Ex Parte Garcia-Martin et al

Patent Trial and Appeal BoardFeb 24, 2014

11350088 (P.T.A.B. Feb. 24, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte MIGUEL A. GARCIA-MARTIN and ADAMU HARUNA ____________ Appeal 2011-008289 Application 11/350,088 Technology Center 2400 ____________ Before MURRIEL E. CRAWFORD, MICHAEL C. ASTORINO, and NINA L. MEDLOCK, Administrative Patent Judges. CRAWFORD, Administrative Patent Judge. DECISION ON APPEAL Appeal 2011-008289 Application 11/350,088 2 STATEMENT OF THE CASE Appellants seek our review under 35 U.S.C. § 134 of the Examiner’s final decision rejecting claims 1-30. We have jurisdiction over the appeal under 35 U.S.C. § 6(b). We AFFIRM. BACKGROUND Appellants’ invention is directed to an instant messaging system and method (Spec. 1) Claim 1 is illustrative: 1. An apparatus, comprising: a processor configured to receive a summary of messages stored in a mail server and pending retrieval by a user, each message associated with a unique identifier; select at least one of the messages to be retrieved from the mail server, based on the summary of messages; determine an identifier valid for retrieval of the at least one message based on the unique identifier associated with the at least one message, thereby obtaining at least one identifier valid for retrieval; and send a retrieval request with the at least one identifier valid for retrieval to the mail server, the retrieval request being configured to establish a session for delivering the at least one message to the user. Appellants appeal the following rejections: Claim 5 under 35 U.S.C. § 112, second paragraph, as being indefinite. Claims 1-30 under 35 U.S.C. § 112, second paragraph, as being incomplete for omitting essential elements. Appeal 2011-008289 Application 11/350,088 3 Claims 1-3, 4-9, 13, and 14 under 35 U.S.C. § 102(b) as anticipated by Goodhand (US 5,923,848; iss. Jul. 13, 1999). Claims 1-30 under 35 U.S.C. § 102(b) as anticipated by Goodhand. ISSUES Did the Examiner err in rejecting claim 5 under 35 U.S.C. § 112, second paragraph, because failure to provide explicit antecedent basis for a term does not necessarily render a claim indefinite if, as in the present case, a person or ordinary skill in the art would understand the scope of claim 5? Did the Examiner err in rejecting claims 1-30 under 35 U.S.C. § 112, second paragraph because the claims are not incomplete for omitting essential elements? Did the Examiner err in rejecting claim 1 under 35 U.S.C. § 102(b) as being anticipated by Goodhand by holding that the claim requires a processor that is configurable rather than configured to perform the functions recited? Did the Examiner err in rejecting claim 2 under 35 U.S.C. § 102(b) because Goodhand does not disclose an apparatus that determines an identifier for retrieval of one message or that sends a retrieval request configured to establish a session for delivering the message? FACTUAL FINDINGS We adopt the Examiner’s findings in the Answer and Final Office Action as our own, except as to those findings that we expressly overturn or set aside in the Analysis that follows. Additional findings of fact may appear in the Analysis that follows. Appeal 2011-008289 Application 11/350,088 4 ANALYSIS Indefiniteness We will not sustain the Examiner’s rejection of claims 1-30 under 35 U.S.C. § 112, second paragraph, because we agree with the Appellants that the claims do not omit essential elements. The Examiner finds that the claims omit the step of using the retrieval request to establish a session. The Examiner reasons that without the step of establishing a session, a message cannot be delivered to the user. In our view, the claim does not cover deliverance of the message to the user and thus the lack of a step establishing a session is not essential to the subject matter claimed. In view of the foregoing, we will not sustain this rejection. We will not sustain the Examiner’s rejection of claim 5 under 35 U.S.C. § 112, second paragraph. The Examiner holds that the claim is indefinite because there is no antecedent basis for the recitation of “sending means.” Appellants do not contest that the recitation of “sending means” in claim 5 lacks sufficient antecedent basis for the claim terminology, but contend that the failure to provide explicit antecedent basis does not render the claim indefinite and that those skilled in the art could reasonably ascertain the scope of the claim (Br. 23-24). We agree. Accordingly, we reverse the Examiner’s indefiniteness rejection of claim 5. Anticipation The Examiner rejects claims 1-3, 4-9, 13, and 14 as anticipated by Goodhand. In the Examiner’s view, because Goodhand discloses a processor that is configurable to perform the functions of the claims, Goodhand anticipates the claimed invention. We will not sustain this Appeal 2011-008289 Application 11/350,088 5 rejection because we agree with the Appellants that in order for Goodhand to anticipate the subject matter of the above claims, the Goodhand processor must be configured, not just configurable, to perform the functions claimed. In this regard, the Examiner must establish that the processor in Goodhand has been programmed to perform the functions recited. Here, the word “configured” requires that the processor be transformed into a machine, which either by hard wiring or programming, is capable of carrying out the functions claimed. Because the Examiner did not establish that the processor was capable of performing the functions of the claims, we will reverse this rejection. We do not reach the same result in regard to the second anticipation rejection that is directed to claims 1-30. In this rejection, the Examiner addressed the functions recited in the claims and provided findings as to where each of the functions recited is found in the Goodhand reference. We will now address each of the Appellants’ arguments regarding this rejection. We are not persuaded of error on the part of the Examiner by Appellants’ argument that Goodhand does not disclose the retrieval request being configured to establish a session for delivering the at least one message to the user. We agree with the Examiner that the subject matter related to the configuration of the retrieval request does not patentably limit the claim. Claim 1 recites a processor that is configured to perform certain functions. One of the functions of the processor is to send a retrieval request. In this regard, the claim recites a processor that is configured or capable of sending a retrieval request. As long as the Goodhand processor is capable of sending a retrieval request, the claims on appeal are anticipated by Goodhand. The type of retrieval request does not further define the Appeal 2011-008289 Application 11/350,088 6 processor and is considered nonfunctional in nature. See discussion in Ex parte Nehls, 88 USPQ2d 1883, 1887-89 (BPAI 2008) (precedential). This is so because there is no evidence that the type of retrieval request functionally affects the processor. One of ordinary skill in the art would expect the type of retrieval request sent by the processor to have no effect on the processor itself. Accordingly, it is appropriate to characterize the type of retrieval request, i.e., “configured to establish a session for delivering the at least one message to the user” as descriptive material nonfunctionally related to the computer used to perform the functions. As such, nonfunctional descriptive material cannot render nonobvious an invention that would have otherwise been obvious. In re Ngai, 367 F.3d 1336, 1339 (Fed. Cir. 2004). Cf. In re Gulack, 703 F.2d 1381, 1385 (Fed. Cir. 1983) (when descriptive material is not functionally related to the substrate, the descriptive material will not distinguish the invention from the prior art in terms of patentability). We are not persuaded of error on the part of the Examiner by Appellants’ argument that Goodhand does not disclose a processor configured to determine an identifier valid for retrieval of the at least one message. We agree with the Examiner and adopt the Examiner’s response to this argument found on page 13 of the Answer. In this regard, we agree that the Microsoft Outlook program described in Goodhand inherently includes identifiers valid for retrieval for without such identifiers, such messages would not be capable of being retrieved. We note that claim 1 does not recite that the identifier valid for retrieval and the unique identifier must be different identifiers. We are not persuaded of error on the part of the Examiner by Appellants’ argument that Goodhand does not describe that the processor Appeal 2011-008289 Application 11/350,088 7 retrieves the message because this argument is not commensurate in scope with the recitations in claim 1. In this regard, claim 1 does not recite that the processor retrieves the message. In fact, the function of retrieving the message is not positively recited in claim 1. Claim 1 recites that the processor determines an identifier “for retrieval” but does not positively recite that the message is retrieved much less that the message is retrieved by the processor. DECISION We do not affirm the Examiner’s 35 U.S.C. § 112, second paragraph, rejection of claim 5. We do not affirm the Examiner’s 35 U.S.C. § 112, second paragraph, rejection of claims 1-30. We do not affirm the Examiner’s 35 U.S.C. § 102(b) rejection of claims 1-3, 4-9, 13, and 14 as anticipated by Goodhand. We affirm the Examiner’s § 102(b) rejection of claims 1-30 as anticipated by Goodhand. 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. § 1.136(a)(1) (2011). AFFIRMED hh