Ex Parte Graves et al

Patent Trial and Appeal Board

Dec 7, 2012

11260514 (P.T.A.B. Dec. 7, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte DAVID ANDREW GRAVES and PHILIP JOHN DAY
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Appeal 2010-007094
Application 11/260,514
Technology Center 2400
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Before JOHN A. JEFFERY, JEREMY J. CURCURI, and
JENNIFER L. McKEOWN, Administrative Patent Judges.

JEFFERY, Administrative Patent Judge.

DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 1-30. We have jurisdiction under 35 U.S.C. § 6(b). We
reverse.

STATEMENT OF THE CASE
Appellants’ invention creates visual representations of resource farms
that enable connecting farms securely. See generally Spec. 1. Claim 1 is
illustrative:
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1. A method of creating visual representations of farms that enables
securely connecting the farms, the method comprising:
creating, performed by a computer system, a visual representation of a
first farm and a visual representation of a second farm;
creating, performed by the computer system, a visual representation of
a secure connection by associating a first administrator trust relationship,
that is specified by a first administrator of the first farm, with a first end of
the visual representation of the secure connection and associating a second
administrator trust relationship, that is specified by a second administrator of
the second farm, with a second end of the visual representation of the secure
connection; and
determining, performed by the computer system, whether to associate
the visual representations of the first and second farms respectively with the
first and second ends of the visual representation of the secure connection
based on the first and second administrator trust relationships.

THE REJECTIONS
1. The Examiner rejected claims 1, 11, 21, and 30 under 35 U.S.C.
§ 112, first paragraph, as failing to comply with the written description
requirement. Ans. 3-4.1
2. The Examiner rejected claims 1, 3, 4, 9, 11-15, 21, 23, 24, and 30
under 35 U.S.C. § 102(b) as anticipated by Patterson (US 2002/0052941 A1;
May 2, 2002). Ans. 5-9.
3. The Examiner rejected claims 2 and 22 under 35 U.S.C. § 103(a)
as unpatentable over Patterson and Rochford (US 6,577,327 B1; June 10,
2003). Ans. 9-10.

1 Throughout this opinion, we refer to (1) the Appeal Brief filed January 12,
2010 (“App. Br.”); (2) the Examiner’s Answer mailed February 19, 2010
(“Ans.”); and (3) the Reply Brief filed April 13, 2010 (“Reply Br.”).
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4. The Examiner rejected claims 5, 6, 17, 18, 25, and 26 under 35
U.S.C. § 103(a) as unpatentable over Patterson and Kelkar (US 7,058,846
B1; June 6, 2006; filed Oct. 17, 2002). Ans. 10-12.
5. The Examiner rejected claims 7, 8, 19, 20, 27, and 28 under 35
U.S.C. § 103(a) as unpatentable over Patterson and Kautzleben (US
2005/0216510 A1; Sept. 29, 2005). Ans. 12-13.
6. The Examiner rejected claims 10, 16, and 29 under 35 U.S.C.
§ 103(a) as unpatentable over Patterson and McNeill (US 6,167,052; Dec.
26, 2000). Ans. 14.

THE WRITTEN DESCRIPTION REJECTION
The Examiner finds that the administrator trust relationships in claim
1 that were added via amendment during prosecution are not supported by
the original disclosure and therefore do not satisfy the written description
requirement. Ans. 3-4, 15-17.
Appellants argue that administrators’ access lists in the original
disclosure, such as those for “David” and “Cheryl,” are examples of the
recited administrator trust relationships because they specify particular
administrators that are allowed to design farms that can connect to another
administrator’s farm via the ends of a secure connection. App. Br. 10-12;
Reply Br. 1-3.

ISSUE
Has the Examiner erred in rejecting claim 1 by finding that the recited
administrator trust relationships are not supported by the original disclosure
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and therefore fail to comply with the written description requirement under
§ 112, first paragraph?

ANALYSIS
We begin by noting that it is undisputed that the original disclosure
does not use the term “administrator trust relationship”; rather, the term was
added via amendment during prosecution. See Amd’t filed June 26, 2009, at
2 (amending Specification at page 11 to add a paragraph indicating that an
access list is an example of an administrator trust relationship); id.
(amending claim 1 to include administrator trust relationships). Accord
Reply Br. 2-3 (acknowledging amending the Specification to provide
antecedent basis for “administrator trust relationship”). Appellants,
however, argue that administrators’ access lists in the original disclosure
nonetheless support the recited administrator trust relationships. App. Br.
10-12; Reply Br. 1-3.
We agree, despite the original disclosure’s lacking the term
“administrator trust relationship.” It is well settled that to satisfy the written
description requirement, the disclosure must reasonably convey to skilled
artisans that Appellants possessed the claimed invention as of the filing date.
Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010)
(en banc). Access lists allow administrators to designate certain
administrators to design farms that can connect to the designating
administrator’s farm via a secure connection. Spec. 10:5-18; Fig. 2. For
example, an administrator (e.g., David) can allow another administrator
(e.g., Cheryl) to design farms that can connect to David’s farm 210 at the
end 214 of the associated secure connection, thus authorizing Cheryl to
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access the subnet at the secure connection end of David’s farm. Spec. 10:8-
13. Cheryl can similarly authorize David to access her farm’s subnet at its
secure connection end 222. Spec. 10:13-18. These access lists therefore
enable administrators to share work on farms while simultaneously limiting
administrators’ access to farms. Spec. 10:34-36.
By one administrator granting access to their secure farm to another
administrator, a relationship is established between those administrators that,
among other things, enables work sharing. This relationship reasonably
conveys a particular trust relationship between these administrators, for the
term “trust” is defined, in pertinent part, as “firm belief or confidence in the
honesty, integrity, reliability, justice, etc. of another person or thing; faith;
reliance.” WEBSTER’S NEW WORLD DICTIONARY OF AMERICAN ENGLISH
1436 (3d College ed. 1994). Surely, an administrator’s granting access to
their secure farm to share work with a particular authorized administrator
involves at least some reliance on—and therefore trust in—the authorized
administrator’s abilities in that regard. That administrators not on the list
(e.g., John) are denied this access only bolsters our conclusion that they are
not part of this special trust relationship between particular administrators.
See Spec. 10:34-36.
We recognize that a description that merely renders the invention
obvious does not satisfy the written description requirement. Ariad, 598
F.3d at 1352. But that is not the case here. Rather, a trust relationship is an
integral aspect of administrators authorizing other selected administrators to
access their secure farms to design connecting farms and share work, yet
denying that privilege to others.
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We are therefore persuaded that the Examiner erred in rejecting (1)
independent claim 1, and (2) independent claims 11, 21, and 30 which recite
commensurate limitations.

THE ANTICIPATION REJECTION
The Examiner finds that Patterson’s method of creating visual farm
representations has every recited feature of independent claim 1 including
determining whether to associate visual representations of farms with first
and second ends based on first and second administrator trust relationships.
Ans. 5. The Examiner, however, does not give the recited administrator
trust relationships patentable weight “due to the new matter issues.”
Ans. 18.
Appellants argue that Patterson does not (1) create a visual
representation of a secure connection by associating administrator trust
relationships with ends of that representation, and (2) determine whether to
associate visual farm representations with the visual secure connection
representation based on the administrator trust relationships as claimed.
App. Br. 12-16; Reply Br. 3-4.

ISSUE
Under § 102, has the Examiner erred in rejecting claim 1 by finding
that Patterson (1) creates a visual representation of a secure connection by
associating first and second administrator trust relationships with first and
second ends of that representation, respectively, and (2) determines whether
to associate visual farm representations with the visual secure connection
representation based on the administrator trust relationships as claimed?
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This issue turns on whether the Examiner erred in not giving the recited
administrator trust relationships patentable weight.

ANALYSIS
We begin by noting that while the Examiner finds that Patterson
discloses every recited feature of independent claim 1—including the recited
administrator trust relationships—the Examiner nonetheless does not give
these relationships patentable weight “due to the new matter issues.”
Compare Ans. 5 with Ans. 18. And apart from merely citing Patterson’s (1)
paragraph 220 in connection with creating a visual representation of a secure
connection, and (2) paragraphs 222 through 225 in connection with the
recited determining step, the Examiner does not map any recited elements of
the claim to this corresponding elements in this disclosure, much less
explain why this disclosure anticipates the recited elements. See Ans. 5. In
short, the Examiner provides no meaningful analysis in this regard, but
rather merely quotes the claim language. We are therefore left to speculate
as to Examiner’s position—speculation that raises a number of questions:
What elements in Patterson constitute the recited first and second farms?
Where are the first and second ends of the visual secure connection
representation? And how is the Examiner treating the corresponding
associations in Patterson, particularly since the Examiner does not give the
recited administrator trust relationships patentable weight? The Examiner’s
ignoring these limitations is particularly problematic since it violates the
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mandate that new matter must be considered as part of the claimed subject
matter for associated prior art rejections.2
Despite these problems and unanswered questions, we note that
Patterson allows users to create visual representations of server farms via a
graphical editor—representations that include firewalls that allow and deny
access to connected nodes via wiring. Patterson ¶ 0223; Fig. 3A. Although
this ability to grant and deny access to nodes suggests some sort of trust
relationship between the firewall and nodes that are granted access to the
firewall, we cannot say—nor has the Examiner shown—how this necessarily
teaches the specific associations with ends of a secure connection
representation, let alone determining whether to associate the visual farm
representations with the first and second ends of the secure connection
representation as claimed. Nor will we speculate in that regard here in the
first instance on appeal.
We are therefore persuaded that the Examiner erred in rejecting (1)
independent claim 1; (2) independent claims 11, 21, and 30 which recite
commensurate limitations; and (3) the dependent claims for similar reasons.

THE OBVIOUSNESS REJECTIONS
Since the Examiner has not shown that the additional cited prior art
cures the deficiencies noted above regarding the independent claims, we will
not sustain the obviousness rejections of dependent claims 2, 5-8, 10, 16-20,
22, and 25-29 (Ans. 10-14) for similar reasons. Since this issue is

2 See MPEP § 706.03(o) (Examiner Note 3 in connection with Form
Paragraph 7.28) (“As to any other appropriate prior art . . . rejection, the new
matter must be considered as part of the claimed subject matter and cannot
be ignored.” (emphases added)).
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dispositive regarding our reversing the rejection of these claims, we need not
address Appellants’ separate arguments pertaining to McNeill’s alleged
shortcomings regarding claim 10 (App. Br. 23)—arguments that were not
addressed by the Examiner in any event. See Ans. 17-18.

CONCLUSION
The Examiner erred in rejecting (1) claims 1, 11, 21, and 30 under
§ 112; (2) claims 1, 3, 4, 9, 11-15, 21, 23, 24, and 30 under § 102; and (3)
claims 2, 5-8, 10, 16-20, 22, and 25-29 under § 103.

ORDER
The Examiner’s decision rejecting claims 1-30 is reversed.

REVERSED

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