Ex Parte Bursey

Patent Trial and Appeal Board

Aug 26, 2016

12240702 (P.T.A.B. Aug. 26, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO.
12/240,702
110669 7590
Ajay A. Jagtiani
Miles & Stockbridge
17 51 Pinnacle Drive
Suite 1500
FILING DATE
09/29/2008
08/30/2016
Tysons Corner, VA 22102
FIRST NAMED INVENTOR
BRENT BURSEY
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
00748.01.0003 5845
EXAMINER
BAYAT,BRADLEYB
ART UNIT PAPER NUMBER
PTAB
NOTIFICATION DATE DELIVERY MODE
08/30/2016 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):
ipdocketing@milesstockbridge.com
bgoodman@milesstockbridge.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte BRENT BURSEY
Appeal2014-003565
Application 12/240,702 1
Technology Center 3600
Before HUBERT C. LORIN, NINA L. MEDLOCK, and
KENNETH G. SCHOPPER, Administrative Patent Judges.
LORIN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Brent Bursey (Appellant) seeks our review under 35 U.S.C. § 134 of
the final rejection of claims 24-28 and 46-60. We have jurisdiction under
35 U.S.C. § 6(b) (2002).
SUMMARY OF DECISION
We AFFIRM.
1 The Appellant identifies Great Circle Technologies, Inc., as the real party
in interest. Appeal Br. 1.
Appeal2014-003565
Application 12/240,702
THE INVENTION
Claim 24, reproduced below, is illustrative of the subject matter on
appeal.
24. A computer-implemented method comprising the following steps:
(a) one or more first computers autonomously tailoring one or
more tailored geospatial intelligence products in response to a
consumer request for the one or more tailored geospatial intelligence
products; and
(b) one or more second computers providing the one or more
tailored geospatial intelligence products to the consumer, wherein
each of the one or more tailored geospatial intelligence products is
tailored based on contexts for each respective tailored geospatial
intelligence product,
wherein step (a) comprises the following steps:
( c) the one or more first computers filtering an event cloud to
match one or more events in the event cloud to an event pattern;
( d) the one or more first computers extracting contexts for each
event matched in step ( c ); and
( e) the one or more first computers translating a workflow with
the contexts into an executable process.
THE REJECTION
The Examiner relies upon the following as evidence of
unpatentability:
Kelly
Mac Laurin
US 2005/0278386 Al
US 2008/0082490 Al
The following rejection is before us for review:
Dec. 15, 2005
Apr. 3, 2008
1. Claims 24--28 and 46-60 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Kelly and McLaurin.
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Application 12/240,702
ISSUE
Did the Examiner err in rejecting claims 24--28 and 46-60 under
35 U.S.C. §103(a) as being unpatentable over Kelly and McLaurin?
FINDINGS OF FACT
We rely on the Examiner's factual findings stated in the Answer.
Additional findings of fact may appear in the Analysis below.
ANALYSIS
The Appellant argued claims 24--28 and 46-60 as a group (Appeal Br.
6-16). We select claim 24 as the representative claim for this group, and the
remaining claims 25-28 and 46-60 stand or fall with claim 24. 37 C.F.R. §
41.37(c)(l)(iv) (2013).
The Examiner's position is that Kelly discloses all the subject matter
claimed but for steps ( c) and ( d), for which McLaurin is relied upon. Final
Act. 7. According to the Examiner,
[i]t would have been obvious to one of ordinary skill in the art at the
time of the invention to combine the teachings to provide a dynamic
and robust system for customizing geospatial information products
based upon contextual factors, as per teachings of Kelly and
McLaurin. Furthermore, since the claimed invention is merely a
combination of old elements, and in the combination each element
merely would have performed the same function as it did separately,
and one of ordinary skill in the art would have recognized that the
results of the combination were predictable.
Final Act. 7-8.
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Appeal2014-003565
Application 12/240,702
The Appellant challenges the rejection. The challenge consists of
responding to 5 "allegations" deemed to have been made by the Examiner.
The first two supposed "allegations" are set out in the Appeal Brief at
pages 7 and 8.
The first consists of passages from the Response to Arguments section
of the Final Action that are directed to what the Examiner understands Kelly
to be describing. Final Act. 2-3. The Appellant emphasizes certain phrases
in said passages: that is, "Kelly reference, specifically pointing to an
alternate embodiment wherein a field technician confirms the accuracy
of the requested change" and "Kelly provides an alternate embodiment
of utilizing a map technician to verify such requested changes, especially
when inconsistency in data is flagged." Appeal Br. 7-8.
The second consists of the Examiner's characterization of the scope
and content of Kelly made in the body of the rejection. Final Act. 7. In that
regard, the Appellant emphasizes the phrase "autonomously tailoring."
Consistent with the emphasized phrases, the Appellant argues that
Kelly "describe[ s] the user being directly involved in changing geospatial
information, i.e., no geospatial information in the processes shown in
FIGS. 1, 2 and 3 is 'tailored' without human intervention." Appeal Br. 8.
"In contrast [to what is claimed], Kelly shows in FIGS. 1, 2 and 3 and
describes in its description of FIGS. 1, 2 and 3 a process in which a user
requests that the underlying data in a geospatial information system be
updated. . . . . The map technician then enters the requested change. Then
the update module updates the geospatial information stored in the database
and delivers the updated information to the user." Appeal Br. 10. With
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Application 12/240,702
respect to what is claimed, the Appellant emphasizes that "[t]he tailored
geospatial intelligence product is produced autonomously, i.e., the
geospatial information has been put in a particular format by one or more
computers without any human intervention." Appeal Br. 9.
We are not persuaded by said argument as to error in the rejection.
The term "autonomously" is recited once in claim 24 - in step (a):
"one or more first computers autonomously tailoring one or more tailored
geospatial intelligence products in response to a consumer request for the
one or more tailored geospatial intelligence products." Emphasis added.
This step calls for a response to a consumer request for a tailored geospatial
intelligence product. The response is a computer "autonomously tailoring
[a] tailored geospatial intelligence product[ ] " (claim 24).
The Appellant equates the claim term "autonomously" with "without
human intervention" (Appeal Br. 8). In ordinary and customary usage,
"autonomously" does not mean without human intervention. See Webster's
New World Dictionary 93 (3rd Ed. 1988.)(Entry 2 b) for "autonomous.") It
means "functioning independently without control by others." The
Appellant directs our attention to paras. 46 and 48 of the Specification in
support of defining said term as meaning without human intervention. See
Appeal Br. 8 n. 5. But it does not say that there. It says that
the term "autonomic computing" refers to a form of computing that
requires a closed data management hierarchy that ensures all data is
associated with sufficient metadata to adequately describe the system
relevance or context of that data to complex event-driven workflows
or processes. . . . . An example of an autonomic system is a sensor
data management and exploitation system, such as an autonomous
orthrectification and seamless mosaicing productions systems
continuously fed by a variety of satellite imagery providers.
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Spec. i-f 46. In light of the Specification, the claim term "autonomously" is
reasonably interpreted as defining the type of computer being used, not that
the step is without human intervention. The Appellant's argument is
unpersuasive because it is based on inaccurately equating the claim term
"autonomously" with "without human intervention" (Appeal Br. 8).
Furthermore, we agree with the Examiner's characterization of the
scope and content of Kelly and that it would lead one of ordinary skill in the
art to a computer responding to a consumer request for a tailored geospatial
intelligence product. See Kelly para. 14.
Finally, notwithstanding that claim 24, as reasonably broadly
construed, is not limited so that step (a) is practiced without human
intervention, nevertheless even if the claim were to be so limited, we do not
see the patentable significance of doing so. Rendering automatic by
computer that which is done by hand per se would have been obvious to one
of ordinary skill in the art. See In re Rundell, 48 F.2d 958 (Fed. Cir. 1932)
and Leapfrog Enterprises Inc. v. Fisher-Price Inc., 485 F.3d 1157 (Fed. Cir.
2007).
The second two supposed "allegations" are set out in the Appeal Brief
at pages 12 and 13. The passages from the Final Rejection reproduced there
and characterized as "allegations" are extensive. And yet the Appellant does
no more than argue that "nowhere does McLaurin teach or suggest the
claimed features of steps (c) and (d) .... " Appeal Br. 14. This is not an
adequate rebuttal of the Examiner's position. A statement that the art does
not teach any of the claim limitations is no more than merely pointing out
the claim limitations. A statement which merely points out what a claim
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Application 12/240,702
recites will not be considered an argument for separate patentability of the
claim. 37 C.F.R. 41.37(c)(l)(iv). Accordingly, this argument is
unpersuasive as to error in the rejection.
The Appellant also argues that the Examiner "fail[ s] to explain what
features in Kelly and McLaurin the Examiner believes are equivalent to the
specific features of [the claims]." Appeal Br. 14. And yet the Appellant
argues that the Examiner "asserts [ ] various features ... [and] does indicate
which specific elements ... the Examiner believes are equivalent to the
claimed features." Emphasis added. Appeal Br. 14. Accordingly, this
argument is unpersuasive as to error in the rejection.
There is also an argument about Kelly regarding step ( e) but the
Appellant relies on the argument regarding step (a) that we have already
addressed above and found unpersuasive as to error in the rejection. See
Appeal Br. 14.
The last supposed "allegation" (Allegation 5 (Appeal Br. 14)) is
discussed at pages 14--15 of the Brief. It involves the Examiner's statement
that the features of the geospatial products as set forth in claims 46-50 and
51---60 are either taught in the cited prior art or are well known. See Final
Act. 31.
The Appellant argues that the Examiner has not provided sufficient
explanation, disregarded terms in the claims, and provided "no proper
grounds for combining these two references." Appeal Br. 15. And yet the
Appellant fails to show that the Examiner's finding in support of the legal
conclusion of obviousness is not supported by a preponderance of the
evidence. For example, claim 47 calls for "displaying the one or more
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geospatial intelligence products [of step (b) of the claim 24 method] to the
consumer on a visual display device." Kelly (e.g., para. 22) plainly shows
this. Why this is insufficient as evidence that the prior art discloses said
claimed subject matter is not explained. The Appellant has the burden on
appeal to the Board to demonstrate error in the Examiner's position. See In
re Kahn, 441 F.3d 977, 985-86 (Fed. Cir. 2006) ("On appeal to the Board,
an applicant can overcome a rejection [under§ 103] by showing insufficient
evidence of prima facie obviousness or by rebutting the prima facie case
with evidence of secondary indicia of nonobviousness. ") (quoting In re
Rouffet, 149 F.3d 1350, 1355 (Fed. Cir. 1998)). The arguments that are
made do not demonstrate error in the Examiner's position. Accordingly,
they are not considered persuasive as to error in the rejection.
For the foregoing reasons, the rejection is sustained.
DECISION
The decision of the Examiner to reject claims 24--28 and 46-60 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). See 37 C.F.R.
1.136(a)(l )(iv).
AFFIRMED
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