Ex Parte Furukawa et al

Patent Trial and Appeal Board

Sep 8, 2016

13549595 (P.T.A.B. Sep. 8, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/549,595 07/16/2012
46156 7590 09/08/2016
LIEBERMAN & BRANDSDORFER, LLC
802 Still Creek Lane
Gaithersburg, MD 20878-3218
FIRST NAMED INVENTOR
Masahiro Furukawa
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.
JP920040 l 65US2 1046
EXAMINER
CHEEMA, AZAM M
ART UNIT PAPER NUMBER
2166
MAILDATE DELIVERY MODE
09/08/2016 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MASAHIRO FURUKAWA, TOMOHIRO
MIYAHIRA, YOSHIROH KAMIY AMA, and
CHRIS SCHAUBACH
Appeal2015-002300
Application 13/549,595 1
Technology Center 2100
Before LARRY J. HUME, CATHERINE SHIANG, and
LINZY T. MCCARTNEY, Administrative Patent Judges.
HUME, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a) from the Final
Rejection of claims 1-12. We have jurisdiction under 35 U.S.C. § 6(b ).
We AFFIRM.
1 According to Appellants, the real party in interest is International Business
Machines Corp. App. Br. 4.
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Application 13/549,595
STATEMENT OF THE CASE2
The Invention
Appellants' disclosed and claimed invention "relates to a method for
modifying a logical expression. More specifically, the method automates
placement of a new node to a parent node that supports at least three
connecting nodes." Spec. i-f 2.
Exemplary Claim
Claim 1, reproduced below, is representative of the subject matter on
appeal (emphasis added to contested limitation):
1. A method performed in a computer system
compnsmg non-transitory storage media, the method
compnsmg:
storing a tree structure, the tree structure including
multiple nodes, a type of each node selected from a group
consisting of: a logical operator and a logical clause;
classifYing each node in the tree structure as a child node
or a parent node, wherein at least one parent node functions as
both a parent node and a child node;
classifYing links within each connection between each
child node and each parent node, wherein each connection
includes two or more child links and a parent link, the two or
more child links defined as branches within the connection, the
branches emanating from the child node, and the parent link
defined as a trunk within the connection, the trunk emanating
from the parent node; and
2 Our decision relies upon Appellants' Appeal Brief ("App. Br.," filed
July 21, 2014); Reply Brief ("Reply Br.," filed Dec. 1, 2014); Examiner's
Answer ("Ans.," mailed Sept. 30, 2014); Final Office Action ("Final Act.,"
mailed Feb. 18, 2014); and the original Specification ("Spec.," filed
July 16, 2012).
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selecting a child link or parent link within the tree
structure for adding a new node, wherein a type of the new
node to be added to the tree structure is defined by a
classification of the selected link within a selected connection
corresponding to the selected link.
Prior Art
The Examiner relies upon the following prior art as evidence in
rejecting the claims on appeal:
Banning et al. ("Banning '008") us 5,421,008 May 30, 1995
Banning et al. ("Banning '613 ") us 5,471,613 Nov. 28, 1995
Kenney et al. ("Kenney") US 2002/0122422 Al Sept. 5, 2002
Morita et al. ("Morita") US 2005/0096880 Al May 5, 2005
Furukawa et al. ("Furukawa") US 8,234,309B2 July 31, 2012
Rejections on Appeal
RI. Claims 1-12 stand rejected under the judicially-created doctrine
of obviousness-type double patenting (OTDP) over claims 1-3, 7-9,
and 13-15 of Furukawa. Final Act. 4--9. 3
R2. Claims 1, 2, 5, 6, 9, and 10 stand rejected under 35 U.S.C.
§ 103(a) as being obvious over the combination of Banning '613, Kenney,
and Morita. Ans. 2; Final Act. 10.
3 We note the OTDP rejection was incorrectly labeled as "provisional" by
the Examiner in the Final Action (Final Act. 4), but is not "provisional"
because the reference is an issued patent. In addition, the Examiner omits
any mention of the OTDP rejection in the Answer, but does not explicitly
withdraw the rejection, such that the OTDP rejection is before us on Appeal.
Compare Ans. 2 with Final Act. 4.
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R3. Claims 3, 4, 7, 8, I I, and I2 stand rejected under 35 U.S.C.
§ I03(a) as being obvious over the combination of Banning '6I3, Kenney,
Morita, and Banning '008. Ans. 2; Final Act. I9.
CLAIM GROUPING
Based on Appellants' arguments (App. Br. I2-26), we decide the
appeal of obviousness Rejection R2 of claims I, 2, 5, 6, 9, and IO on the
basis of representative claim 1. Remaining claims 3, 4, 7, 8, I I, and I2 in
Rejection R3, not argued separately, stand or fall with the respective
independent claim from which they depend.4 We address OTDP Rejection
RI of claims I-I2, infra.
ISSUES AND ANALYSIS
In reaching this decision, we consider all evidence presented and all
arguments actually made by Appellants. We do not consider arguments that
Appellants could have made but chose not to make in the Briefs, and we
deem any such arguments waived. 37 C.F.R. § 41.37(c)(l)(iv).
We agree with Appellants' arguments with respect to OTDP Rejection
RI of claims I-I2. However, we disagree with Appellants' arguments with
respect to Obviousness Rejections R2 and R3 of claims I-I2, and
incorporate herein and adopt as our own: (I) the findings and reasons set
forth by the Examiner in the action from which this appeal is taken, and
(2) the reasons and rebuttals set forth in the Examiner's Answer in response
to Appellants' arguments. We incorporate such findings, reasons, and
4 "Notwithstanding any other provision of this paragraph, the failure of
appellant to separately argue claims which appellant has grouped together
shall constitute a waiver of any argument that the Board must consider the
patentability of any grouped claim separately." 37 C.F.R. § 41.37(c)(l)(iv).
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rebuttals herein by reference unless otherwise noted. However, we highlight
and address specific findings and arguments regarding claim 1 for emphasis
as follows.
1. OTDP Rejection RI of Claims 1-12
Issue 1
Appellants argue (App. Br. 11-12) the Examiner's rejection of claims
1-12 under the judicially-created doctrine of obviousness-type double
patenting (OTDP) over claims 1-3, 7-9, and 13-15 of Furukawa is in error.
These contentions present us with the following issue:
Did the Examiner err in concluding the appealed claims are not
patentably distinct over the cited patent claims under the OTDP doctrine for
the reason that, although "they contain different statutory categories of
invention, they are not patentably distinct from each other because they are
substantially similar in scope and they use the similar limitations and they
produce the same end result ... [which] will read on the language of
[greater] scope" of the reference patent claims? Final Act. 8.
Analysis
Appellants contend the Examiner erred in indicating that
adding the limitation, ["]wherein editing said tree structure
includes adding a new child node using an operator of the
parent node as an n-ary operator in response to addition of said
new node on said parent link,["] as recited in claim 1 of the '309
patent, to Appellants' claimed invention is an obvious expedient
of Appellants' claims, as the elements perform the same
function as prior to the addition.
App. Br. 11 (citing Final Act. 9).
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Appellant argue,
adding the limitation, wherein at least one parent node
functions as both a parent node and a child node, as recited in
Appellants' claims, to the '309 patent is not an obvious
expedient of the limitations recited in the '309 patent. Indeed, a
person of ordinary skill in the art does not "merely change a
setting" to change the function of a parent node, as claimed in
the '309 patent, to the function of the parent node, as recited in
Appellants' claims. Specifically, a modified parent node of the
'309 patent, which is modified in view of Appellants' additional
limitation, functions as both a parent node and a child node. As
a result, both a child link and a parent link are proximate to the
parent node. To that end, the function of the modified parent
node of the '309 patent changes when adding a new node.
Accordingly, the elements of the '309 patent are not an obvious
expedient of Appellants' claimed limitations because a modified
'309 patent, which includes Appellants' claimed limitation,
wherein at least one parent node functions as both a parent node
and a child node, does not perform the same function as prior to
the addition of Appellants' limitation.
App. Br. 11-12.
We agree with Appellants' arguments, and note the Examiner did not
substantively respond in the Answer to these arguments against the OTDP
rejection. See Ans. 3 (stating that filing a Terminal Disclaimer may be used
to overcome such a rejection, but not otherwise responding to Appellants'
arguments).
Therefore, based upon the findings above, on this record, we are
persuaded of error in the Examiner's reliance on the reference patent claims
to render the appealed claims patentably indistinct under the OTDP doctrine,
such that we cannot sustain the Examiner's rejection of claims 1-12.
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2. § 103 Rejection R2 of Claims 1, 2, 5, 6, 9, and 10
Issue 2
Appellants argue (App. Br. 12-24; Reply Br. 1-3) the Examiner's
rejection of claim 1under35 U.S.C. § 103(a) as being obvious over the
combination of Banning '613, Kenney, and Morita is in error. These
contentions present us with the following issues:
(a) Did the Examiner err in finding the cited prior art combination
teaches or suggests the "classifying each node," "classifying links," and
"selecting a child link" limitations, as recited in claim 1?
(b) Did the Examiner err in rejecting claim 1 by not providing
sufficient articulated reasoning with some rational underpinning to properly
combine Banning and Kenney under§ 103?
Analysis
Appellants generally contend, "the Examiner's evaluation of the
Banning, Kenney, and Morita references did not take into account that the
references lack fundamental limitations of the Appellants' invention, as
reflected in the pending claims, and did not recognize that the combination
of the Banning, Kenney, and Morita references is improper." Ans. 12.
Issue 2(a)-All Limitations
"ClassifYing Each Node in the Tree Structure" Limitation
Appellants contend the connection taught by Bannon "between a
parent node and a child node merely includes a single link, rather than a
plurality of links, such as child links and parent links ... [and] does not teach
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a bifurcated connection ... that includes a plurality of links, as claimed by
Appellants." App. Br. 14.
The Examiner responds by finding Banning column 4, lines 52---61
and Figure 5B,
shows the linking of two predicates (i.e., child nodes) through a
logical AND operator (i.e., parent node)), and the further
addition of another predicate to reach the stage depicted in FIG.
5C. The second set of two predicates (i.e., child nodes) is then
linked as appears in FIG. 5D using a logical AND operator (i.e.,
parent node)).
Ans. 4--5. The Examiner further finds (Final Act. 12; Ans. 5), and we agree,
Kenney teaches or at least suggests the recitation of "at least one parent node
functions as both a parent node and a child node." See Kenney, Fig. 3A
(nodes 491 through 493).
We agree with the Examiner's finding concerning the totality of the
teachings of the combination of Banning and Kenney regarding this
limitation. Further, we do not find Appellants' argument in the Reply Brief
to be persuasive. 5
"ClassifYing Links Within Each Connection" Limitation
With respect to Appellants' contention that Kenney does not teach or
suggest classifying a network link itself, but instead "teaches classifying
nodes, which represent classes of network flow over a single link" (App.
5 Appellants argue, "the Examiner parses classifying links from the
available link class options. As a result, the Examiner is unreasonably broad
in interpreting the classification scheme claimed by Appellants ... [which]
claim two classes of links: child and parent." Reply Br. 2. We are not
persuaded of Examiner error because Appellants do not address the
Examiner's particularized findings regarding this limitation, as discussed
herein.
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Br. 14 ), the Examiner responds by finding Kenney paragraph 77 and
Figure 3A (nodes 491, 492, and 493) teach or at least suggest the recited
portion of the limitation, i.e.,". Final Act. 12; Ans. 5. 6
We also note the claim does not recite a "network link," so that
Appellants' argument concerning the teachings and suggestions of Kenney is
not commensurate with the scope of the claim. Moreover, to the extent
Appellants' Specification only describes various embodiments, but may
arguably provide a definition of the recited "links," we note in one
embodiment, "[t]he two or more child links are defined as branches within
the connection, with the branches emanating from the child node. The
parent link is defined as a trunk within the connection, with the trunk
emanating from the parent node." Spec. i-f 7. Accepting this as a definition,
we find the Examiner's interpretation is not overly broad, unreasonable, or
inconsistent with Appellants' Specification, and we agree that Kenney
h C h II 1 "f • 1" k II • ,..J • 1 • 1 7 Lere1ore teac __ es or suggests c_assLymg _nL_s; as rec1teu m c_aim _.
6 The Examiner finds, in Kenney, "(see paragraph [0077], each node
represents a classification in the link classification hierarchy, i.e., classifying
links within each connection between hierarchy nodes, and further see FIG.
3A shows an example of link classification hierarchy)." Ans. 5.
7 Any special meaning assigned to a term "must be sufficiently clear in the
specification that any departure from common usage would be so understood
by a person of experience in the field of the invention." Multiform
Desiccants, Inc. v. Medzam, Ltd., 133 F.3d 1473, 1477 (Fed. Cir. 1998); see
also Helmsderfer v. Bobrick Washroom Equip., Inc., 527 F.3d 1379, 1381
(Fed. Cir. 2008) ("A patentee may act as its own lexicographer and assign to
a term a unique definition that is different from its ordinary and customary
meaning; however, a patentee must clearly express that intent in the written
description.").
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"Selecting a Child Link of Parent Link" Limitation
Appellants admit "Morita teaches selecting a branch to add an
explaining variable to a decision tree" (App. Br. 15), but argues "Morita
teaches selecting a link to add a new node; however, Morita does not teach
classifying the link." App. Br. 17. We reiterate the Examiner relies upon
Kenney as teaching or suggesting the "classifying links" limitation, as
discussed above.
"[O]ne cannot show non-obviousness by attacking references
individually where ... the rejections are based on combinations of
references." In re Keller, 642 F.2d 413, 426 (CCPA 1981). We specifically
note Appellants' challenge to the references individually is not convincing of
error in the Examiner's position because all of the features of the secondary
reference need not be bodily incorporated into the primary reference, but
consideration should be given to what the combined teachings, knowledge of
one of ordinary skill in the art, and the nature of the problem to be solved as
a whole would have suggested to those of ordinary skill in the art (see
Keller, 642 F.2d at 425). Furthermore, the artisan is not compelled to
blindly follow the teaching of one prior art reference over the other without
the exercise of independent judgment. See Lear Siegler, Inc. v. Aeroquip
Corp., 733 F.2d 881, 889 (Fed. Cir. 1984).
Accordingly, we agree with the Examiner's findings regarding the
teachings and suggestions of the combination of prior art with respect to the
contested limitations.
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Issue 2 (b) - Motivation
"Appellants respectfully submit that the combination of Banning and
Kenney is improper because the Examiner has not articulated reasoning with
some rational underpinning to support the legal conclusion of obviousness."
App. Br. 18. Appellants further contend, "Banning does not support link-
sharing, as taught by Kenney ... [but instead] teaches 'that each leaf
predicate appears only one time within the tree." App. Br. 19 (citing
Banning col. 3, 11. 55-56).
We again note Appellants are arguing the references separately.
Nonobviousness cannot be established by attacking the references
individually when the rejection is predicated upon a combination of prior art
disclosures. See In re Merck & Co. Inc., 800 F.2d 1091, 1097 (Fed.
Cir. 1986).
The relevant inquiry is whether the Examiner has set forth "some
articulated reasoning with some rational underpinning to support the legal
conclusion of obviousness." In re Kahn, 441F.3d977, 988 (Fed. Cir. 2006)
(cited with approval in KSR Int'! Co. v. Teleflex, Inc., 550 U.S. 398, 418
(2007)).
With respect to providing the required "articulated reasoning," the
Examiner finds:
[I]t would have been obvious to one of the ordinary skill in the
art at the time invention was made the method for classifying
links between parent and child nodes [ ] as taught by Kenney[ ]
to combine with the method for building a hierarchical tree
structure of Banning in order to efficiently defin[ e] a policy
using a link-sharing classification hierarchy for network flows
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on a first link and storing the hierarchy for reuse by a second
link.
Final Act. 12 (citing Kenney i-f 10). The Examiner also finds:
[I]t would have been obvious to one of the ordinary skill in the
art at the time invention was made the method for adding node
by selecting the branch [ ] as taught by Morita[ ] to combine
with the method for building a hierarchical tree structure of
Banning and Kenney[ ] in order to efficiently generat[ e] a
decision tree by using the set of generated instance [data].
Final Act. 13 (citing Kenney i-f 285). We find these statements of motivation
to combine the references in the manner suggested by the Examiner meet the
articulated reasoning and rational underpinning requirements of KSR, cited
above.
Appellants further argue "the combination of Banning, Kenney, and
Morita is improper because at least Kenney is not analogous art to the
claimed invention," allegedly because Kenney is not from the same field of
endeavor as 1A1ppellants' claimed invention. 1A1pp. Br. 20.
Whether a reference in the prior art is "analogous" is a fact question.
In re Clay, 966 F.2d 656, 658 (Fed. Cir. 1992) (citing Panduit Corp. v.
Dennison Mfg., 810 F.2d 1561, 1568 n.9 (Fed. Cir. 1987), cert. denied, 481
U.S. 1052 (1987)). Two criteria have evolved for determining whether prior
art is analogous: (1) whether the art is from the same field of endeavor,
regardless of the problem addressed, and (2) if the reference is not within the
field of the inventor's endeavor, whether the reference still is reasonably
pertinent to the particular problem with which the inventor is involved. Id.at
658-59 (citing In re Deminski, 796 F.2d 436, 442 (Fed. Cir. 1986); In re
Wood, 599 F.2d 1032, 1036 (CCPA 1979)).
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A reference is reasonably pertinent it~ even though it may be in
a different field from that of the inventor's endeavor, it is one
which, because of the matter with which it deals, logically
would have commended itself to an inventor's attention in
considering his problem. Thus, the purposes of both the
invention and the prior art are important in determining whether
the reference is reasonably pertinent to the problem the
invention attempts to solve. If a reference disclosure has the
same purpose as the claimed invention, the reference relates to
the same problem, and that fact supports use of that reference in
an obviousness rejection.
Clay, 966 F.2d at 659.
We find Kenney meets the second prong of the analogous art test by
its teaching and suggestion of a hierarchical link sharing structure in Figure
3A being "reasonably pertinent" to Appellants' claimed invention, which is
directed towards a "method performed in a computer system comprising
non-transitory storage media."
Moreover, in KSR, the Court stated "[t]he combination of familiar
elements according to known methods is likely to be obvious when it does
no more than yield predictable results." KSR, 550 U.S. at 416.
When a work is available in one field of endeavor, design
incentives and other market forces can prompt variations of it,
either in the same field or a different one. If a person of
ordinary skill can implement a predictable variation, § 103
likely bars its patentability. For the same reason, if a technique
has been used to improve one device, and a person of ordinary
skill in the art would recognize that it would improve similar
devices in the same way, using the technique is obvious unless
its actual application is beyond his or her skill . . . . [A] court
must ask whether the improvement is more than the predictable
use of prior art elements according to their established
functions.
Id. at 417.
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Therefore, based upon the findings above, on this record, we are not
persuaded of error in the Examiner's reliance on the combined teachings and
suggestions of the cited prior art combination to teach or suggest the
disputed limitations of claim 1, nor do we find error in the Examiner's
resulting legal conclusion of obviousness. Therefore, we sustain the
Examiner's obviousness rejection of independent claim 1, and grouped
claims 2, 5, 6, 9, and 10 which fall therewith. See Claim Grouping, supra.
3. § 103 Rejection R3 of Claims 3, 4, 7, 8, 11, and 12
In view of the lack of any substantive or separate arguments directed
to obviousness rejection R3 of claims 3, 4, 7, 8, 11, and 12 under§ 103 (see
App. Br. 24--26), we sustain the Examiner's rejection of these claims,
Arguments not made are waived.
REPLY BRIEF
To the extent Appellants may advance new arguments in the Reply
Brief (Reply Br. 1-3) not in response to a shift in the Examiner's position in
the Answer, we note arguments raised in a Reply Brief that were not raised
in the Appeal Brief or are not responsive to arguments raised in the
Examiner's Answer will not be considered except for good cause (see 37
C.F.R. § 41.41(b)(2)), which Appellants have not shown.
CONCLUSIONS
(1) The Examiner erred with respect to OTDP Rejection RI of
claims 1-12 under 35 U.S.C. § 103(a) over the cited reference patent claims
of record, and we do not sustain the rejection.
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(2) The Examiner did not err with respect to obviousness
Rejections R2 and R3 of claims 1-12 under 35 U.S.C. § 103(a) over the
cited prior art combinations of record, and we sustain the rejections.
DECISION
Because we have affirmed at least one ground of rejection with
respect to each claim on appeal, we affirm the Examiner's decision rejecting
claims 1-12. See 37 C.F.R. § 41.50(a)(l).
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED
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