HONG LI et al.

Patent Trials and Appeals Board

Jan 21, 2022

2020002493 (P.T.A.B. Jan. 21, 2022)

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. 13/535,919 06/28/2012 HONG LI CN920110062US1_8150-0225 2344 112978 7590 01/21/2022 Cuenot, Forsythe & Kim, LLC 20283 State Road 7, Suite 300 Boca Raton, FL 33498 EXAMINER BLOOMQUIST, KEITH D ART UNIT PAPER NUMBER 2178 NOTIFICATION DATE DELIVERY MODE 01/21/2022 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): ibmptomail@iplawpro.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte HONG LI, LEI REN, YUN SHENG WANG, and JUN WEI ZHAO ____________ Appeal 2020-002493 Application 13/535,919 Technology Center 2100 ____________ Before JEAN R. HOMERE, DEBRA K. STEPHENS, and JOHN A. EVANS, Administrative Patent Judges. EVANS, Administrative Patent Judge. DECISION ON REQUEST FOR REHEARING Appellant1 requests rehearing (“Request,” “Req.”) of the Patent Trial and Appeal Board’s (“Board”) Decision mailed August 31, 2021 (“Decision”), in which we affirmed the Examiner’s decision to reject Claims 41-58 under 35 U.S.C. § 103.2 We deny Appellant’s request. 1 We use the word “Appellant” to refer to “Applicant” as defined in 37 C.F.R. § 1.42. The Appeal Brief identifies IBM Corporation, as the real party in interest. Appeal Br. 1. 2 The Examiner rejected Claims 41, 42, 45-48, 51-54, 57, and 58 under 35 U.S.C. § 103(a) as obvious over Curtis (US 2003/0133041 A1; published July 17, 2003) and Ornstein (US 2005/0248790 A1; published November 10, 2005). The Examiner rejected Claims 43, 44, 49, 50, 55, and 56 under 35 U.S.C. § 103(a) Curtis, Ornstein, and Hanlon (US 2005/0022113 A1; Appeal 2020-002493 Application 13/535,919 2 ANALYSIS Independent Claim 41 recites, in relevant part, “receiving, by the computer, a single structuralized file that includes a first portion and a second portion.” Independent Claims 47 and 53 recite commensurate limitations. Appellant notes the Examiner cited Ornstein as teaching “a package which is a single file containing all component pieces of a 6 modular document.” Req. 2 (citing Ornstein, ¶ 38). However, Appellant contends “the actual package 200 (or container) disclosed by Ornstein is not a single file.” Id. Appellant argues because Ornstein’s package (container) comprises multiple files, the package cannot be a single, structuralized file. Req. 2 (citing Appeal Br. 8-12). Appellant acknowledges the Examiner finds the disclosed package is a single file. Reply Br. 2 (quoting Ornstein3, ¶ 38) (“Often a package will be a single file, referred to in this application as a container.” Appellant further acknowledges “[a]n XML file is a structuralized file,” but argues “[h]owever, the Examiner has not presented any evidence to support a finding that the package itself of Ornstein is a structuralized file.” Req. 3 (quoting Reply Br. 2). “Appellant agrees with the Board’s finding that ‘the disclosed container comprises three separate files,” which is a finding consistent with Appellant’s arguments made throughout the Appeal. However, the claims explicitly recites “a single structuralized file that published January 27, 2005). Dec. 3. All citations herein to the references are by reference to the first named inventor/author only 3 The actual citation mistakenly points to Curtis. Appeal 2020-002493 Application 13/535,919 3 includes a first portion and a second portion.” “In Ornstein, the separate portions (e.g., the ‘EnglishRollup.xml’ and ‘FrenchRollup.xml’) are different files - not portions of a single file, as claimed.” Req. 4. Appellant’s argument turns on the definition of “a single structuralized file that includes a first portion and a second portion,” as recited in each of the independent claims. The Request argues the Board fails to give the above claim recitation its proper definition. The words of a claim are generally given their ordinary and customary meaning as understood by a person of ordinary skill in the art in question at the time of the invention when read in the context of the specification and prosecution history. See Phillips v. AWH Corp., 415 F.3d 1303, 1313 (Fed. Cir. 2005) (en banc). To be his own lexicographer, an Appellant must use a “special definition of the term [that] is clearly stated in the patent specification or file history.” Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1580 (Fed. Cir. 1996); see also CCS Fitness, Inc. v. Brunswick Corp., 288 F.3d 1359, 1366 (Fed. Cir. 2002) (“[T]he claim term will not receive its ordinary meaning if the patentee acted as his own lexicographer and clearly set forth a definition of the disputed claim term in either the specification or prosecution history.”). However, the Request fails to indicate where the disputed claim recitation is defined, either in Appellant’s Specification, or in the prosecution history. Appellant admits the package/container, disclosed by Ornstein, “appears to be a generic description of a package, as that term is used in the art.” Appeal Br. 10. Having so admitted, where Appellant disputes the Board’s definition, the Board expects Appellant to proffer objective evidence of how a person of ordinary skill in the art would interpret the Appeal 2020-002493 Application 13/535,919 4 phrase at issue. However, the Request merely provides arguments of counsel. Arguments of counsel cannot take the place of factually supported objective evidence. See In re Huang, 100 F.3d 135, 139-140 (Fed. Cir. 1996). Moreover, attorney argument is not evidence. In re Pearson, 494 F.2d 1399, 1405 (CCPA 1974). Nor can it take the place of evidence lacking in the record. Meitzner v. Mindick, 549 F.2d 775, 782 (CCPA 1977). Lawyer’s arguments and conclusory statements, which are unsupported by factual evidence, are entitled to little probative value. In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997). Appellant argues because Ornstein’s package is comprised of multiple files, the Examiner’s cited passages do not teach “a single structuralized file that includes a first portion and a second portion.” Req. 2 (citing Appeal Br. 8-12). Ornstein discloses: “[o]ften a package will be a single file, referred to in this application as a container” and “[w]hile packages often correspond directly to a single file, this is not necessarily always so.” Ornstein, ¶ 38 (cited by the Examiner). We find this disclosure fairly teaches the concept that a container/package file may be a “single” file, as claimed. Ornstein discloses: “[a] package is a logical entity that holds a collection of related parts.” Ornstein, ¶ 36. We find this disclosure fairly teaches the concept that a container/package is a “structuralized” entity, as claimed. Ornstein discloses Figure 2: illustrates an exemplary package 200 holding a document comprising a number of parts including an XML markup part 202 representing the document, a font part 204 describing a font that is used in the document, a number of page parts 206 describing pages of the document, and a picture part representing a picture within the document. Appeal 2020-002493 Application 13/535,919 5 Ornstein, ¶ 36. We are not persuaded that a person of ordinary skill in the art would believe that an XML file could not be a portion of a structuralized “container/package.” Thus, we find this disclosure fairly teaches the concept of “a first portion and a second portion,” as claimed. In view of the foregoing, we are not persuaded that we misapprehend, or have overlooked Appellant’s arguments in this regard. Appellant further argues: Appellant presented a second set of arguments, which are found on pages 12-18 of the Appeal Brief and on pages 6-11 of the Reply Brief Appellant has been unable to identify where the Board either identified and/or addressed these arguments in the Decision on Appeal. Rather, the Board’s analysis appears to be focused solely on the first set of arguments. Consequently, Appellant respectfully submits that the Board has misapprehended and/or overlooked these additional arguments that were previously-presented by Appellant within the Appeal Brief and the Reply Brief. Req. 4-5. Rather than apprising the Board as to specifically which arguments have been allegedly “misapprehended and/or overlooked,” Appellant attempts to incorporate these presumptive arguments by reference. See Gen. Access Sols., Ltd. v. Sprint Spectrum L.P., 811 Fed. Appx. 645 (Fed. Cir. May 11, 2020) (“The prohibition against incorporation of arguments from other documents serves various policy goals, including to “minimize the chance that an argument may be overlooked” and to “eliminate[] abuses that arise from incorporation and combination.” Rules of Practice for Trials Before the Patent Trial and Appeal Board and Judicial Review of Patent Trial and Appeal Board Decisions, 77 Fed. Reg. 48,617 (Aug. 14, 2012)). “Otherwise, the Board would be forced to ‘play archeologist with the record’ Appeal 2020-002493 Application 13/535,919 6 and search for arguments that might have made outside of the parties’ briefing.” Id. “A brief must make all arguments accessible to the judges, rather than ask them to play archaeologist with the record.” DeSilva v. DiLeonardi, 181 F.3d 865, 866-7 (7th Cir. June 29, 1999). Appellant argues: “Appellant presented a second set of arguments, which are found on pages 12-18 of the Appeal Brief.” Req. 4. However, the cited portion of the Appeal Brief does not refer to the Final Action. See Appeal Br. 12 (“Referring to page 4 of the Eighth Office Action, the Examiner articulated the following reasoning to support the Examiner’s conclusion that it would have been obvious to modify Curtis in view of Ornstein to arrive at the claimed invention: . . .”). We note that the citation, attributed to the Examiner does not appear at page 4 of the Final Action and thus, the Final Action is not the cited “Eighth Office Action.” The Board does not review the prosecution of an application. “The Board, in its decision, may affirm or reverse the decision of the examiner in whole or in part on the grounds and on the claims specified by the examiner.” 37 CFR 41.50(a)(1). Any such prosecution as may have taken place prior to the Final Action does not constitute “the grounds and . . . claims specified by the examiner.” See M.P.E.P. § 1213. We respectfully decline Appellant’s invitation to search for “[t]hese additional arguments” that are allegedly “misapprehended and/or overlooked.” Appellant further argues: “Appellant presented a second set of arguments [at] pages 6-11 of the Reply Brief.” Req. 4. Appellant argues: “the Examiner has not presented any evidence to support a finding that the package itself of Ornstein is a structuralized file.” Id. Appeal 2020-002493 Application 13/535,919 7 Contrary to Appellant, we fully addressed this argument in our Decision, as discussed above. Thus, we have considered the arguments raised by Appellant in the Request for Rehearing, but Appellant has not persuaded us that we have misapprehended and/or overlooked Appellant’s arguments in any way. Although we have considered the Decision in light of the Request for Rehearing, we decline to modify the Decision in any respect. CONCLUSION Appellant’s Request for Rehearing is DENIED. Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 41, 42, 45- 48, 51-54, 57, 58 103 Curtis, Ornstein 41, 42, 45-48, 51-54, 57, 58 43, 44, 49, 50, 55, 56 103 Curtis, Ornstein, Hanlon 43, 44, 49, 50, 55, 56 Overall Outcome 41-58 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). DENIED