Ex Parte Russo et alDownload PDFPatent Trial and Appeal BoardJan 29, 201310737131 (P.T.A.B. Jan. 29, 2013) Copy Citation 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. 10/737,131 12/15/2003 Joseph A. Russo LOT920030069US1 (023) 5725 46321 7590 01/29/2013 CAREY, RODRIGUEZ, GREENBERG & O''''KEEFE, LLP STEVEN M. GREENBERG 7900 Glades Road SUITE 520 BOCA RATON, FL 33434 EXAMINER LIN, WEN TAI ART UNIT PAPER NUMBER 2454 MAIL DATE DELIVERY MODE 01/29/2013 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 JOSEPH A. RUSSO and ROBERT YATES ____________ Appeal 2010-007395 Application 10/737,131 Technology Center 2400 ____________ Before ERIC B. CHEN, JOHNNY A. KUMAR, and LARRY J. HUME, Administrative Patent Judges. KUMAR, Administrative Patent Judge. DECISION ON APPEAL Appellants appeal under 35 U.S.C. § 134(a) from a final rejection of claims 1-9, 31-39, and 41-49. Claims 11-30 have been canceled. Claims 10, 40, and 50 have been indicated as containing allowable subject matter. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. Appeal 2010-007395 Application 10/737,131 2 STATEMENT OF THE CASE Introduction Appellants’ invention relates to a method and system for managing enrollment in a collaborative computing environment community (see Abstract). Exemplary claims 1 and 2 read as follows: 1. A computer implemented method for managing member enrollment in a collaborative computing community, the method comprising: identifying one or more end user persons for enrollment in the collaborative computing community; implementing an enrollment model, executing in memory by a processor of a collaborative computing server, to determine whether to enroll the one or more identified end user persons as members in the community; and updating community membership in an electronic storage medium of the collaborative computing server to enroll the one or more end user persons based on the implemented enrollment model. 2. The method of claim 1, wherein the implementing an enrollment model includes designating one or more community members as administrators with the authority to grant enrollment to the one or more end user persons. Rejection The Examiner rejected claims 1-9, 31-39, and 41-49 under 35 U.S.C. § 102(b) as being anticipated by Olivier (US Patent No. 6,480,885 B1, Nov. 12, 2002). Appeal 2010-007395 Application 10/737,131 3 Appellants’ Contentions1 1. With respect to claim 1, Appellants contend that the cited portions in the Abstract; col.14, l. 55 to col. 15, l. 21; and col. 17, ll. 7-39 of Olivier fail to disclose the claimed “collaborative computing community” (App. Br. 9-12; Reply Br. 2-4). Appellants rely on paragraph [0003] of their Specification and further argue that the claimed “collaborative computing community” is defined by (1) a particular context, i.e. the objective of the environment, (2) membership, i.e., the participants in the environment, (3) a set of roles for the members, and (4) resources and tools which can be accessed by the membership in furtherance of the objective of the environment (App Br. 9-10; Reply Br. 3). 2. With respect to claim 2, Appellants contend that Olivier fails to disclose “administrators with the authority to grant enrollment to the one or more end user persons,” as recited in dependent claim 2 (see App. Br. 12-14). Issue on Appeal Has the Examiner erred in finding Olivier anticipates the invention as recited in claims 1-9, 31-39, and 41-49? ANALYSIS We have reviewed the Examiner’s rejections in light of Appellants’ arguments that the Examiner has erred. We disagree with Appellants’ conclusions. We adopt as our own the findings and reasons set forth by the Examiner in the action from which this appeal is taken and the reasons set 1 Separate patentability is not argued for claims 3-9, 31-39, and 41-49. Appeal 2010-007395 Application 10/737,131 4 forth by the Examiner in the Examiner’s Answer in response to Appellants’ Appeal Brief and Reply Brief. We concur with the Examiner that the claims are anticipatied by Olivier. However, we highlight and address specific findings and arguments regarding claims 1 and 2 for emphasis as follows. As to Appellants’ above contention 1, we specifically agree with the Examiner (Ans. 7) that Appellants’ Specification has only provided an exemplary definition and not a required definition that would limit the scope of “collaborative computing community” (id.). The Specification in the Background section states that a “collaborative computing community generally can be defined by (1) a particular context, i.e. the objective of the environment, (2) membership, i.e., the participants in the environment, (3) a set of roles for the members, and (4) resources and tools which can be accessed by the membership in furtherance of the objective of the environment.” (Spec. ¶ [0003] (hereinafter “the four requirements,” emphasis added)). Therefore the phrase “collaborative computing community” is to be given its plain meaning unless inconsistent with the Specification. See In re Zletz, 893 F.2d 319, 321 (Fed. Cir. 1989); Chef America, Inc. v. Lamb-Weston, Inc., 358 F.3d 1371, 1372 (Fed. Cir. 2004). Appellants further contend that “the Federal Circuit has held that were [sic] there is only a single definition in the specification, as there is in the present case, the limitations associated with that particular elements [sic] do become part and partial [sic] of the overall claim.” Reply Br. 3-4, citing Biogen, Inc. v. Berlex Labs., Inc., 318 F.3d 1132, 1139-40 (Fed. Cir. 2003) (limiting both method and apparatus claims “to conform with the basis on which the invention was presented in the specification"). We disagree with Appellants on this point, and note that claim construction in the patent Appeal 2010-007395 Application 10/737,131 5 litigation context of Biogen is different than that applied during examination in the Patent Office. During prosecution, “the PTO applies to the verbiage of the proposed claims the broadest reasonable meaning of the words in their ordinary usage as they would be understood by one of ordinary skill in the art, taking into account whatever enlightenment by way of definitions or otherwise that may be afforded by the written description contained in the applicant's specification.” In re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997). As pointed out above, Appellants’ Specification has only provided an exemplary definition and not a required definition that would limit the scope of “collaborative computing community,” i.e., “[a] collaborative computing community generally can be defined by . . . .” Spec. ¶ [0003] (emphasis added). The Examiner has found the phrase “collaborative computing community” to encompass a computer network-based online community by way of collaborative emailing or chatting (Ans. 7). We find that this construction of the terms “collaborative computing community” to be both reasonable and consistent with the Specification2 (id.). Appellants have not presented any persuasive evidence to convince us that the Examiner’s interpretation of “collaborative computing community” is in error. Given the above construction, the Examiner correctly points out (Ans. 3) that the “collaborative computing community” is met by Olivier’s group 2 See In re Prater, 415 F.2d 1393, 1404-05 (CCPA 1969) and In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1369, (Fed. Cir. 2004) (During examination of a patent application, pending claims are given their broadest reasonable construction consistent with the specification.) Appeal 2010-007395 Application 10/737,131 6 forums, such as web-based discussion boards, chat, online clubs, USENET newsgroups, voicemail, instant messaging, web browsing side channel communities, and online gaming rendezvous (citing to Olivier, Abstract). In addition, even if we were to adopt the definition that Appellants have proposed, we note that the sections in Olivier that have been cited by the Examiner (Ans. 3-8 and see Olivier, Abstract; Figs. 2, 3A, and 7; col.14, l. 55 to col. 15, l. 21 and col. 17, ll. 7-39) meet the above-mentioned four requirements. By way of example, Olivier’s chat room corresponds to the particular context; Olivier’s subscription corresponds to the membership; Olivier’s user, moderator, approval-user correspond to the roles for the subscribers; and Olivier’s servers correspond to the resources and tools. As to above contention 2, we agree with the Examiner’s analysis (Ans. 7-8) in response to Appellants’ arguments (App. Br. 12-14). The Examiner correctly points out that Olivier discloses an initiating user that may act as an administrator (Ans. 7-8, citing Olivier, col. 15, l. 57 to col 16, l. 10) and a special approval user that “may also be granted with authority to approve or reject a user’s subscription.” (Ans. 8 (citing Olivier, col. 17, ll. 7-20)). Because Olivier discloses a special approval user, Appellants’ contention is not persuasive of Examiner error. CONCLUSIONS (1) The Examiner did not err in rejecting claims 1-9, 31-39, and 41- 49 under 35 U.S.C. § 102(b) as being anticipated by Olivier. (2) Claims 1-9, 31-39, and 41-49 are not patentable. Appeal 2010-007395 Application 10/737,131 7 DECISION The Examiner’s rejection of claims 1-9, 31-39, and 41-49 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). AFFIRMED peb Copy with citationCopy as parenthetical citation