Ex Parte re 39486 et al

Patent Trial and Appeal BoardJul 11, 2013

90011300 (P.T.A.B. Jul. 11, 2013)

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. 90/011,300 10/26/2010 RE 39486 20142.4.RXUS0_P1525USREX1 2579 77970 7590 07/12/2013 Apple Inc. c/o Novak Druce Connolly Bove + Quigg LLP 1000 Louisiana Street Fifty-Third Floor Houston, TX 77002 EXAMINER DESAI, RACHNA SINGH ART UNIT PAPER NUMBER 3992 MAIL DATE DELIVERY MODE 07/12/2013 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 APPEAL BOARD ____________ Ex parte APPLE COMPUTER, INC. Patent Owner and Appellant ____________ Appeal 2013-000604 Control No. 90/011,300 Patent US RE39,486 E Technology Center 3900 ____________ Before HOWARD B. BLANKENSHIP, KEVIN F. TURNER, and DENISE M. POTHIER, Administrative Patent Judges. BLANKENSHIP, Administrative Patent Judge. DECISION ON APPEAL Appeal 2013-000604 Control No. 90/011,300 Patent US RE39,486 E 2 STATEMENT OF THE CASE This is an appeal under 35 U.S.C. § 134(b) from the Examiner’s final rejection of claims 1-20 of US RE39,486 E (“the '486 reissued patent”). Oral hearing was on February 20, 2013. We have jurisdiction under 35 U.S.C. § 306. We reverse. Representative Claim 1. An extensible and replaceable layered component computing arrangement residing on a computer coupled to a computer network, the layered arrangement comprising: a software component architecture layer interfacing with an operating system to control the operations of the computer, the software component architecture layer defining a plurality of computing components; and a network component layer for developing network navigation components that provide services directed to the computer network, the network component layer includes application programming interfaces; and a first class included in the application programming interfaces to construct a first network navigation object that represents different network resources available on the computer network, wherein the network component layer coupled to the software component architecture layer in integrating relation to facilitate communication among the computing and network navigation components. Appeal 2013-000604 Control No. 90/011,300 Patent US RE39,486 E 3 Prior Art Pettus US 5,548,723 August 20, 1996 Applicant Admitted Prior Art in the '486 reissued patent (“AAPA”). Taylor, Dan et al. Transforming the Enterprise Through COOPERATION: An Object Oriented Solution, pp. 12-13, 18-19 and 22 (1993) (“NCR Cooperation”). Showman, Peter. An Object-Based User Interface for the HP New Wave Enviornment, 40 (no. 2) Hewlett-Packard Journal, pp. 9-17 (1989) (“HPJ”). A Sight for More Eyes, 8 (no. 11) CIO Magazine (1995) (“CIO”). Examiner’s Rejections Claims 1-6, 8, 9, 14-16, and 20 are rejected under 35 U.S.C. § 102(e) as being anticipated by Pettus. Claims 7, 10, 11, 18, and 19 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Pettus and NCR Cooperation. Claims 10-13 and 17-19 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Pettus and AAPA. Claims 10, 11, 18, and 19 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Pettus and HPJ. Claim 12 is rejected under 35 U.S.C. § 103(a) as being unpatentable over Pettus, NCR Cooperation, and AAPA. Claim 12 is rejected under 35 U.S.C. § 103(a) as being unpatentable over Pettus, HPJ, and AAPA. Claim 13 is rejected under 35 U.S.C. § 103(a) as being unpatentable over Pettus, NCR Cooperation, and CIO. Appeal 2013-000604 Control No. 90/011,300 Patent US RE39,486 E 4 Claim 13 is rejected under 35 U.S.C. § 103(a) as being unpatentable over Pettus, HPJ, and CIO. ANALYSIS I. Claim Interpretation In this proceeding, the claim language should be read in light of the specification as it would be interpreted by one of ordinary skill in the art. In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). The Office must apply the broadest reasonable meaning to the claim language, taking into account any definitions presented in the specification. Id. (citing In re Bass, 314 F.3d 575, 577 (Fed. Cir. 2002)). There is a “heavy presumption” that a claim term carries its ordinary and customary meaning. CCS Fitness, Inc. v. Brunswick Corp., 288 F.3d 1359, 1366 (Fed. Cir. 2002). II. Anticipation “A claim is anticipated only if each and every element as set forth in the claim is found, either expressly or inherently described, in a single prior art reference.” Verdegaal Bros. Inc. v. Union Oil Co. of California, 814 F.2d 628, 631 (Fed. Cir. 1987). “[A]bsence from the reference of any claimed element negates anticipation.” Kloster Speedsteel AB v. Crucible, Inc., 793 F.2d 1565, 1571 (Fed. Cir. 1986) (overruled on other grounds by Knorr-Bremse Systeme Fuer Nutzfahrzeuge GmbH v. Dana Corp., 383 F.3d 1337 (Fed. Cir. 2004)). Appeal 2013-000604 Control No. 90/011,300 Patent US RE39,486 E 5 III. The Rejections In the § 102 rejection applied against claim 1, the statement of the rejection is unclear with respect to what element in Pettus is deemed to correspond to the claimed “software component architecture layer.” See Final Rej. 4-5. Appellant assumes that the Pettus “frameworks,” consisting of one or more object layers, is deemed to disclose the claimed software component architecture layer. App. Br. 11; see also Final Rej. 4-5; Pettus col. 9, l. 51 - col. 10, l. 24. The Examiner in the Answer does not dispute Appellant’s reading of the rejection. Moreover, we note that the rejection refers to Pettus’ disclosure of CSF (client-server facility) and NSF (networking service facility) interfaces, but finds that these elements correspond to the separately claimed “network component layer.” E.g., Answer 7, ll. 12-13 (“The ‘network component layer’ is in the form of the CSF and NSF interfaces.”). Nor does the Examiner dispute that Pettus describes the “frameworks” as applied throughout the entire system, including the operating system. App. Br. 11; Pettus col. 10, ll. 15-17. Further, Pettus distinguishes the invention from the prior art frameworks that interacted with the underlying operating system “by means of awkward procedural calls.” Pettus col. 9, l. 58 - col. 10, l. 3. Although claim 1 recites a software component architecture layer “interfacing with” an operating system, the Examiner advances a claim interpretation that is contrary to that urged by Appellant. Examiner does not find the claim limitations to require the software component architecture layer to reside outside the operating system, only that it “interface with an operating system”. The software component architecture layer does not need to reside outside the operating system to “interface” with the OS. Examiner finds the '486 Patent to also support the software component architecture layer Appeal 2013-000604 Control No. 90/011,300 Patent US RE39,486 E 6 to be implemented as “overlaying” the operating system, not independent of the operating system. See figure 4 where the '486 patent depicts the software component architecture layer (430) as “overlaying” and interfacing with the OS (420). In other words, it does not have to be outside the operating system. Ans. 5. However, we agree with Appellant to the extent that the plain language of claim 1 sets forth the “software component architecture layer” as separate from the “operating system.” While it is true that such a component architecture layer could be within, or part, of, an operating system, claim 1 further recites the software component architecture layer as “interfacing with” the operating system. The plain language of the claim thus requires that the software component architecture layer and the operating system be separate and distinct elements. If the software component architecture layer were part of the operating system, the layer would not be “interfacing with” itself. We further agree with Appellant that the disclosure of the '486 reissued patent is not contrary to the plain language of claim 1 and, in fact, seems to teach the opposite of what the Examiner asserts. Figure 4 of the patent depicts component architecture layer 430 as being separate and distinct from operating system 420. “Although it is shown as overlaying the operating system 420, the component architecture layer 430 is actually independent of the operating system and, more precisely, resides side-by-side with the operating system. This relationship allows the component architecture to exist on multiple platforms that employ different operating systems.” '486 reissued patent col. 8, ll. 21-27 (emphasis added). The '486 reissued patent thus teaches that the component architecture layer is separate from the operating system such that the layer is not Appeal 2013-000604 Control No. 90/011,300 Patent US RE39,486 E 7 limited to any particular platform, but may be used with, i.e., interface with, different operating systems. In other words, under the broadest reasonable interpretation of claim 1 in light of the Specification, the software component architecture layer and the operating system are separate and distinct limitations of the claim. Of the remaining independent claims rejected under § 102 over Pettus, claim 14 recites the same language as claim 1 -- a software component architecture layer “interfacing with” an operating system. Claim 6 recites a software component architecture layer “coupled to” the operating system. The plain language of claim 6 requires that the software component architecture layer and the operating system be separate and distinct elements, as there is no reason for the software component architecture layer to be “coupled to” itself. The disclosure of the '486 reissued patent does not mandate that we interpret claim 6 any differently from the plain meaning of the terms. Claim 6 thus distinguishes over Pettus. Appellant has thus demonstrated error in the finding of anticipation with respect to each of claims 1, 6, and 14. The rejections applied against the dependent claims, whether under § 102 or § 103(a), do not remedy the basic deficiency in the rejection of the independent claims. We therefore cannot sustain any of the rejections on appeal. DECISION The Examiner’s decision to reject claims 1-20 is reversed. REVERSED Appeal 2013-000604 Control No. 90/011,300 Patent US RE39,486 E 8 ak PATENT OWNER: Apple Inc. c/o Novak Druce + Quigg, LLP 1000 Louisiana Street Fifty-Third Floor Houston, TX 77002 THIRD PARTY REQUESTER Bryan Cave, LLP 1290 Avenue of the Americas New York, NY 10104