12104151 (P.T.A.B. Oct. 27, 2014)

Ex Parte Bui et al

Patent Trial and Appeal BoardOct 27, 2014

12104151 (P.T.A.B. Oct. 27, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE _____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD _____________ Ex parte TAN QUANG BUI, LINH PHUONG KOCHAN, and HONG QUANG BUI _____________ Appeal 2012-007159 Application 12/104,151 Technology Center 2100 ______________ Before CARLA M. KRIVAK, JOHNNY A. KUMAR, and DANIEL N. FISHMAN, Administrative Patent Judges. KUMAR, Administrative Patent Judge. DECISION ON APPEAL Appeal 2012-007159 Application 12/104,151 2 STATEMENT OF THE CASE Introduction This is a decision on appeal under 35 U.S.C. § 134(a) of the final rejection of claims 1–5, 7–13, 15, and 16. Claims 6 and 14 are canceled. Final Rej. 2. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. Exemplary Claim Exemplary claim 1 reads as follows: 1. A computer-readable medium having computer- executable instructions that, when executed in a system coupled to a network, enable the system to perform a method comprising at least the steps of: [a] automatically accessing a first portion of a memory device coupled to the network, the first portion having stored thereon a plurality of data sets; [b] automatically identifying a plurality of discrete alphanumeric strings associated with each data set of the plurality; [c] automatically storing in a second portion of a memory device coupled to the network a listing of the data sets, each respective data set being cross-referenced in the listing to a respective set of alphanumeric strings comprising only those alphanumeric strings identified as being associated with the respective data set; [d] after storing the data-set listing, receiving from a user a first alphanumeric keyword; [e] automatically identifying from the listing a first set of the data sets, each data set of the first data-set set including the first keyword; and Appeal 2012-007159 Application 12/104,151 3 [f] in response to identifying the first data-set set, automatically storing the first data-set set in a third portion of a memory device coupled to the network. Rejection The Examiner rejected claims 1–5, 7–13, 15, and 16 under 35 U.S.C. § 103(a) as being unpatentable over Asmussen (US 2002/0042923A1, Apr. 11, 2002) and Vandermolen (US 7,624,416 B1, Nov. 24, 2009). Ans. 4–9. ANALYSIS1 We have reviewed the Examiner’s rejections in light of Appellants’ contentions that the Examiner has erred. The Examiner cited Asmussen for all the claim limitations except for the element (f) of claim 1, and Vandermolen for the element missing in Asmussen. Ans. 5–7. Further, we have reviewed the Examiner’s response to Appellants’ arguments. The Examiner has provided a comprehensive response to each argument presented by the Appellants on pages 9 through 11 of the Answer. We have reviewed this response and concur with the Examiner’s findings and conclusions. We adopt as our own (1) the findings and reasons set forth by the Examiner in the action from which this appeal is taken and (2) the reasons set forth by the Examiner in the Examiner’s Answer in response to Appellants’ Appeal Brief. Ans. 5–11. 1 Appellants focus their contentions on claim 1, allowing independent claim 9 to stand or fall with claim 1. Br. 7. Separate patentability is not argued for Footnote continued on next page. Appeal 2012-007159 Application 12/104,151 4 Appellants contend, “What is described in the instant specification as ‘parsing’ is nowhere present in the Vandermolen reference.” Br. 9. In particular, Appellants contend “nowhere does either of Asmussen or Vandermolen teach the parsing of anything but metadata, leaving the actual content untouched.” Id. at 10. The Examiner finds, the claim does not support the Appellant’s argument since the claim does not recite any parsing of data as Appellant’s argument. In response to appellant’s argument that the references fail to show certain features of applicant’s invention, it is noted the features upon which applicant relies (i.e., parsing of data) are not recited in the rejected claim(s). Ans. 9. We agree with the Examiner that Appellants’ arguments are not commensurate in scope with the broad claim language (id.). Claim 1 does not recite “parsing of data.” Claim 1 recites “automatically identifying a plurality of discrete alphanumeric strings associated with each data set of the plurality.” In addition, the Examiner provides a well-reasoned explanation, including citations to several paragraphs of Asmussen, which demonstrate that Asmussen teaches a parsing module 323 (Ans. 6 (citing Asmussen ¶ 67); see Fig. 6b). We thus concur with the Examiner’s fact finding as it is supported by Asmussen’s disclosure. Furthermore, Appellants do not explain why the dependent claims 2–5, 7, 8, 10–13, 15, and 16 other than their dependence from claims 1 or 9. Br. 12. Appeal 2012-007159 Application 12/104,151 5 claimed invention would not have been obvious to one skilled in the art, and thus, Appellants’ arguments are not persuasive of Examiner error. We observe no Reply Brief is of record to rebut such findings including the Examiner’s responses to Appellants’ arguments about the disputed feature. Therefore, in the absence of sufficient rebuttal evidence or argument to persuade us otherwise, we adopt the Examiner’s findings and underlying reasoning, which are incorporated herein by reference. Consequently, we find no error in the Examiner’s rejection of claims 1–5, 7–13, 15, and 16. CONCLUSION The Examiner has not erred in rejecting claims 1–5, 7–13, 15, and 16 as being unpatentable under 35 U.S.C. § 103(a). Appeal 2012-007159 Application 12/104,151 6 DECISION2 The Examiner’s decision to reject claims 1–5, 7–13, 15, and 16 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 msc 2 We note claim 1 recites a computer-readable medium having computer- executable instructions. Appellants’ Specification does not identify what comprises a computer-readable medium. We do not consider the term computer-readable medium to be limited to non-transitory media, and thus, the claim may be broad enough to encompass a transitory signal. A signal is not within one of the four categories of patentable subject matter as defined under 35 U.S.C. § 101. In re Nuijten, 500 F.3d 1346, 1357 (Fed. Cir. 2007). See also Ex parte Mewherter, 107 USPQ2d 1857 (PTAB 2013) (precedential); Manual of Patent Examining Procedure (“MPEP”) § 2106(I), ed. 8, Rev. 9 (Aug. 2012). In the event of further prosecution, the Examiner should ascertain whether claims 1–5, 7, and 8 should be rejected under 35 U.S.C. § 101 as being directed to non-statutory subject matter.