Ex Parte Caceres

Patent Trial and Appeal Board

Feb 16, 2016

12545681 (P.T.A.B. Feb. 16, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/545,681 08/21/2009
63675 7590 02/18/2016
PATTERSON & SHERIDAN, LLP/IBM SVL
24 Greenway Plaza
SUITE 1600
HOUSTON, TX 77046-2472
FIRST NAMED INVENTOR
BARRY M. CACERES
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.
S VL920090022US 1 1854
EXAMINER
AL HASHEM!, SANA A
ART UNIT PAPER NUMBER
2156
NOTIFICATION DATE DELIVERY MODE
02/18/2016 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):
P AIR_eofficeaction@pattersonsheridan.com
PSDocketing@pattersonsheridan.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte BARRY M. CACERES
Appeal2014-003574
Application 12/545,681
Technology Center 2100
Before JAMES R. HUGHES, JOHNNY A. KUMAR, and
TERRENCE W. McMILLIN, Administrative Patent Judges.
KUMAR, Administrative Patent Judge.
DECISION ON APPEAL
Appeal2014-003574
Application 12/545,681
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner's final
rejection of claims 1--4, 8-11, 15-18, and 22-32. Claims 5-7, 12-14, and
19-21 are canceled and claims 33 and 34 are objected to. We have
jurisdiction under 35 U.S.C. § 6(b ).
We reverse.
Illustrative Claim
Independent claim 1 further illustrates the invention as follows:
1. A computer-implemented method, comprising:
configuring one or more computer processors to perform
an operation for processing identity records received by an
entity resolution system, wherein the entity resolution system is
configured to match identity records referencing a common
individual to an entity, the operation comprising:
receiving an identity record,
resolving the identity record against a set of known
entities in the entity resolution system to identify a first entity to
associate with the received identity record, and
determining a base relevance score to assign to the first
entity based on relevance scores assigned to one or more
identity records associated with the first entity.
Rejection on Appeal
Claims 1--4, 8-11, 15-18, and 22-32 are rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Barrett (US 7,565,367 B2, July 21,
2009) in view of Subramaniam (US 7,962,446 B2, June 14, 2011 (filed Sept.
10, 2007)). Final Act. 2---6.
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Appeal2014-003574
Application 12/545,681
Appellant's Contentions
Appellant contends that the Examiner erred in rejecting claim 1 under
35 U.S.C. § 103(a) as being unpatentable over Barrett and Subramaniam. In
particular, the issue turns on whether the combination of Barrett and
Subramaniam teaches or suggests resolving the identity record against a set
of known entities in the entity resolution system to identifY a first entity to
associate with the received identity record, as recited in independent claim 1
(hereinafter, "the disputed limitation"). App. Br. 12-14; Reply Br. 2-5. 1
Analysis
We agree with Appellant's above contention for the reasons provided
in Appellant's briefs. See Reply Br. 2-5. In particular, we agree with
Appellant (Reply Br. 2-5) that the Examiner has not established how these
portions of Barrett and Subramaniam teach the disputed limitation.
\Ve thus conclude that the rejection of claim l lacks the requisite
specificity needed for the establishment of a prima facie case of
unpatentability. The Examiner bears the initial burden of presenting a prima
facie case ofunpatentability (In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir.
1992)). A prima facie case is established when the party with the burden of
proof points to evidence that is sufficient, if uncontroverted, to entitle it to
prevail as a matter of law. See Saab Cars USA, Inc. v. United States, 434
F.3d 1359, 1369 (Fed. Cir. 2006). Here, that burden has not been met in a
1 Independent claims 8, 15, 22, and 24 contain a similar limitation.
Appellant makes additional arguments with respect to claims 2, 4, 9, 11, 16,
and 18. App. Br. 18-19. We do not reach these additional issues since this
issue is dispositive of the appeal.
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Appeal2014-003574
Application 12/545,681
manner enabling proper review. For us to sustain the Examiner's rejection,
we would need to resort to impermissible speculation or unfounded
assumptions or rationales to cure the deficiencies in the factual bases of the
rejection before us. In re Warner, 379 F.2d 1011, 1017 (CCPA 1967).
Accordingly, we agree that the Examiner erred as the analysis in the
Examiner's rejection is not sufficient to show that claim 1 is unpatentable
without further explanation.
As such, we cannot sustain the Examiner's rejection of claim 1, and
independent claims 8, 15, 22, and 24, that recite commensurate limitations.
Because we have reversed the rejection of each independent claim on
appeal, we also reverse the rejection of each associated dependent claim.
CONCLUSIONS
Appellant has established that the Examiner erred in rejecting claims
1--4, 8-11, 15-18, and 22-32 as being unpatentable under 35 U.S.C.
§ 103(a).
DECISION
We reverse the Examiner's rejections of claims 1--4, 8-11, 15-18, and
22-32 as set forth above.
REVERSED
4