Ex Parte Kliewe

Patent Trial and Appeal BoardMar 9, 2017

13681965 (P.T.A.B. Mar. 9, 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. 13/681,965 11/20/2012 John Kliewe END920080431US2 2087 30449 7590 03/13/2017 SCHMEISER, OLSEN & WATTS 22 CENTURY HILL DRIVE SUITE 302 LATHAM, NY 12110 EXAMINER HUTTON, NAN ART UNIT PAPER NUMBER 2154 NOTIFICATION DATE DELIVERY MODE 03/13/2017 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): 30449@IPLAWUSA.COM PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte JOHN KLIEWE Appeal 2015-006831 Application 13/681,9651 Technology Center 2100 Before JEAN R. HOMERE, JOHN A. EVANS, and DANIEL J. GALLIGAN, Administrative Patent Judges. Per Curiam. DECISION ON REQUEST FOR REHEARING STATEMENT OF THE CASE This is a decision on rehearing in Appeal No. 2015-006831. We have jurisdiction under 35 U.S.C. § 6(b). ANALYSIS On rehearing, Appellant identifies the following two issues on which rehearing is being sought: (1) that our Decision affirmed a double patenting rejection of claims 1, 4—6, 9-11, 14—16, 19, and 20 that had been withdrawn by the Examiner (Req. Reh’g 1—2) and (2) that our Decision did not address 1 The Appeal Brief identifies the real party in interest as International Business Machines Corporation. App. Br. 1. Appeal 2015-006831 Application 13/681,965 the merits of an argument deemed raised for the first time in the Reply Brief. Req. Reh’g 2—5. Double Patenting Rejection Appellant argues that the Examiner withdrew the double patenting rejection in the Advisory Action. Req. Reh’g 2. Although the Examiner’s Answer states that the Examiner maintained every ground of rejection set forth in the Final Office Action (Ans. 2), Appellant is correct that the Examiner withdrew the double patenting rejection in the Advisory Action. See Advisory Action (mailed June 24, 2014), 2. Therefore, we vacate our affirmance of this rejection in our Decision as this rejection was withdrawn and not before us. Argument Raised for First Time in Reply Brief Appellant contends that an argument presented in the Reply Brief that our Decision deemed raised for the first time was responsive to a new argument that the Examiner raised in the Answer. Req. Reh’g 2—3 (citing Reply Br. 5). Appellant asserts the Examiner finds for the first time in the Answer that Weissman describes the processor receiving the data query from the user after configuring the access pathway security. Req. Reh’g 3 (citing Ans. 3). Appellant contends to have only rebutted the Examiner’s allegedly newly raised argument by asserting Weissman does not describe “that access path security is configured in response to the query hint (i.e., the alleged configuration query) being received and before the ‘filtered sharing query’ (i.e., the alleged data query) is received, as required in the preceding feature of claims 1,6, 11 and 16.” Req. Reh’g 3^4 (quoting Reply Br. 5). Appellant argues that, because the argument was raised in the Reply Brief in 2 Appeal 2015-006831 Application 13/681,965 response to a new finding made by the Examiner in the Answer, the argument is not waived under 37 C.F.R. § 41.41(b)(2). We disagree with Appellant that the Examiner raised a new argument in the Answer regarding the processor receiving the data query from the user after configuring the access path security. In the Final Office Action, the Examiner finds Weissman describes the disputed limitation, “in response to said receiving the configuration query, said processor configuring the access path security; after said configuring the access path security, said processor receiving the data query from the user.” Final Act. 7 (citing Weissman 72—85). In the Appeal Brief, Appellant argued that Weissman describes the user query is received before the configuration query. App. Br. 11—12 (citing Weissman 172). In particular, Appellant argued: Since the data request for accessing a custom object in table 400 of FIG. 4 is performed before the step of optimizing this data request to generate an optimized query (which the Examiner alleges to represent the claimed configuration query), Weissman does not teach the requirement in claims 1,6, 11 and 16 that the step of “receiving the data query” is performed after the step of “receiving the configuration query.” App. Br. 12. Thus, Appellant’s argument on appeal as to this limitation was directed to the order of performing the steps of “receiving the data query” and “receiving the configuration query.” In the Answer, the Examiner relies on disclosure in Weissman cited in the Final Action in explaining how Weissman describes the disputed limitation. Ans. 3 (citing Weissman || 79-85); Final Act. 7 (citing Weissman || 72—85). The Examiner explains that the system in Weissman receives a query hint as a configuration query which is then combined with the sharing query subsequently received from the user as the user query. 3 Appeal 2015-006831 Application 13/681,965 Ans. 3. (citing Weissman | 83). We were not persuaded by Appellant’s argument in view of the Examiner’s analysis. Dec. 6. Appellant did not explicitly argue in the Appeal Brief that the Examiner erred in finding Weissman teaches access path security. App. Br. 11—12. The Examiner’s analysis in the Answer did not argue access path security per se. Ans. 3. Thus, we conclude that Examiner did not raise a new argument regarding access path security. Ans. 3. Because Appellant’s argument raised for the first time in the Reply Brief was not responsive to a new argument the Examiner made in the Answer, we reiterate that Appellant’s argument is deemed waived. CONCLUSION In view of the foregoing discussion, we grant Appellants’ Request for Rehearing to the extent that we have modified the Decision by vacating our affirmance of the double patenting rejection not before us. However, we maintain our initial decision to affirm the rejection of all claims on appeal. 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). REHEARING DENIED 4