Ex Parte Russo et al

Patent Trial and Appeal Board

Jan 29, 2013

10737131 (P.T.A.B. Jan. 29, 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.
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.

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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).
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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.
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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
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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.)
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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.

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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

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