able to be
so populated, we find paragraph 37 of the Specification supports the
limitations at issue. We conclude the Examiner's reasoning regarding the
written description support for claim 1 is in error.
For the reasons discussed supra, and on the record before us, we
reverse the Examiner's§ 112 rejection of independent claim 1. For similar
reasons, we do not sustain the Examiner's§ 112 rejection of independent
claim 18, which recites similar limitations, and dependent claims 4 and 20,
which were rejected based on their dependency from rejected claims 1 and
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18.
Claims 5--8 and 21-24
The Examiner finds "determining whether the at least one data field of
the message includes a tracking number," as recited in claim 5, is not
supported by the original disclosure. Final Act. 4. Appellants contend
support for the disputed limitation is found in paragraph 58 of the
Specification. App. Br. 6.
We are not persuaded by Appellants' contention. Appellants'
Specification recites that "[i]n the disclosed embodiment, a tracking number
is assigned to the message itself. In an alternative embodiment, a different
identifier is assigned to each SSF." Spec. i-f 58 (emphasis added). The
Examiner argues assigning a tracking number to the at least one data field of
the message is not including a tracking number to the at least one data field
of the message; and concludes paragraph 58 of the Specification does not
support the disputed "including" limitation of claim 5 under the written
description require of under 35 U.S.C. § 112, first paragraph. Because
Appellants have not provided sufficient evidence and/or a persuasive line of
technical reasoning explaining why assigning a tracking number supports
including a tracking number, we agree with the Examiner.
Appellants further contend, for the first time in the Reply Brief, that
the disputed limitation is also found in paragraph 51 of the Specification.
Reply Br. 5. We decline to consider these arguments, because Appellants do
not provide a basis that this argument is responsive to the Examiner's
Answer or show good cause for its untimely presentation. See 37 C.F.R.
§ 41.41 (b )(2) (2013) ("Any argument raised in the reply brief which was not
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Application 12/266,737
raised in the appeal brief, or is not responsive to an argument raised in the
examiner's answer ... will not be considered by the Board for purposes of
the present appeal, unless good cause is shown."). Furthermore, even if
timely presented, we similarly find paragraph 51 fails to provide the
requisite written description support of the disputed "including" limitation
for the reason discussed supra with respect to paragraph 58 of the
Specification.
For the reasons discussed supra, we sustain the Examiner's rejection
of claim 5 under 35 U.S.C. § 112, first paragraph. For similar reasons, we
sustain the Examiner's § 112 rejection of claim 21 and dependent claims 6-8
and 22-24, which were not argued separately.
Claims 25 and 26
Claim 25 recites, in pertinent part, "responsive to determining that the
at least one data field of the message contains the scope sensitive field
transforming the scope sensitive field by populating the scope sensitive field
with content of the second level of detail appropriate to the second entity"
(hereinafter the "first determining step") "comprises: determining a message
type of the message" (hereinafter the "second determining step"). The
Examiner finds these limitations are not supported by the original disclosure.
Final Act. 6. In response, Appellants contend support for the first and
second determining steps is found in paragraph 39 of the Specification.
App. Br. 7.
We are not persuaded of Examiner error. Specifically, the Examiner
finds support for the first determining step is found in Figure 5, steps 140
and 150. Final Act. 6. The Examiner further finds support for the second
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Application 12/266,737
determining step is found in Figure 5, step 110. Id. The Examiner finds step
110 occurs before steps 140 and 150 and, therefore, the second determining
step is not responsive to the first determining step. Id. Appellants do not
provide sufficient evidence or argument to persuasively rebut these findings.
Appellants further contend, for the first time in the Reply Brief, that
the first and second determining steps are also found in paragraphs 3 6 and
42 of the Specification. Reply Br. 5---6. Appellants argue:
[The] Examiner further appears to suggest ... that it is the order
of the claimed limitations that [the] Examiner finds no support
[sic]. But the limitations of the claims 25 and 26 do not necessary
[sic] require a specific order, except for the claimed limitation
directed to locating a transformation that is appropriate for the
(determined) message type.
Id. at 6 n.4. This contention is untimely and waived. See 37 C.F.R.
§ 41.41(b)(2) (2013) Furthermore, even if timely presented, the argument is
unpersuasive. For the second determining limitation to be responsive to the
first disputed limitation, as claimed, it follows that the second determining
step occur after the first determining step. This interpretation requiring the
particular sequence of steps is supported by Figure 5 reproduced below:
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Application 12/266,737
I
Receive message
I Identify message type
Access message
schema
100
Access transformation 140
Apply transformation to ~150
SSF
! Transmit
i message
c stop }--.. ---
1
_ __,TC·~·~:
Figure 5
Figure 5, 100---160 depicts the steps "of the operation of the present
invention, in accordance with one embodiment." Spec. i-f 35. "Identifier 60
identifies the message type at step 110." Id. at i-f 36. Further, "transforming
component 80 accesses the appropriate transformation at step 140 and
applies that transformation to the scope sensitive field of the received
message at step 150." Id. at i-f 42. Thus, according to Appellants'
disclosure, the second determining step occurs before the first determining
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step, not after and, therefore, the second determining step cannot be
responsive to the first determining step as claimed.
For the reasons discussed supra, Appellants' arguments are not
persuasive and we sustain the Examiner's rejection of claim 25 under 35
U.S.C. § 112, first paragraph. For similar reasons, we sustain the
Examiner's rejection of claim 26, which recites a similar limitation and was
not argued separately.
Claims 27 and 28
Claim 27 recites, inter alia, "the data schema indicates which of the
data fields of the message are scope sensitive by flagging the data fields of
the message that are scope sensitive using a stereotype of
'scope_sensitive_location' ." The Examiner finds this recitation is not
supported by the original disclosure. Final Act. 7-8. In particular, the
Examiner finds paragraph 38 of the Specification discloses that SSFs related
to location "are flagged using the stereotype of 'scope_sensitive_location'
rather than any or all scope sensitive data fields that aren't related to
location." Id. at 7; see also Ans. 11-12. Appellants contend support for the
disputed limitation at issue is found in paragraph 38 of the Specification.
App. Br. 7-8; see also Reply Br. 7.
We are persuaded by Appellants' contention. Paragraph 3 8 of the
Specification provides "if the event schema was specified in Unified Markup
Language (UML ), a scope-sensitive location field could be flagged using a
stereotype of <>. This indicates that the
information within the location field is scope sensitive." Spec. i-f 38. Thus,
we find paragraph 3 8 of the Specification supports, upon flagging data
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location fields of the message using a stereotype of
"scope_sensitive_location," indicating which of the data fields of the
message are scope sensitive.
For the reasons discussed supra, we reverse the Examiner's rejection
of claim 27 under 35 U.S.C. § 112, first paragraph. For similar reasons, we
do not sustain the Examiner's rejection of claim 28, which recites a similar
limitation.
Rejection under 35 U.S. C. § 112, second paragraph
Claim 1 recites, in part, "data fields with at least one data field able to
be populated with content of different levels of detail." The Examiner finds
this recitation "is indefinite as to whether [the at least one data field] is a scope
sensitive field, or whether there is some criteria by which a data field is 'able
to be' populated with content of different levels of detail even if it is not
actually a scope sensitive field." Final Act 8-9. Appellants contend "the
claims when read in light of the specification would allow a hypothetical
person possessing the ordinary level of skill in the pertinent art to understand
the metes and bounds of the invention." App. Br. 9-10. In particular, the
Specification conveys to one skilled in the relevant art that some data fields
may or may not change depending on what is appropriate for a specific entity.
Reply Br. 3--4 (citing Figure 4a; Spec. i-fi-130-34, 37).
"[B]readth is not to be equated with indefiniteness." In re Miller, 441
F.2d 689, 693 (CCPA 1971). "A broad claim is not indefinite merely
because it encompasses a wide scope of subject matter provided the scope is
clearly defined." MPEP § 2173.04. We find "at least one data field able to
be populated with content of different levels of detail," as recited in claim 1,
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concerns any type of criteria necessary such that the at least one data field is
able to be populated with content of different levels of detail. We further
find whether the criteria necessary is an SSF, other required element(s),
neither, or both is a matter of claim breadth, not indefiniteness.
"The test for definiteness is whether one skilled in the art would
understand the bounds of the claim when read in light of the specification."
Miles Laboratories, Inc. v. Shandon Inc., 997 F.2d 870, 875 (Fed. Cir.
1993); see also Orthokinetics, Inc. v. Safety Travel Chairs, Inc., 806 F .2d
1565, 1576 (Fed. Cir. 1986). We agree with Appellants, in light of the
Specification, one skilled in the art would understand the "at least one data
field is able to be populated with content of different levels of detail
including a first level of detail appropriate to a first entity." Reply Br. 4.
For the reasons discussed supra, we do not sustain the Examiner's rejection
of claim 1. For similar reasons, we do not sustain the Examiner's rejection
of claim 18; which recites a similar limitation. Additionally; we do not
sustain the Examiner's rejection of dependent claims 4--8 and 20-28.
Rejection under 35 U.S. C. § 103
We have reviewed the Examiner's rejections in light of Appellants'
arguments the Examiner has erred. App. Br. 10-14. We disagree with
Appellants' conclusions regarding the obviousness rejection. We adopt as
our own: (1) the findings and reasons set forth by the Examiner in the
Action from which this appeal is taken (Final Act. 10-27), and (2) the
reasons set forth by the Examiner in the Answer in response to arguments
made in Appellants' Appeal Brief (Ans. 15-22). We highlight and address
specific findings and arguments below.
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Appellants contend the Examiner erred in finding Abjanic teaches or
suggests "determining, by a computer, whether the at least one data field of
the message includes a scope sensitive field by accessing a data schema
associated with the message," as recited in claim 1. In particular, Appellants
assert Abjanic teaches a received message in a specific format (e.g., a
TypeAxml format) requires transformation to a different format (e.g., a
TypeBxml format) according to a transformation template. App. Br. 11-13
(citing Abjanic i-f 100). Appellants argue Abjanic's transformation template
transforms the entire message from the TypeAxml format to the TypeBxml
format and "[t]here is no teaching in Abjanic that the transformation
template is used to determine whether a message contains scope sensitive
fields." Reply Br. 12; see also App. Br. 13. Appellants further argue,
although the example provided in Abjanic converts some elements (e.g.,
"Qty" and "Description") and not other elements (e.g., "From," "To," and
"Partnumber"); the "stylesheet accounts for each line of the TypeAxml
format message, i.e. the entire message and, therefore, converts the entire
TypeAxml format message to TypeBxml." Reply Br. 12 (citing Abjanic
,-r,-r 102-108).
We are not persuaded the Examiner erred. The Examiner finds
Abjanic teaches or suggests determining whether at least one data field of a
message includes an SSFby accessing a data schema associated with the
message. Final Act. 11 (citing Abjanic i-fi-1 100, 102-103). As the Examiner
explains, Abjanic teaches a transformation template that indicates
transformation for some of the elements from the TypeAxml format, and no
transformation for other elements from the TypeAxml format. Id. at 11.
Abjanic, in disclosing the transformation of some elements from the
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TypeAxml format to the TypeBxml format, and not other elements, teaches
or suggests a determination of which elements need and do not need a
transformation. Thus, the transformation of some elements from the
TypeAxml format to the TypeBxml format suggests determining whether an
element (e.g., element "") (the claimed "at least one data field") of
the provided message in the TypeAxml format (the claimed "message")
includes an element that needs to be converted to the TypeBxml format (the
claimed "scope sensitive field") by accessing a transformation template (the
claimed "data schema") associated with the provided message in the
TypeAxml format.
For the reasons discussed supra, we are unpersuaded of Examiner
error. Accordingly, we sustain the Examiner's rejection of independent
claim 1 and, for similar reasons, the rejection of independent 18, which
recites similar limitations and which was not argued separately.
Additionally; we sustain the Examiner's rejections of dependent claims 4--8
and 20-28, which were not argued separately. See App. Br. 10-14.
DECISION
We reverse the Examiner's decision to reject claims 1, 4, 18, 20, 27,
and 28 under 35 U.S.C. § 112, first paragraph.
We affirm the Examiner's decision to reject claims 5-8 and 21-26
under 35 U.S.C. § 112, first paragraph.
We reverse the Examiner's decision to reject claims 1, 4--8, 18, and
20-28 under 35 U.S.C. § 112, second paragraph.
We affirm the Examiner's decision to reject claims 1, 4--8, 18, and
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20-28 under 35 U.S.C. § 103(a).
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 41.50(±).
AFFIRMED
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