Ex Parte Daniels et al

Patent Trial and Appeal BoardDec 3, 2012

11179950 (P.T.A.B. Dec. 3, 2012)

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. 11/179,950 07/12/2005 Fonda J. Daniels LOT920050053US1 (7321-103 2674 46321 7590 12/04/2012 CAREY, RODRIGUEZ, GREENBERG & O''KEEFE, LLP STEVEN M. GREENBERG 950 PENINSULA CORPORATE CIRCLE SUITE 2022 BOCA RATON, FL 33487 EXAMINER KUMAR, ANIL N ART UNIT PAPER NUMBER 2174 MAIL DATE DELIVERY MODE 12/04/2012 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 ____________ BEFORE THE PATENT TRIAL AND APPEALS BOARD ____________ Ex parte FONDA J. DANIELS, RUTHIE D. LYLE, MICHAEL MULLER, and ANDREW L. SCHIRMER ____________ Appeal 2010-003948 Application 11/179,950 Technology Center 2100 ____________ Before ALLEN R. MacDONALD, MICHAEL R. ZECHER, and JOHN G. NEW, Administrative Patent Judges. NEW, Administrative Patent Judge. DECISION ON REQUEST FOR REHEARING Appellants have filed a Request for Rehearing (hereinafter “Request”) under 37 C.F.R. § 41.52(a)(1) for reconsideration of our Decision of June 27, 2012 (hereinafter “Decision”). Appeal 2010-003948 Application 11/179,950 2 The Decision affirmed the Examiner’s rejections of claims 13 - 19 under 35 U.S.C. § 103(a), as follows: 1. We affirmed the Examiner’s rejection of independent claims 13-18 under 35 U.S.C. §103(a) as being unpatentable over the combination of Skurikhin (US 2004/0181577 A1) (“Skurikhin”), Petrovykh (US 2003/0231647 A1) (“Petrovykh”), and Philonenko (US 2002/0131399 A1) (“Philonenko”). 2. We affirmed the Examiner’s rejection of claim 19 under 35 U.S.C. §103(a) as being unpatentable over the combination of Skurikhin, Petrovykh, Philonenko, and Barsness (US 2004/0117443 A1) (“Barsness”). Appellants seek reconsideration of our Decision affirming the Examiner’s rejection of claims 13-19 under 35 U.S.C. § 103(a). Specifically, Appellants present the argument that the Board erred by premising its finding of fact at page 4 of the Decision on the inherent nature of “session requests” within “initiating a chat event.” Consideration of claims 13-19 Appellants argue that the Board erred as a matter of law by finding that the term “session requests” as recited in claim 13 is an inherent part of a “chat initiation event” as disclosed by Petrovykh. Request 5. Appellants argue that the Board, thus improperly employed an argument from inherency, which is an improper analytical tool in a 35 U.S.C. § 103 analysis. Request 6. Appellants cite Ex parte Vigano, Appeal No. 2011- 006558; Application No. 12/044,623 in support of this contention. Id.; see Appeal 2010-003948 Application 11/179,950 3 also In re Rijckaert, 59 F.3d 1531 (Fed. Cir. 1993); In re Newell, 891 F.2d 899, 901 (Fed. Cir. 1989) (“[A] retrospective view of inherency is not a substitute for some teaching or suggestion which supports the selection and use of the various elements in the particular claimed combination”). Appellants are correct insofar as that a retrospective (retroactive or backwards) employment of inherency by the Solicitor is incorrect in a § 103 analysis. Appellants are also correct that employment of inherency is incorrect in a § 103 analysis when it is not known in the art that the inherent part is in fact inherent. Newell, 891 F.2d at 899 quoting In re Spormann, 363 F.2d 444 (C.C.P.A. 1966), (“That which may be inherent is not necessarily known. Obviousness cannot be predicated on what is unknown.”). However, Appellants overreach in extending these holdings to a general per se rule that inherency can never be employed in a § 103 analysis, particularly if an ordinarily skilled artisan would know that the part is inherent. Inherency is a question of fact that arises both in the context of anticipation and obviousness rejections. See In re Napier, 55 F.3d 610, 613 (Fed. Cir. 1995) (affirming a 35 U.S.C. § 103(a) rejection based in part on the inherent disclosure in one of the applied prior art references); see also In re Grasselli, 713 F.2d 731, 739 (Fed. Cir. 1983). Appellants’ Appeal Brief at page 7 argues that the ordinary meaning of “session request” is a request to establish a session. The Examiner at page 8 of the Answer further elaborates that a “session” is “a semi- permanent interactive information interchange, also know[n] as a dialogue, a conversation or a meeting, between two or more communicating devices, or between a computer and user.” The Examiner’s further statement that “a Appeal 2010-003948 Application 11/179,950 4 ‘chat initiation event’ must inherently make a ‘session request’” (Ans. 8), with which this panel agreed (Decision 4), is based not on unknown inherency, but rather an ordinarily skilled artisan’s knowledge because “a chat, which is human-to-human communication over a network, is essentially a stateless or stateful session depending [on] the underlying internet protocol used” (Ans. 8) (i.e., ordinarily skilled artisans would know that such sessions must be requested). As such, and upon reviewing the record, we find that the Examiner did not err in finding that a “chat initiation event,” as taught by Petrovykh, discloses or suggests the “session requests” as recited in claim 13. Consequently, we affirm the Examiner’s finding. Furthermore, we reject Appellants’ argument that it is per se error to employ inherency in a § 103 analysis. DECISION We have granted Appellants’ request to the extent that we have reconsidered our Decision. We deny Appellants’ request for rehearing of claims 13-19. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv). See also 37 C.F.R. § 41.52(b). REHEARING DENIED ELD