Ex Parte Barnett et al

Board of Patent Appeals and Interferences

Nov 8, 2007

09759498 (B.P.A.I. Nov. 8, 2007)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte PHILLIP W. BARNETT, ASHLEY M. BROOK,
and JOSEPH WYSE
____________

Appeal 2007-0593
Application 09/759,4981
Technology Center 2100
____________

Decided: November 8, 2007
____________

Before LANCE LEONARD BARRY, ALLEN R. MACDONALD, and
CAROLYN D. THOMAS, Administrative Patent Judges.

THOMAS, C., Administrative Patent Judge.

DECISION ON APPEAL

1 Filing date: January 12, 2001. The real party in interest is Knowledge
Sphere, Inc.
Appeal 2007-0593
Application 09/759,498

STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134 from a final rejection
of claims 139-158 entered January 9, 2004. We have jurisdiction under
35 U.S.C. § 6(b).
Appellants invented a computerized tool for facilitating analysis of the
results of database searches so as to assist in making strategic and tactical
business decisions. (Specification 1:9-13).
The appeal contains claims 139-158. Claims 1-138 are canceled.
Claim 139 is the only independent claim. As best representative of the
disclosed and claimed invention, claim 139 is reproduced below:
139. A computerized tool for facilitating forward looking
strategic analyses of a collection of technical documents each having a
searchable text and associated bibliographic information including a
source and a date, comprising the computer-assisted steps:
performing a first search to identify a subset (second
collection) of documents focused on a particular field,
identifying those documents in the subset relevant to
each of "m" "actions";
identifying those documents in the subset relevant to
each of "n" "objects";
combining each of the "m" actions with each of the "n"
objects to construct an "m" x "n" array of "cells", such that each of the
cells is associated only with the documents in said subset that were
identified as relevant both to the respective action and to the
respective object;
applying at least two scoring metrics to the bibliographic
data for the documents associated with each of the cells, at least one
of the scoring metrics including a time weighted predictive factor; and
generating a graph showing each of the applied scoring
metrics for each of the array cells.

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REFERENCES
The references relied upon by the Examiner in rejecting the claims on
appeal are as follows:
Braden-Harder US 5,933,822 Aug. 3, 1999
Hazlehurst US 5,974,412 Oct. 26, 1999
Rivette US 5,991,751 Nov. 23, 1999

The Examiner entered a Final Rejection on January 9, 2004 with the
following rejections which are before us for review:
Claim 139 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Hazlehurst in view of Braden-Harder.
Claims 140-158 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Hazlehurst in view of Braden-Harder and further in view
of Rivette.
Appellants appealed from the Final Rejection and filed an Appeal
Brief (Br.) on August 17, 2005 and a Summary to Amend Appeal Brief on
April 7, 2006. The Examiner mailed an Examiner’s Answer (Answer) on
July 3, 2006. Appellants filed a Reply Brief (Reply Br.) on September 12,
2006.
We reverse.
We also use our authority under 37 C.F.R. § 41.50(b) to enter a new
ground of rejection of claims 139-158 under 35 U.S.C. § 101.

ISSUES
Whether Appellants have shown that the Examiner erred in rejecting
representative claim 139 based on obviousness.

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Application 09/759,498

FINDINGS OF FACT
The following findings of fact (FF) are supported by a preponderance
of the evidence.

The Invention
1. Appellants state at page 10, lines 11-16 of the Specification, that
“[t]he third operator shown is INTERRELATE SELECTED DATA 3005.
Certain of the search terms (‘actions’) as given by DEFINE TERMS 3004
are used along one (vertical) axis of a two-dimensional array. Other search
terms (‘objects’) as given by DEFINE TERMS 3004 is used along the
orthogonal (horizontal) axis of a two-dimensional array. Together these
search terms form the Landscape made up of cells, and the interaction of
search terms within the Landscape.”
2. Appellants further state at page 11, lines 18-21, that “Figure 4
illustrates one of the basic concepts of a technology Field composed of cells
formed by the intersection of ‘action’ search terms along an y-axis and
‘object’ search terms along a y-axis. ‘Action’ and ‘object’ are for
identification and have no significance beyond terminology. Examples of
‘actions’ and ‘objects’ include production methods and applications,
technologies and applications, compounds and indications.”
3. A cell 5001 is an ‘intersection’ of search terms (action 5004 x
objects 5006). (Specification 12:12).

Hazlehurst
4. Hazlehurst discloses that “[t]he collator goodness space 153 is a
one-dimensional space that reduces all information about a document to a
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single real value representing the ‘fit’ of the document with a particular
collator 108.” (Col. 13, ll. 15-19).
5. Hazlehurst also discloses that “[t]he collator goodness space 153 is
described by a list of values in the goodness table 153A (FIG. 11).” (Col.
13, ll. 19-20).
6. Furthermore, Hazlehurst discloses that “[t]he goodness table 153A
(FIG. 11) contains goodness scores for every document in the collator’s
corpus of documents.” (Col. 13, ll. 41-43).

Braden-Harder
7. Braden-Harder describes a “processing [that] involves production,
comparison and weighting of matching logical forms respectively associated
with a search query and each of the retrieved documents.” (Col. 5, ll. 8-11).
8. Braden-Harder discloses that “[e]ach document that has at least
one matching logical forms is heuristically scored, with each different
relation for a matching logical forms being assigned a different
corresponding predefined weight.” (Abstract).
9. In Braden-Harder, “[e]ach remaining document is then
heuristically scored. In particular, each different relation type, i.e., such as
deep subject, deep object, operator and the like, that can occur in a logical
form is assigned a predefined weight.” (Col. 5, ll. 40-44).
10. Braden-Harder discloses “each different type of relation that can
arise in a logical form triple is assigned a corresponding weight, such as
those shown in table 800 in FIG. 8A. For example, as shown, illustrative
relations Dobj, Dsub, Ops and Nadj may be assigned predetermined static
numeric weights of 100, 75, 10 and 10, respectively.” (Col. 16, ll. 21-27).
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PRINCIPLES OF LAW
To establish a prima facie case of obviousness, three basic criteria
must be met. First, there must be some suggestion or motivation, either in
the references themselves or in the knowledge generally available to one of
ordinary skill in the art, to modify the reference or to combine reference
teachings. Second, there must be a reasonable expectation of success.
Finally, the prior art reference (or references when combined) must teach or
suggest all the claim limitations. The teaching or suggestion to make the
claimed combination and the reasonable expectation of success must both be
found in the prior art and not based on applicant’s disclosure. In re Vaeck,
947 F.2d 488, 493 (Fed. Cir. 1991). See MPEP 706.02(j). 8th Edition, Rev. 5,
Aug. 2006.
The Supreme Court in Graham v. John Deere, 383 U.S. 1, 17-18
(1966), stated that three factual inquiries underpin any determination of
obviousness:
Under § 103, the scope and content of the prior art are to be
determined; differences between the prior art and the claims at
issue are to be ascertained; and the level of ordinary skill in the
pertinent art resolved. Against this background, the
obviousness or nonobviousness of the subject matter is
determined. Such secondary considerations as commercial
success, long felt but unsolved needs, failure of others, etc.,
might be utilized to give light to the circumstances surrounding
the origin of the subject matter sought to be patented. As
indicia of obviousness or nonobviousness, these inquiries may
have relevancy.
In rejecting claims under 35 U.S.C. § 103, the Examiner bears the initial
burden of establishing a prima facie case of obviousness. In re Oetiker, 977
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F.2d 1443, 1445 (Fed. Cir. 1992). See also In re Piasecki, 745 F.2d 1468,
1472 (Fed. Cir. 1984). The Examiner can satisfy this burden by showing
some articulated reasoning with some rational underpinning to support the
legal conclusion of obviousness. KSR Int’l. v. Teleflex Inc., 127 S.Ct. 1727,
1741 (2007) (citing In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)). Only if
this initial burden is met does the burden of coming forward with evidence
or argument shift to the Appellants. Oetiker, 977 F.2d at 1445. See also
Piasecki, 745 F.2d at 1472.
Rejections on obviousness grounds cannot be sustained by mere
conclusory statements. KSR, 27 S.Ct. at 1741 (citing Kahn, 441 F.3d 977,
988).
An obviousness analysis commences with a review and consideration
of all the pertinent evidence and arguments. “In reviewing the [E]xaminer’s
decision on appeal, the Board must necessarily weigh all of the evidence and
argument.” Oetiker, 977 F.2d at 1445. “[T]he Board must not only assure
that the requisite findings are made, based on evidence of record, but must
also explain the reasoning by which the findings are deemed to support the
agency’s conclusion.” In re Lee, 277 F.3d 1338, 1344 (Fed. Cir. 2002).
Further, a rejection based on section 103 must rest upon a factual
basis rather than conjecture, or speculation. “Where the legal conclusion [of
obviousness] is not supported by the facts it cannot stand.” In re Warner,
379 F.2d 1011, 1017 (CCPA 1967). See also Lee, 277 F.3d at 1344 and
Kahn, 441 F.3d at 988.
Computer programs claimed as computer listings per se, i.e., the
descriptions or expressions of the programs, are not physical “things.” They
are neither computer components nor statutory processes, as they are not
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“acts” being performed. Such claimed computer programs do not define any
structural and functional interrelationships between the computer program
and other claimed elements of a computer which permit the computer
program's functionality to be realized. In contrast, a claimed computer-
readable medium encoded with a computer program is a computer element
which defines structural and functional interrelationships between the
computer program and the rest of the computer which permit the computer
program's functionality to be realized, and is thus statutory. MPEP
§ 2106.01; See In re Lowry, 32 F.3d 1579, 1583-84 (Fed. Cir. 1994).
A series of steps which is not tied to a particular machine or
apparatus, and which does not transform physical subject matter to a
different state or thing, does not meet the statutory definition of a “process”
and is not patentable subject matter. Ex parte Lundgren, 76 USPQ2d 1385,
1401 (Barrett, J., concurring-in-part and dissenting-in-part).

ANALYSIS
It is our view that the Appellants have shown that the Examiner erred
in rejecting representative claim 139 based on obviousness.
Specifically, it is our view, after consideration of the record before us,
that the evidence relied upon and the level of skill in the particular art would
not have suggested to one of ordinary skill in the art the invention as set
forth in claims 139-158. Accordingly, we reverse.
With respect to claim 139, Appellants argue that “[n]either the
Hazlehurst nor Braden-Harder references provide an analysis tool resulting
in a combined matrix of cells, with each cell associated with documents in
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the subset identified as relevant to both the respective ‘m’ action and to the
respective ‘n’ object of the search conducted.” (Br. 6:27-7:2). We agree.
The Examiner relies mainly upon Hazlehurst and states that
“Hazlehurst discloses array of cells containing rows and columns in [the]
‘Goodness Table’ as shown in Fig. 11” (Answer 11:6-7) “that have actions
and objects” (Answer 12:9-10). The Examiner further states that he
“interprets this TABLE as [a] ‘Matrix’” (Answer 12:10). The Examiner
further supplies a dictionary definition of the term “matrix” (Answer 11:2-6)
and the term “space” (Answer 11:14-16) in support of his contention that
Hazlehurst discloses array of cells as claimed. We disagree.
It is our view that the Examiner has not shown where Hazlehurst
teaches or suggests combining multiple search terms (i.e., “m” actions with
“n” objects) to construct an “m” x “n” array of cells, such that each of the
cells is associated only with the documents in said subset that were
identified as relevant both to the respective action and to the respective
object. While Hazlehurst discloses a “Goodness Table” (FF 5-6), such a
“Goodness Table” is a one-dimensional representation or list of goodness
scores for every document in the collator’s (classifier’s) corpus of
documents (FF 4).
In other words, Hazlehurst’s “Goodness Table” as shown in Fig. 11
merely discloses a list of goodness scores for individual documents.
However, such “goodness scores” fail to be relevant to both the respective
“m” actions and to the respective “n” objects. While the Examiner states
that he merely interprets the “m” actions and “n” objects as search terms
(Answer 10), we do not find and the Examiner has not identified any such
search terms in the “Goodness Table” of Hazlehurst.
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Appellants also describe the “objects” and the “actions” as search
terms used along the horizontal and vertical axis of a two-dimensional array
(FF 1). The cells of the array are formed by the intersection of the “action”
search terms along an y-axis and the “object” search term along an x-axis
(FF 2-3). Thus, the characterizing of the terms “actions” and “objects” as
labels for search terms appears not to be disputed by either party. We also
agree that the aforementioned terms are merely labels for search terms.
In that regard, the Examiner’s assertion that Hazlehurst’s “Goodness
Table” discloses array of cells relevant to both actions and objects goes
against the preponderance of the evidence. We also find that Braden-Harder
does not disclose constructing an “m” x “n” array of cells as claimed.
Furthermore, the Examiner acknowledges that “Hazlehurst does not
explicitly teach applying at least two scoring metrics…, at least one of the
scoring metrics including a time weighted predictive factor.” (Answer 5).
Thus, the Examiner relies on Braden-Harder to teach the above noted feature
(Answer 5).
Appellants contend that “the Hazlehurst reference does not provide
the recited use of scoring metrics, where at least one of the metrics is a time
weighted factor, for example the data from the bibliographic data.” (Br.
7:16-18). In addition, Appellants contend that “[t]he Braden-Harder
reference likewise fails to teach or disclose providing a time weighted
predictive factor.” (Br. 7:28-29). We agree.
While Braden-Harder discloses weighting of logical forms and
assigning weights (FF 7), Braden-Harder merely discloses predefined
weights (FF 8-10). In Braden-Harder, no time component is disclosed as
being tied to such predefined weights.
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In other words, Braden-Harder’s illustrates in Fig. 8 predetermined
static numeric weights that are assigned to each different type of relation that
can arise in a logical form (FF 10). However, the Examiner has not shown
how Braden-Harder’s weights include a time weighted predictive factor.
In response to Appellants’ argument that Braden-Harder’s weighting
factor is not time related, the Examiner inappropriately refers to the rejection
of claim 154 and draws Appellants’ attention to Rivette’s bibliographic data
disclosure (Answer 13-14). In doing so, the Examiner fails to address
Appellants’ arguments that Braden-Harder fails to disclose the time
weighted predictive factor because Rivette is inapplicable here because the
Examiner failed to use Rivette in the rejection of claim 139. Thus, the
Examiner does not show where the combination of Hazlehurst and Braden-
Harder teaches or suggests a time weighted predictive factor, as set forth in
claim 139.
Thus, the Examiner’s rejection rests on speculation and less than a
preponderance of the evidence and thus, fails to provide sufficient reason for
finding representative claim 139 unpatentable for obviousness under 35
U.S.C. § 103(a) over Hazlehurst and Braden-Harder.
Therefore, we reverse the rejection of claim 139 and of claims 140-
158, which depend therefrom, for the same reasons as set forth above.

NEW GROUND OF REJECTION
In addition to reversing the Examiner’s rejection of claims 139-158,
this decision, pursuant to our authority under 37 C.F.R. § 41.50(b), contains
a new ground of rejection.
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Claims 139-158 are rejected under 35 U.S.C. § 101 because the
claimed invention is directed to non-statutory subject matter. Claim 139
reproduced supra, is representative.
Specifically, claim 139 recites “[a] computerized tool for facilitating
forward looking strategic analysis of a collection of technical documents . . . ,
comprising the computer-assisted steps: . . . .” Here we view the claimed
“computerized tool” as a software program per se given Appellants’
disclosure on page 2, lines 4-13 of the Specification regarding existing
software search tools or programs which can locate patents based on words or
phrases. However, at no point in the claims is the computerized tool
embodied on a computer-readable medium. There are no structural and
functional interrelationships defined between the computerized tool and other
claimed elements of a computer which permit the computerized tool’s
functionality to be realized. No physical subject matter is transformed to a
different state or thing. As a result, claim 139 and dependent claims 140-158
do not meet the statutory definition of a process, or any other statutory class of
invention, and do not constitute eligible subject matter under 35 U.S.C. § 101.

37 C.F.R. § 41.50(b)
37 C.F.R. § 41.50(b) provides that, “[a] new ground of rejection
pursuant to this paragraph shall not be considered final for judicial review.”
37 C.F.R. § 41.50(b) also provides that the Appellants, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of the
following two options with respect to the new grounds of rejection to avoid
termination of proceedings (37 C.F.R. § 1.197 (b) as to the rejected claims:
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(1) Reopen prosecution. Submit an appropriate amendment of the
claims so rejected or new evidence relating to the claims so rejected,
or both, and have the matter reconsidered by the examiner, in which
event the proceeding will be remanded to the examiner …

(2) Request rehearing. Request that the proceeding be reheard under
37 C.F.R. § 41.52 by the Board upon the same record …

CONCLUSIONS
We conclude that Appellants have shown that the Examiner erred in
rejecting claims 139-158 as being unpatentable under 35 U.S.C. § 103(a).
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv) (2006).

DECISION
In view of the foregoing discussion, we reverse the Examiner’s
rejection of claims 139-158 under 35 U.S.C. § 103(a).
We also use our authority under 37 C.F.R. § 41.50(b) to enter a new
ground of rejection of claims 139-158 under 35 U.S.C. § 101.

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REVERSED
37 C.F.R. § 41.50(b)

eld

JEANNE E. LONGMUIR
2836 CORYDON ROAD
CLEVELAND HEIGHTS OH 44118
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