Ex Parte Lyle et al

Patent Trial and Appeal BoardAug 14, 2013

11490418 (P.T.A.B. Aug. 14, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte RUTHIE D. LYLE and DEMETHRIA J. RAMSEUR ____________ Appeal 2010-011854 Application 11/490,418 Technology Center 2100 ____________ Before ELENI MANTIS MERCADER, JASON V. MORGAN, and JOHNNY A. KUMAR, Administrative Patent Judges. KUMAR, Administrative Patent Judge. DECISION ON APPEAL Appeal 2010-011854 Application 11/490,418 2 STATEMENT OF THE CASE Appellants appeal under 35 U.S.C. § 134(a) from a final rejection of claims 1-20. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. Rather than reiterate the arguments of Appellants and the Examiner, we refer to the Appeal Brief (“Br.”) filed February 22, 2010, and the Answer (“Ans.”) mailed May 27, 2010, for the respective details. We have considered in this decision only those arguments Appellants actually raised in the Brief. Any other arguments which Appellants could have made but chose not to make in the Brief are deemed to be waived. See 37 C.F.R. § 41.37(c)(1)(vii). THE INVENTION Appellants’ claimed invention is directed to managing electronic sticky notes. At one workstation, a user defines the contents of an electronic sticky note and specifies workstations to receive and display the electronic sticky note. The workstation sends to a server, via one or more networks, a definition of the electronic sticky note and the specification of the workstations to receive and display the electronic sticky note. The server sends a request, via one or more networks, to the workstations to display the electronic sticky note. The request includes a definition of the electronic sticky note. The server can verify that the workstations are currently on line and/or verify that the user is authorized to send the electronic sticky note to the workstations. See Abstract. Independent claim 1, reproduced below, is illustrative of the subject matter on appeal. Appeal 2010-011854 Application 11/490,418 3 1. A method for managing electronic sticky notes, said method comprising the steps of: a server computer receiving from a first workstation via one or more networks, a definition, entered by a user at the first workstation, of an electronic sticky note and a specification of one or more workstations to receive and display said electronic sticky note; and in response to receipt of the definition of said electronic sticky note and the specification of one or more workstations to receive and display said electronic sticky note, said server computer sending a request, via said one or more networks, to said one or more workstations to display said electronic sticky note, said request including the definition of said electronic sticky note. REFERENCES and REJECTIONS The Examiner rejected claims 1, 3-6, 8, 9, 11-14, 16, 17, 19, and 20 under 35 U.S.C. § 102(e) as being anticipated by Landon (US 2008/0189364 A1, Aug. 7, 2008). Ans. 3. The Examiner rejected claims 2, 7, 10, 15, and 18 under 35 U.S.C. § 103(a) as being unpatentable over Landon and Sakata (US 2003/0225843 A1, Dec. 4, 2003). Ans. 11. ISSUE AND ANALYSIS We adopt as our own the findings and reasons set forth in the Examiner’s Answer (see Ans. 3-20). We highlight and address specific findings and arguments for emphasis as follows. In response to each of the arguments raised by Appellants, the Examiner presents detailed findings and responses, which are not rebutted by Appellants in a Reply Brief. Appeal 2010-011854 Application 11/490,418 4 Appellants contend that Landon does not teach a specification of one or more workstations to receive and display said electronic sticky note being received at a server computer from a first workstation. (Br. 10). In particular, Appellants also contend that “specifying a recipient [as in Landon] is not the same as specifying one or more workstations.” Br. 12. We disagree with Appellants’ arguments. To establish inherency, the evidence must make clear that the missing descriptive matter is “necessarily present” in the thing described in the reference. In re Robertson, 169 F.3d 743, 745 (Fed. Cir. 1999). “Under the principles of inherency, if the prior art necessarily functions in accordance with, or includes, the claimed limitations, it anticipates.” In re Cruciferous Sprout Litig., 301 F.3d 1343, 1349 (Fed. Cir. 2002) (citation and internal quotation marks omitted) (emphasis added). In particular, the Examiner finds that: As shown in Figure 1, the note servers 9, 13, and 15 may receive the note from creator 1 via one or more networks (e.g., networks 7, 11, 17, and 19). The Examiner submits that a recipient is the same as workstation because Landon discloses an electronic note displayed on a workstation (e.g., computer 21, paragraph [0029]). In all cases, the receiver of an electronic note is a workstation such as computer 1 and handset 25 which display an electronic sticky note as claimed. Ans. 18 (emphasis added). First, we agree with the Examiner (Ans. 18) that the workstation recited in exemplary claim 1 is broad enough to encompass Landon’s recipient (see Fig 1) because it receives an electronic sticky note. Second, the receipt of an electronic note by a workstation would necessarily entail Appeal 2010-011854 Application 11/490,418 5 identification of the workstation that can receive the electronic sticky note for display. Appellants further contend that Landon does not teach verifying that the user is authorized to send the electronic sticky note to one or more stations, as recited in claims 3, 11, and 19. Br. 19-20. We do not agree with Appellants’ argument. With regard to the authorized limitation, Landon discloses: Upon receipt of the notification at step 520, recipients’ identity server 15 compares the creator’s identity with a list of identities with which the recipient has established electronic contracts governing the sharing of data. These electronic contracts may be stored in the recipient’s identity account resident on recipient’s identity server 15. If it is determined that a contract exists, the steps as described with respect to FIG. 5 are followed. However, if it determined that a contract does not exist, the identity account resident on identity account server 15 will, at step 640, seek to establish access to the note by sending a message to creator’s identity server 9 seeking first to create an electronic contract. Landon ¶ [0056] (emphasis added). The Examiner finds that the establishment of a contract as described above between a note’s creator and a note’s recipient in Landon meets the authorized limitation (Ans. 5), and we agree. Appellants further argue that the combination of Landon and Sakata does not teach “said server computer verifying that said one or more workstations are currently on line,” as claimed in claim 2 (Br. 21-23) (emphasis added). We do not agree with Appellants’ argument. The Examiner finds, and we agree, that Sakata’s determining of presence information of a workstation Appeal 2010-011854 Application 11/490,418 6 before sending a request for one or more workstations, corresponds to the on line limitation (Ans. 12, citing Sakata, paragraph [0092], and Fig. 2). Accordingly, we affirm the Examiner’s rejection of claims 1-3, 11, and 19 and for the same reasons the rejections of claims 4-10, 12-18, and 20 that were not argued separately. CONCLUSION The Examiner did not err in rejecting claims 1, 3-6, 8, 9, 11-14, 16, 17, 19, and 20 under 35 U.S.C. § 102(e) as being anticipated by Landon. The Examiner did not err in rejecting claims 2, 7, 10, 15, and 18 under 35 U.S.C. § 103(a) as being unpatentable over Landon and Sakata. DECISION The Examiner’s decision rejecting claims 1-20 is affirmed. 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) (2010). AFFIRMED msc