Ex Parte Aggarwal et al

Patent Trial and Appeal Board

Nov 19, 2013

10976558 (P.T.A.B. Nov. 19, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte GAGAN AGGARWAL, NINA MISHRA, and
BINYAMIN PINKAS
___________

Appeal 2011-012898
Application 10/976,558
Technology Center 3600
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Before MEREDITH C. PETRAVICK, NINA L. MEDLOCK, and
HYUN J. JUNG, Administrative Patent Judges.

PETRAVICK, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2011-012898
Application 10/976,558

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STATEMENT OF THE CASE
Gagan Aggarwal et al. (Appellants) seek our review under 35 U.S.C.
§ 134 of the final rejection of claims 1-7 and 10-20. We have jurisdiction
under 35 U.S.C. § 6(b).

SUMMARY OF DECISION
We REVERSE.1

THE INVENTION
Claim 1, reproduced below, is illustrative of the subject matter on
appeal.
1. A method for determining a value of an
element, having a k-th rank, where k is a pre-
selected number, comprising:
using a first computer to calculate a
combined total number of elements in a first
dataset managed by a first party and using a
second computer to calculate a total number of
elements in a second dataset managed by a second
party;
prohibiting each party access to each other's
dataset;
ranking the elements within each dataset;
using the first computer to compute a total
number of elements in the first dataset having a
value less than a test value and using the second
computer to compute a total number of elements in

1 Our decision will make reference to the Appellants’ Appeal Brief (“App.
Br.,” filed Oct. 13, 2010) and Reply Brief (“Reply Br.,” filed Apr. 4, 2011),
and the Examiner’s Answer (“Ans.,” mailed Feb. 4, 2011).

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the second dataset having a value less than the test
value without exchanging a number of elements
with each data between the two computers;
using the first computer to compute a total
number of elements in the first dataset having a
value greater than the test value and using the
second computer to compute a total number of
elements in the second dataset having a value
greater than the test value; and
for each of the first and second computers,
using the computer to set the value of the element,
having the k-th rank, equal to the test value, if the
total number of elements having values less than
the test value is ≤ the k-th rank minus one, and the
total number of elements having values greater
than the test value is ≤ the total number of
elements minus the k-th rank.

THE REJECTIONS
The Examiner relies upon the following as evidence of
unpatentability:
Micali U.S. 5,615,269 Mar. 25, 1997

The following rejections are before us for review:
1. Claims 1-7 and 10-20 are rejected under 35 U.S.C. § 112, first
paragraph, as failing to comply with the enablement
requirement.
2. Claims 1-7 and 10-20 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Micali.
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Application 10/976,558

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ISSUES
The first issue is whether the Examiner has established a prima facie
showing that claims 1-7 and 10-20 fail to comply with the enablement
requirement.
The second issue is whether the Examiner has established a prima
facie showing that claims 1-7 and 10-20 are unpatentable over Micali.

FINDINGS OF FACT
We find that the findings of fact, which appear in the Analysis below,
are supported by at least a preponderance of the evidence. Ethicon, Inc. v.
Quigg, 849 F.2d 1422, 1427 (Fed. Cir. 1988) (explaining the general
evidentiary standard for proceedings before the Office).

ANALYSIS
The rejection of claim 1-7 and 10-20 under § 112, first paragraph, as failing
to comply with the enablement requirement
We are persuaded by the Appellants’ argument (App. Br. 13-14 and
Reply Br. 3-5) that the Examiner failed to establish a prima facie showing
that claims 1-7 and 10-20 fail to comply with 35 U.S.C. §112, first
paragraph’s enablement requirement.
When rejecting a claim for lack of enablement, the PTO bears the
initial burden of setting forth a reasonable explanation as to why the scope of
the claim is not adequately enabled by the description provided in the
specification. In re Wright, 999 F.2d 1557, 1561-62 (Fed. Cir. 1993). The
test for compliance with the enablement requirement is whether the
disclosure, as filed, is sufficiently complete to enable one of ordinary skill in
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the art to make and use the claimed invention without undue
experimentation. In re Wands, 858 F.2d 731, 737 (Fed. Cir. 1988). Factors
that may be considered in determining whether a disclosure would require
undue experimentation include (1) the quantity of experimentation
necessary, (2) the amount of direction or guidance presented, (3) the
presence or absence of working examples, (4) the nature of the invention,
(5) the state of the prior art, (6) the relative skill of those in the art, (7) the
predictability or unpredictability of the art, and (8) the breadth of the claims.
Wands, 858 F.2d at 737.
In concluding there is no enabling disclosure, the Examiner does not
address the Wands factors or otherwise explain why one of ordinary skill in
the art would have to engage in undue experimentation to practice the
claimed invention. The Examiner merely asserts that each of the claims
contains limitations not described in the Specification in such a way as to
enable one skilled in the art to make and/or use the invention. See Ans. 3-6.
Because there is no substantive explanation of why one of ordinary skill in
the art would have to engage in undue experimentation to practice these
aspects, the Examiner has failed to establish a prima facie case of non-
enablement of claims 1-17 and 10-20.
Accordingly, the rejection of claims 1-7 and 10-20 under 35 U.S.C.
§ 112, first paragraph, as failing to comply with the enablement requirement
is reversed.

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The rejection of claims 1-7 and 10-20 under § 103(a) as being unpatentable
over Micali
We are persuaded by the Appellants’ argument (App. Br. 20-30 and
Reply Br. 5-6) that the Examiner failed to establish a prima facie showing
that claims 1-7 and 10-20 are unpatentable under 35 U.S.C. § 103(a) over
Micali. In rejecting claims under 35 U.S.C. § 103(a), the examiner bears the
initial burden of establishing a prima facie case of obviousness. In re
Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992); see also In re Piasecki, 745
F.2d 1468, 1472 (Fed. Cir. 1984). Only if this initial burden is met does the
burden of coming forward with evidence or argument shift to the appellant.
See Oetiker, 977 F.2d at 1445; see also Piasecki, 745 F.2d at 1472. As the
Examiner seems to admit (see Ans. 8), the Examiner’s rejection fails to
address all of the limitations of claims 1-7 and 10-20. See Ans. 6.
Since the Examiner fails to establish a prima facie showing of
obviousness, we reverse the rejection of claims 1-7 and 10-20 under
35 U.S.C. §103(a) as being unpatentable over Micali.

DECISION
The decision of the Examiner to reject claims 1-7 and 10-20 is
reversed.

REVERSED

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