Black Hills IP Holdings, LLCDownload PDFPatent Trials and Appeals BoardOct 21, 20212021000439 (P.T.A.B. Oct. 21, 2021) 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. 14/281,513 05/19/2014 Steven W. Lundberg 3431.045US1 7763 182591 7590 10/21/2021 SLW / Black Hills IP Holdings P.O. BOX 2938 MINNEAPOLIS, MN 55402 EXAMINER YOUNG, MICHAEL C ART UNIT PAPER NUMBER 3689 NOTIFICATION DATE DELIVERY MODE 10/21/2021 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): SLW@blackhillsip.com uspto@slwip.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte STEVEN W. LUNDBERG ____________ Appeal 2021-000439 Application 14/281,513 Technology Center 3600 ____________ Before JOHN A. JEFFERY, JUSTIN BUSCH, and SCOTT B. HOWARD, Administrative Patent Judges. JEFFERY, Administrative Patent Judge. DECISION ON APPEAL Under 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s decision to reject claims 1–20. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. 1 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies the real party in interest as Black Hills IP Holdings, LLC. Appeal Br. 2. Appeal 2021-000439 Application 14/281,513 2 STATEMENT OF THE CASE Appellant’s invention is a patent portfolio management system that generates and displays associated information and analytics. In one implementation, the system displays a world map and highlights countries where certain patents issued or patent applications were filed. See generally Spec. ¶¶ 20, 57, 156; Fig. 43. Claim 1 is illustrative: l. A computer-implemented method for creating a new patent portfolio by a portfolio management system, the method comprising: generating a graphical user interface including a first user interface element for displaying a profile of the portfolio management system and a second user interface element for receiving a command to initiate creation of the new patent portfolio; in response to receiving the command to initiate creation of the new patent portfolio, identifying at least one patent or patent application related to the profile within the patent portfolio management system; automatically assigning a name for the new patent portfolio using a profile identifier and at least one of a patent owner name, an inventor name, or a region name; creating the new patent portfolio with the automatically assigned name within the patent portfolio management system; adding the identified at least one patent or patent application related to the profile to the new patent portfolio; generating a map of the world with indications of countries where the at least one patent has issued or the at least one patent application has been filed; identifying, for each country where the at least one patent has issued or patent application has been filed, a set of prior art documents related to the at least one patent or patent application for the respective country; Appeal 2021-000439 Application 14/281,513 3 identifying, for the respective set of prior art documents of each country, a set of prior art keywords; identifying a set of matter keywords for the at least one patent or patent application; determining, for each country, a set of unique keywords based on keywords appearing uniquely in the set of matter keywords compared to the respective set of prior art keywords; enabling a user of the patent portfolio management system to access analytics and the map for the new patent portfolio; displaying, in the first user interface element, an image of the map of the world, wherein countries on the map are highlighted corresponding to the indications and wherein for each highlighted country the respective set of unique keywords is displayed; updating the second user interface element for receiving a command corresponding to each of the indications to initiate creation of a country specific patent portfolio; and in response to receiving a respective command to initiate creation of the country specific patent portfolio, creating the country specific patent portfolio corresponding to the respective country including the at least one patent that has issued for that country or the at least one patent application that has been filed for that country. RELATED APPEALS On pages 3 and 4 of the Appeal Brief, Appellant identifies the following related appeals: Application Number Appeal Number Appeal Status 10/128,141 2009-005709 Decision mailed Mar. 23, 2010 10/874,486 2009-006404 Decision mailed Aug. 2, 2010 11/061,383 2011-009966 Decision mailed Jan. 31, 2014 Appeal 2021-000439 Application 14/281,513 4 11/061,312 2012-004166 Decision mailed Nov. 4, 2014 13/309,080 2015-000319 Decision mailed May 27, 2016 13/309,127 2015-000321 Decision mailed July 26, 2017 13/309,039 2015-003180 Decision mailed Sept. 23, 2016 13/309,146 2015-007422 Decision mailed June 1, 2016 13/309,060 2016-000912 Decision mailed Aug. 25, 2017 11/888,632 2016-001687 Decision mailed Jan. 19, 2017 13/309,200 2016-002121 Decision mailed Aug. 28, 2017 13/310,279 2016-002680 Decision mailed Aug. 30, 2017 12/605,030 2016-002792 Decision mailed Sept. 1, 2017 13/310,368 2016-006797 Decision mailed Aug. 30, 2017 13/573,803 2016-007186 Decision mailed July 28, 2017 13/464,598 2016-007415 Decision mailed July 31, 2017 13/408,877 2016-007623 Decision mailed Sept. 6, 2017 13/310,322 2016-007787 Decision mailed Sept. 20, 2017 13/253,936 2016-008030 Decision mailed Aug. 3, 2017 13/408,917 2017-000280 Decision mailed Sept. 12, 2017 11/098,761 2017-000386 Decision mailed Nov. 17, 2017 14/010,376 2017-002337 Decision mailed Sept. 8, 2017 14/483,903 2017-003702 Decision mailed Sept. 25, 2017 14/094,542 2017-003815 Decision mailed Sept. 18, 2017 14/010,391 2017-004158 Decision mailed Oct. 25, 2017 14/010,380 2017-004159 Decision mailed Sept. 27, 2017 14/010,400 2017-004188 Decision mailed Nov. 3, 2017 13/409,189 2017-006390 Decision mailed Dec. 18, 2017 Appeal 2021-000439 Application 14/281,513 5 13/310,452 2017-006642 Decision mailed Sept. 29, 2017 13/253,811 2017-011247 Decision mailed Nov. 1, 2017 14/608,520 2017-011549 Decision mailed Nov. 27, 2017 14/628,941 2017-011552 Decision mailed Dec. 6, 2017 13/679,830 2018-009240 Decision mailed Sept. 30, 2019 14/826,006 2019-000099 Decision mailed Dec. 19, 2019 14/154,054 2019-005339 Decision mailed Apr. 24, 2020 15/211,917 2020-001220 Decision mailed June 27, 2021 We add the following related appeal: Application Number Appeal Number Appeal Status 13/309,102 2015-000320 Decision mailed June 1, 2016 Appellant also informs us of related appeals in connection with Application Numbers 15/211,917; 14/257,118; 14/264,571; 14/267,398; 14/269,284; 14/272,665; and 14/272,674. Appeal Br. 4. No Board decisions, however, were rendered in those applications that have since been abandoned. THE REJECTION2 The Examiner rejected claims 1–20 under 35 U.S.C. § 103(a) as unpatentable over Graham (US 2010/0153282 A1; published June 17, 2010), 2 Because the Examiner withdrew the eligibility rejection under 35 U.S.C. § 101 (Ans. 3), that rejection is not before us. Appeal 2021-000439 Application 14/281,513 6 Thomas (US 2011/0288984 A1; published Nov. 24, 2011), Ingargiola (US 2005/0090911 A1; published Apr. 28, 2005), Lee (US 2010/0250340 A1; published Sept. 30, 2010), and Rubinger (US 8,335,998 B1; issued Dec. 18, 2012). Final Act. 10–33.3 FINDINGS, CONCLUSIONS, AND CONTENTIONS Regarding independent claim 1, the Examiner finds that Graham’s portfolio management system creates a new patent portfolio by (1) generating a graphical user interface with the recited interface elements; (2) identifying at least one patent or patent application within the system; (3) creating a new patent portfolio within the system; (4) adding the identified patent or patent application to the new portfolio; (5) enabling a system user to access analytics for the new portfolio; (6) initiating creating patent portfolios; and (7) creating a country-specific patent portfolio corresponding to the respective country including the patent or patent application that issued or was filed for that country. Final Act. 11–19. Although the Examiner acknowledges that Graham’s patents or patent applications that are identified and added to the new portfolio are related to a system profile, the Examiner cites Thomas as teaching this feature in concluding that the claim would have been obvious. Final Act. 20–22. The Examiner also acknowledges that the Graham/Thomas system does not automatically assign a name for the new portfolio as claimed, but 3 Throughout this opinion, we refer to (1) the Final Rejection mailed January 28, 2020 (“Final Act.”); (2) the Appeal Brief filed June 15, 2020 (“Appeal Br.”); (3) the Examiner’s Answer mailed August 21, 2020 (“Ans.”); and (4) the Reply Brief filed October 21, 2020 (“Reply Br.”). Appeal 2021-000439 Application 14/281,513 7 cites Ingargiola for teaching this feature. Final Act. 23–24. The Examiner also acknowledges that the Graham/Thomas/Ingargiola system does not (1) generate a world map indicating countries where the at least one patent issued or patent application was filed; (2) display an image of that map where countries on the map are highlighted corresponding to the indications; and (3) update the second user interface element for receiving a command corresponding to each indication, but cites Lee for teaching those features. Final Act. 25–27. The Examiner also acknowledges that the Graham/Thomas/ Ingargiola/Lee system does not (1) identify, for each country where the at least one patent issued or patent application was filed, a set of related prior art documents; (2) identify a set of prior art keywords for the respective set of prior art documents for each country; (3) identify a set of matter keywords for the patent or application; and (3) determine, for each country, a set of unique keywords based on keywords appearing uniquely in the set of matter keywords compared to the respective set of prior art keywords, but cites Rubinger for teaching these features. Final Act. 27–29. Based on the cited references’ collective teachings, the Examiner concludes that claim 1 would have been obvious. Final Act. 10–29. Appellant argues that Rubinger does not teach or suggest the (1) three recited identifying steps that identify, among other things, prior art keywords and matter keywords, and (2) determining a set of unique keywords based on keywords appearing uniquely in the matter keywords set compared to the respective prior art keyword set as claimed.4 Appeal Br. 19–21; Reply Br. 4 Appellant refers to the recited identification and determination limitations collectively as “keyword elements”). See Appeal Br. 19. Appeal 2021-000439 Application 14/281,513 8 2–4. According to Appellant, Rubinger does not identify sets of prior art keywords or matter keywords, much less determine a set of unique keywords based on comparing the prior art and matter keyword sets as claimed. Appeal Br. 19–21; Reply Br. 2–4. ISSUE Under § 103, has the Examiner erred by finding that Graham, Thomas, Ingargiola, Lee, and Rubinger collectively would have taught or suggested (1) identifying, for each country where the at least one patent issued or patent application was filed, a set of related prior art documents; (2) identifying a set of prior art keywords for the respective set of prior art documents for each country; (3) identifying a set of matter keywords for the patent or application; and (4) determining, for each country, a set of unique keywords based on keywords appearing uniquely in the set of matter keywords compared to the respective set of prior art keywords as recited in claim 1 (“the keyword elements limitation”)? ANALYSIS As noted above, this dispute hinges on claim 1’s keyword elements limitation that recites, in pertinent part, three distinct sets of keywords: (1) prior art keywords; (2) matter keywords; and (3) unique keywords. Under the terms of claim 1, the latter set, namely the unique keyword set, is determined by comparing keywords in the matter keyword set with keywords in the prior art keyword set. Based on this comparison, the unique keyword set contains those keywords unique in the matter keyword set compared to the prior art keyword set. Appeal 2021-000439 Application 14/281,513 9 The Specification’s paragraph 57 explains the significance of this determination. According to that paragraph, module 218 performs a keyword analysis on a first patent matter and associated prior art documents based on keyword occurrences in the matter and the documents. Spec. ¶ 57. Based on that analysis, the module then identifies keywords occurring uniquely in the first patent matter. Id. Notably, these unique keywords are considered claim elements that potentially differentiate the claimed invention in the first patent matter over the prior art. See id. Thus, determining the set of unique keywords in claim 1 provides a way for the system to indicate at least potential patentability of an invention associated with particular patent matter over the prior art—a potential patentability indication displayed for each country highlighted on a world map in the claim’s displaying clause. Despite this key aspect of the claimed invention, the Examiner’s rejection is not a model of clarity as to what exactly in the cited references corresponds to the prior art and matter keyword sets, let alone the unique keyword set that is determined based on comparing the prior art and matter keyword sets as claimed. In the rejection, the Examiner acknowledges that Graham, Thomas, Ingargiola, and Lee lack the recited keyword elements limitation, including its respective keyword set identifications and unique keyword set determination. See Final Act. 27. The Examiner nevertheless refers to Graham’s paragraph 206 that is said to provide a searching module via a user interface that allows for keyword searching and “information related to the keywords to be generated.” Id. The Examiner then refers to Rubinger for identifying (1) a set of prior art documents for each country as claimed, Appeal 2021-000439 Application 14/281,513 10 and (2) specific “features and attributes” that are discussed in each country’s prior art documents “or wherever the specific patent document was filed.” Id. According to the Examiner, by allowing users to submit any “attribute or feature” into an interactive map, Rubinger’s system generates a global map based on the specific entered data set. Id. at 28. This functionality is said to disclose users inputting keywords into the system and generating an interactive world map. See id.; see also Ans. 6–7. But even if we were to accept these findings, the Examiner still does not identify which elements in the cited prior art—including Graham and Rubinger—correspond to the three distinct sets of keywords in claim 1, namely the sets of (1) prior art keywords; (2) matter keywords; and (3) unique keywords. Moreover, not only does the Examiner fail to identify the unique keywords in the cited prior art, the Examiner does not explain how they are determined, much less by comparing keywords in the matter keyword set with keywords in the prior art keyword set as claimed. To be sure, Graham’s intangible asset management system has a search engine that can search keywords and produce search results that can be viewed, edited, or saved in a database. See Graham Abstract; ¶ 206. Moreover, Rubinger’s system analyzes content of relevant patents and patent applications to allow users to not only discern critical technology and product trends, but also prior art references. Rubinger Abstract. To this end, Rubinger’s system generates maps detailing specific attributes of interest, such as an assignee. See Rubinger col. 5, ll. 8–26; Fig. 1E. By layering various generated maps, users can view areas of interest easily. See Rubinger col. 5, ll. 28–31. Appeal 2021-000439 Application 14/281,513 11 Based on this functionality, a user-entered attribute, such as an assignee in Rubinger, could be a “keyword” associated with either a patent matter or a prior art document, particularly since assignees are displayed prominently on issued patents as Rubinger itself shows on its front page. Still, it is unclear which of these attributes correspond to the recited sets of prior art keywords and matter keywords, respectively, much less unique matter keywords as compared to the prior art keywords. Nor will we speculate in that regard here in the first instance on appeal. In short, despite the Examiner’s lengthy analysis in the rejection and Answer regarding the cited prior art’s collective teachings, the Examiner does not squarely address the keyword elements limitation with sufficient particularity to establish obviousness on this record. Therefore, we are persuaded that the Examiner erred in rejecting (1) independent claim 1; (2) independent claims 5 and 9 that recite commensurate limitations; and (3) the dependent claims for similar reasons. Because this issue is dispositive regarding our reversing the Examiner’s rejection of these claims, we need not address Appellant’s other associated arguments. CONCLUSION In summary: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1–20 103 Graham, Thomas, Ingargiola, Lee, Rubinger 1–20 REVERSED Copy with citationCopy as parenthetical citation