Ex Parte Collins

Patent Trial and Appeal BoardAug 29, 2017

13112159 (P.T.A.B. Aug. 29, 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. 13/112,159 05/20/2011 Christopher Craig Collins DC-18377 6944 33438 7590 08/31/2017 TERRILE, CANNATTI, CHAMBERS & HOLLAND, LLP P.O. BOX 203518 AUSTIN, TX 78720 EXAMINER TANK, ANDREW L ART UNIT PAPER NUMBER 2142 NOTIFICATION DATE DELIVERY MODE 08/31/2017 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): tmunoz @ tcchlaw. com kchambers@tcchlaw.com heather@tcchlaw.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte CHRISTOPHER CRAIG COLLINS Appeal 2017-005690 Application 13/112,159 Technology Center 2100 Before ST. JOHN COURTENAY III, LARRY J. HUME, and JOYCE CRAIG, Administrative Patent Judges. COURTENAY, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE This is an appeal under 35 U.S.C. § 134(a) from the Examiner’s final rejection of claims 1, 3—11, and 13—20. Claims 2 and 12 are cancelled. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. Appeal 2017-005690 Application 13/112,159 The Invention Appellant’s disclosed and claimed invention relates to a system and method for collaboratively configuring an information handling system. Spec. 11. Representative Claim 1. A system for collaboratively configuring an information handling system, comprising: a repository of product configuration data; a first configuration of an information handling system, the first configuration comprising a first set of product configuration data; [LI] a user interface configured to display the first configuration and further configured to receive a first set of user input data corresponding to a first set of configuration modification data and a second set of user input data corresponding to a second set of configuration modification data, the first and second sets of user input data respectively corresponding to a first and second user, the first and second sets of product configuration modification data facilitating collaborative configuration of the information handling system; and processing logic configured to process the first and second sets of product configuration modification data to generate a second configuration of the information handling system, the second configuration displayed within the user interface and comprising a second set of product configuration data; and wherein [L2] the first and second configurations are displayed concurrently within the user interface, 2 Appeal 2017-005690 Application 13/112,159 [L3] the first and second configurations being displayed within respective first and second configuration sub-windows; the first and second configuration sub-windows comprise graphical representations of the first configuration and the second configurations, respectively; and, [L4] the first and second configuration sub-windows comprise operational and other component information for the first configuration and the second configuration, respectively, the operational and other component information comprising at least one of performance data, power consumption data, heat dissipation data, noise level data, weight data, and physical dimension data. (Bracketed and lettered limitations LI—L4 are contested.) Rejection Claims 1, 3—11, and 13—20 stand rejected under 35 U.S.C. § 103(a), as being obvious over the combined teachings and suggestions of Chen et al. (US 2010/0299616 Al, publ. Nov. 25, 2010) (hereinafter “Chen”), Hebbar et al. (US 2014/0032489 Al, publ. Jan. 30, 2014) (hereinafter “Hebbar”), and Wolff (US 2004/0143477 Al, publ. July 22, 2004). Grouping of Claims Based on Appellant’s arguments (App. Br. 3—4), we decide the appeal of the rejection of independent claims 1 and 11 (not argued separately) on the basis of representative claim 1; we decide the appeal of dependent claims 5 and 15 (not argued separately) on the basis of representative claim 5; we decide the appeal of dependent claims 7 and 17 (not argued separately) on the basis of representative claim 7. See App. Br. 5. To the extent Appellant has not advanced separate, substantive arguments for 3 Appeal 2017-005690 Application 13/112,159 remaining dependent claims 3, 4, 6, 8—10, 13, 14, 16, and 18—20, such arguments are waived. See 37 C.F.R. § 41.37(c)(l)(iv). ANALYSIS We have considered all of Appellant’s arguments and any evidence presented. We find Appellant’s arguments regarding the obviousness rejection unpersuasive, for the reasons discussed infra. We adopt as our own: (1) the findings and legal conclusions set forth by the Examiner in the Final Office Action (6—14), from which this appeal is taken, and (2) the findings, legal conclusions, and explanations set forth in the Answer (2—8) in response to Appellant’s arguments. We highlight and address specific findings and arguments for emphasis in our analysis below. Representative Independent Claim 1 Issue: Under § 103, did the Examiner err by finding the cited combination of Chen, Hebbar, and Wolff would have taught or suggested contested limitations LI—L4, within the meaning of representative claim l?1 Regarding limitation LI of claim 1, Appellant contends Chen’s teaching of “allowing a friend to enter changes to a footwear design is not a 1 We give the contested claim limitations the broadest reasonable interpretation consistent with the Specification. See In re Morris, 111 F.3d 1048, 1054 (Fed. Cir. 1997). See, e.g., Spec. 127 (“While the present invention has been depicted, described, and is defined by reference to particular embodiments of the invention, such references do not imply a limitation on the invention, and no such limitation is to be inferred. . . . The depicted and described embodiments are examples only, and are not exhaustive of the scope of the invention.”); Spec. 129 (“Consequently, the invention is intended to be limited only by the spirit and scope of the appended claims, giving full cognizance to equivalents in all respects.”) (emphasis added). 4 Appeal 2017-005690 Application 13/112,159 disclosure or suggestion of first and second sets of product configuration modification data which facilitates collaborative configuration of an information handling system, as required by claims 1 and 11(App. Br. 4). We are not persuaded by Appellant’s argument. We find a preponderance of the evidence supports the Examiner’s findings, because we find Chen’s collaborative design session (Chen, 144), where multiple users input product customization, would have taught or at least suggested contested limitation LI (“the first and second sets of product configuration modification data facilitating collaborative configuration of the information handling system”), as recited in claim 1. (Final Act. 7—8, Ans. 3—5, Chen, 144). Specifically, we find Chen’s collaborative designs, as shown in Figures 7—9, depicting participants User A’s and Friend B’s actions, would have taught, or at least suggested, contested limitation LI. Id. Regarding limitation L2 of claim 1, Appellant contends: “Chen merely discloses a single configuration as compared to the claimed display of first and second configurations.” (App. Br. 4). We are not persuaded by Appellant’s argument. We find a preponderance of the evidence supports the Examiner’s finding, because we find Hebbar’s viewing engine 807 that allows the user, working on a collaborative document, to see multiple views concurrently in one window (1 55), would have taught, or at least suggested, contested limitation L2, wherein the first and second configurations are displayed concurrently within the user interface, as recited in claim 1. (See Hebbar, || 47, 55; Final Act. 8-9). Moreover, we find such plural elements (first and second configurations being displayed concurrently) would have merely been a 5 Appeal 2017-005690 Application 13/112,159 “predictable use of prior art elements according to their established functions.” KSRInt’l Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007). See also n.3, infra (regarding non-functional descriptive material (NFDM) intended for human perception). Regarding limitation L3 of claim 1, Appellant contends: “nowhere within the cited portion of Chen (or anywhere else within either Chen or Wolff) is there any disclosure or suggestion of the first and second configurations being displayed within respective first and second configuration sub-windows, as required by claims 1 and 11.” (App. Br. 4). We are not persuaded by Appellant’s argument, because Appellant is arguing the references separately.2 The Examiner cites Hebbar for teaching or suggesting limitation L3, “being displayed within respective first and second configuration sub-windows,” as recited in claim 1. (Final Act. 8—9). Regarding limitation L4 of claim 1, Appellant further contends the recited types of data are not disclosed or suggested by the cited references. (App. Br. 5). We are not persuaded by Appellant’s contention (id.) because it merely recites the claim language, without anything more. See 37 C.F.R. § 41.37(c)(l)(iv)(“A statement which merely points out what a claim recites will not be considered an argument for separate patentability of the claim.”). Furthermore, we find the types of data recited in limitation L4 (which are 2 One cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986). 6 Appeal 2017-005690 Application 13/112,159 intended for human perception) are non-functional descriptive material, which we do not give patentable weight.3 We note, regarding claim 1 (and claims 5 and 7, infra), that Appellant only advances nominal arguments in the principal Brief (3—5), which we find: (1) merely assert the recited claim language is not taught or suggested by the cited combination, and, (2) do not substantively traverse the Examiner’s findings or point to any specific evidence in the record in support.4 Therefore, on this record, and based upon a preponderance of the evidence, we are not persuaded the Examiner erred. Accordingly, we sustain the rejection of independent representative claim 1. Associated grouped independent claim 11 falls with claim 1. See Grouping of Claims supra. 3 See Ex parte Nehls, 88 USPQ2d 1883, 1889 (BPAI 2008) (precedential) (“[T]he nature of the information being manipulated does not lend patentability to an otherwise unpatentable computer-implemented product or process.”). The Manual of Patent Examining Procedure (MPEP) guides: “where the claim as a whole is directed [to] conveying a message or meaning to a human reader independent of the intended computer system, and/or the computer-readable medium merely serves as a support for information or data, no functional relationship exists.” MPEP § 2111.05 (III.) (9th Ed., Rev. 07.2015, Last Revised Nov. 2015). 4 See 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.” See also 37 C.F.R. § 41.37(c)(l)(iv). 7 Appeal 2017-005690 Application 13/112,159 Representative Dependent Claims 5 and 7 Regarding dependent claims 5 and 7, Appellant merely contends “nowhere within” the cited references “is there any disclosure or suggestion of’ the limitations of claims 5 and 7. (App. Br. 5). We are not persuaded by Appellant’s contentions {id.), because Appellant does not advance a substantive argument traversing the Examiner’s specific findings. See n.4, supra. Furthermore, regarding claim 5 (which depends from claim 1) and claim 7 (which depends indirectly from claim 5), we conclude the claimed customer, a third party acting on behalf of a customer, an employee of the manufacturer of the information handling system, and a third party acting on behalf of the manufacturer of the information handling system, are each outside the scope of the recited “system for collaboratively configuring an information handling system” (i.e., the apparatus of claim 1, from which claim 5 directly depends), (emphasis added). “[AJpparatus claims cover what a device is, not what a device does.” Hewlett-Packard Co. v. Bausch &Lomb Inc., 909 F.2d 1464, 1468 (Fed. Cir. 1990). Moreover, a human being cannot constitute a means. Default Proof Credit Card System, Inc. v. Home Depot U.S.A., Inc., 412 F.3d 1291, 1300 (Fed. Cir. 2005) (citing In re Prater, 415 F.2d 1393, 1398 (CCPA 1969)). Therefore, on this record, and based upon a preponderance of the evidence, we are not persuaded the Examiner erred. Accordingly, we sustain the rejection of representative dependent claims 5 and 7. Grouped claim 15 falls with claim 5, and grouped claim 17 falls with claim 7. See Grouping of Claims, supra. 8 Appeal 2017-005690 Application 13/112,159 Because Appellant does not advance separate, substantive arguments for the rejection of claims 3, 4, 6, 8—10, 13, 14, 16, and 18—20, we sustain the rejection of these remaining dependent claims. See 37 C.F.R. § 41.37(c)(l)(iv). Reply Brief To the extent Appellant may advance new arguments in the Reply Brief 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 Appellant has not shown. See 37 C.F.R. § 41.41(b)(2). Conclusion For at least the aforementioned reasons, we find a preponderance of the evidence supports the Examiner’s underlying factual findings and ultimate legal conclusion of obviousness regarding all contested issues on appeal. DECISION We affirm the Examiner’s decision rejecting claims 1, 3—11, and 13-20 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)(l)(iv). See 37 C.F.R. §41.50(f). AFFIRMED 9