Ex Parte Hall et al

Patent Trial and Appeal Board

Nov 24, 2017

14049881 (P.T.A.B. Nov. 24, 2017)

United States Patent and Trademark Office
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
14/049,881 10/09/2013 Mark Hall 4878-011 5644
22429 7590 11/28/2017
HAUPTMAN HAM, LLP
2318 Mill Road
Suite 1400
ALEXANDRIA, VA 22314
EXAMINER
SECK, ABABACAR
ART UNIT PAPER NUMBER
2122
NOTIFICATION DATE DELIVERY MODE
11/28/2017 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):
docketing @ ipfirm. com
pair_lhhb @ firsttofile. com
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PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MARK HALL, KEVIN JONES, SIMON GOULD,
and PATRICK GEOFF WILLIAMS
Appeal 2017-0069091
Application 14/049,881
Technology Center 2100
Before ERIC S. FRAHM, DENISE M. POTHIER, and
JOHN D. HAMANN, Administrative Patent Judges.
POTHIER, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants2 appeal under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 1-9. We have jurisdiction under 35 U.S.C. § 6(b). We
reverse. Pursuant to 37 C.F.R. § 41.50(b), we enter a new ground.
1 Throughout this opinion, we refer to (1) the Final Action (Final Act.)
mailed February 16, 2016, (2) the Appeal Brief (App. Br.) filed August 25,
2016, (3) the Examiner’s Answer (Ans.) mailed January 26, 2017, and
(4) the Reply Brief (Reply Br.) filed March 24, 2017.
2 The real party of interest is listed as AIRBUSGROUP LIMITED. App.
Br. 2.
Appeal 2017-006909
Application 14/049,881
Invention
Appellants’ invention relates to “[a] networked computer system
[that] creates a virtual work environment wherein participants can work in
parallel to create simultaneous sets of solutions to problems outside the
virtual work environment.” Spec. 1:11-13. For example, a computer
network logs network traffic data 41 and generates intrusion detection
system (IDS) alerts from sensor data. Spec. 5:17-6:9, Figs. 1-2. User A is
presented with an IDS alert image 43 concerning a potential malware
infection and generates tag data 10 that provide insights into the malware’s
type and importance, such as a certain attack has occurred. Id. at 5:22-6:3,
Figs. 1-2. At the same time, User B is presented with heatmap 42 and
generates tag data 11 that indicates abnormal connections. Id. at 6:4-9, Figs.
1-2. Based on the tag data, decision options are generated. Id. at 7:3-13,
24-26.
Claim 1 is reproduced below with emphasis:
1. A method of generating decision options, the method
comprising operating a computer system to:
receive and store sensor data from a plurality of sensors;
present a visualisation of at least some of the sensor data to a
first user;
receive and store first tag data from the first user in
response to the presentation of the visualisation to the first user;
present a visualisation of at least some of the sensor data
to a second user which may be the same visualisation that is
presented to the first user or a different visualisation;
receive and store second tag data from the second user in
response to the presentation of the visualisation to the second
user;
generate decision options with a computer implemented
decision support algorithm in accordance with the first and
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Application 14/049,881
second tag data, a stored operational plan, and at least some of
the sensor data; and
output the decision options generated by the decision
support algorithm.
The Examiner relies on the following as evidence of unpatentability:
MacIntyre US 2003/0144868 A1 July 31, 2003
Friedlander US 7,647,288 B2 Jan. 12,2010
The Rejections
Claims 1 and 3-9 are rejected under 35 U.S.C. § 102(b) as anticipated
by MacIntyre. Final Act. 2-6.
Claim 2 is rejected under 35 U.S.C. § 103(a) as unpatentable over
MacIntyre and Friedlander. Final Act. 7-8.
THE ANTICIPATION REJECTION OVER MACINTYRE
Regarding independent claim 1, the Examiner finds MacIntyre
discloses a system receiving and storing first and second tag data from a first
and second user respectively. Final Act. 3 (citing MacIntyre 52-54, 179,
486). The Examiner further finds MacIntyre discloses a system generating
decision options with a computer implemented decision support algorithm in
accordance with the first and second tag data. Id. (citing MacIntyre 249,
379-83); see also Ans. 20-21 (citing MacIntyre 28-54, 249, 379-383).
Among other arguments, Appellants argue MacIntyre does not
disclose using first tag data and second tag data to generate decision options.
App. Br. 7-10; Reply Br. 6-7.
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ISSUE
Under § 102, has the Examiner erred in rejecting claim 1 by finding
that MacIntyre discloses a method comprising operating a computer system
to “generate decision options with a computer implemented decision support
algorithm in accordance with the first and second tag data”?
ANALYSIS
Based on the record before us, we find error in the Examiner’s
rejection of independent claim 1. Initially, we note that identity of
terminology between MacIntyre and the claim language (e.g., “tag data”) is
not required to teach the limitations in claims. See In re Bond, 910 F.2d 831,
832 (Fed. Cir. 1990). As such, arguments related to MacIntyre being silent
on the term “tag data” (App. Br. 8) are not persuasive.
Moreover, the term “tag data” has not been defined in the disclosure
to have any particular meaning. According to the Specification, “tag data . .
. may be metadata or other meaningful information putting the sensor data in
context.” Spec. 2:1-2 (emphasis added). Although this informs our
construction of the term “tag data,” we decline to import such embodiments
into claim 1. We thus construe “tag data” to include, but is not limited to,
metadata or other meaningful information.
MacIntyre teaches a method for collecting, processing, distributing,
analyzing, and visualizing information and data. MacIntyre 28-50, cited
in Ans. 20. Specifically, MacIntyre teaches the system performs these
objectives using a platform that includes at least one Visual Workstation, a
Visual Server, and at least one Visual Sensor. MacIntyre ^ 51, discussed in
Ans. 20-21. The Visual Sensor collects information and data from an
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automated processing system; the Visual Server stores the collected data; the
Visual Workstation provides a user interface for manipulating data, has a
framework for supporting visualizations into workspaces and dashboards,
and allows for collaboration with other users of the Workstation. MacIntyre
52-54, 179, cited in Final Act. 3.
In this regard, MacIntyre teaches a Workspace can be emailed from
one user to another user for “collaborative decision making.” MacIntyre
If 249, cited in Final Act. 3 and discussed in Ans. 20. Similar to the
Workspace, MacIntyre also discusses a Dashboard can be emailed between
users for collaborative decision making. MacIntyre 379, 383, cited in
Final Act. 3. Yet, these passages in MacIntyre do not explicitly discuss how
the collaborative decision making is achieved.
Upon receiving the email, MacIntyre discusses the user can “work on”
the Workspace and can “point out a correlation, insight, problem, or
otherwise that they discover when monitoring, exploring or evaluating their
business processes, campaigns, customer or system performance.”
MacIntyre 249, 383. For example, MacIntyre teaches users can create
decision trees, graphs, and plots based on metrics (e.g., tag data). Id. If 215,
cited in Final Act. 3. These passages teach multiple users may identify
correlations, insights, and problems and may model metrics to create other
system information (e.g., a decision tree, graph or scatter plot). MacIntyre
inf 215, 249, 383. Although these passages discuss generating decision
options (e.g., branches of the decision tree), these paragraphs fail to discuss
an embodiment where the options are necessarily generated using an
algorithm, in accordance with first and second tag data as required by
claim 1.
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MacIntyre also describes user notes and annotations (e.g., tag data)
are permitted within a Dashbaord, which teaches storing other types of tag
data. Id. 381-382. MacIntyre states a Dashboard allows for metric
visualization and monitoring performance passively through dashboards. Id.
50, 378-380. These discussions address no more than monitoring
performance and fail to discuss generating options in accordance with the
described notes or annotations. See id. Additionally, MacIntyre states the
Dashboard can provide “instructions for what users might watch to
understand their incremental progress toward key success factors.” Id.
382. To the extent these “instructions” are viewed as “decision options”
(see Final Act. 3; see also Ans. 20), MacIntyre fails to discuss the
instructions were generated with an “algorithm in accordance with the first
and second tag data,” as required by claim 1. Id. Nor has the Examiner
demonstrated sufficiently how these passages in MacIntyre disclose
explicitly or implicitly this recited feature. Final Act. 2-3; see also Ans.
20-21.
MacIntyre further discusses the invention provides graphical,
interactive access to data, allows a user to analyze information in
Workspaces, and provides information to people so that they can make
better, faster, and more effective decisions with less manual effort.
MacIntyre 48-50. Yet, these passages do not discuss generating these
decisions in accordance with the above-mapped “tag data” (e.g., tree, graph,
plot, notes, or annotations). See id. Nor has the Examiner demonstrated that
such decision options would inherently be generated “with a computer
implemented decision support algorithm in accordance with the first and
second tag data.” Final Act. 2-3; see also Ans. 20-21.
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Thus, although MacIntyre discusses information is provided to users
with “less manual effort” (MacIntyre ^ 48), MacIntyre does not disclose
generating decision options with an algorithm, as well as doing so in
accordance with “first and second tag data” as recited. See id. Whether this
or any of the other above passages suggest to one skilled in the art
generating decision options using an algorithm based on tag data under an
obviousness inquiry is not before us.
For the foregoing reasons, Appellants have persuaded us of error in
the rejection of (1) independent claim 1, (2) independent claim 8, which is
similarly rejected (Final Act. 5), and (3) dependent claims 3-7 and 9, for
similar reasons.
THE OBVIOUSNESS REJECTION
Above, we determined that MacIntyre does not disclose a disputed
limitation in claim 1. The additionally cited reference, Friedlander, in the
obviousness rejection is not relied upon to teach this disputed limitation.
Final Act. 7-8. For above-stated reasons, we will not sustain the rejection
for claim 2.
New Ground of Rejection
Claim 8 is rejected under 35 U.S.C. § 112(b) or pre-AIA § 112,
second paragraph as being indefinite.
“As the statutory language of ‘particularity]5 and ‘distinctness]5
indicates, claims are required to be cast in clear—as opposed to ambiguous,
vague, indefinite....terms. It is the claims that notify the public of what is
within the protections of the patent, and what is not.” In re Packard, 751
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F.3d 1307, 1313 (Fed. Cir. 2014) (internal citations omitted). Additionally,
claims are not read in a vacuum and the decision on whether a claim is
indefinite requires a determination of whether those skilled in the art would
have understood what is claimed when the claim is read in light of the
specification. See Power-One, Inc. v. Artesyn Techs., Inc., 599 F.3d 1343,
1350 (Fed. Cir. 2010). During examination of a patent application, a claim
is given its broadest reasonable construction “in light of the specification as
it would be interpreted by one of ordinary skill in the art.” In re Am. Acad.
ofSci. Tech Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004) (citation omitted).
Independent claim 8 recites “[a] computer system programmed to
perform the method of claim 1.” App. Br. 17 (Claims App’x). Claim 8’s
“system” appears to recite a different, inventive category than claim l’s
method. Compare App. Br. 15 (Claims App’x) with id. at 17 (Claims
App’x). But, unlike dependent claim 9 or claim 1, claim 8 has no
transitional phrase (e.g., comprising, consisting, or consisting essentially of).
See id. By reciting nothing more than a “computer system,” the claim fails
to set forth its boundaries.
The Specification also does not define the phrase “computer system.”
See generally Spec. The Specification describes Figure 2 as “a computer
system” and shows the system having various components. Spec. 3:13-16,
Fig. 2. Although this informs our construction of the recited “computer
system,” we decline to import such an embodiment into claim 1. Thus,
whether the claimed “computer system” of claim 8 includes none, some, or
all the components in Figure 2 is unclear and does not notify the public of
what is within the claims boundaries. See Packard, 751 F.3d at 1313.
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One customary meaning of “system” includes “a group of devices or
artificial objects or an organization forming a network especially for
distributing something or serving a common purpose « a
telephone system • a heating system • a highway system • a
computer system”* One ordinary understanding of a “computer
system” thus includes computer devices or a computer network.
However, the above definition also indicates the claimed “computer
system” may comprise computer objects, such as code, a module, or a
database. The boundaries of claim 8 are thus ambiguous, when
construing the claim under its ordinary meaning.
Additionally, to the extent the recited “computer system”
encompasses a module, claim 8 may be viewed as a single means covering
every conceivable structure for achieving the stated function. See In re
Hyatt, 708 F.2d 712, 713-15 (Fed. Cir. 1983). Also, we are compelled to
note that the ordinary meaning of “computer system” to a person of ordinary
skill in the art is broad enough to encompass both non-transitory and
transitory media. See Ex parte Mewherter, 107USPQ2d 1857, 1859, 1862
(PTAB 2013) (precedential). These examples only further illustrate that the
boundaries of claim 8’s “computer system” are imprecise and uncertain.
Accordingly, independent claim 8 does not particularly point out or
distinctly claim the subject matter which the inventors regards as their
invention.
3 Merriam-Webster’s Online Dictionary, available at https://www.merriam-
webster.com/dictionary/system (def. Id).
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DECISION
We reverse the Examiner’s rejection of claims 1 and 3-9 under
35 U.S.C. § 102.
We reverse the Examiner’s rejection of claim 2 under 35 U.S.C.
§ 103.
We newly reject claim 8 under 35 U.S.C. § 112(b) or second
paragraph (pre-AIA).
This decision contains a new ground of rejection pursuant to
37 C.F.R. § 41.50(b). Section 41.50(b) provides “[a] new ground of
rejection pursuant to this paragraph shall not be considered final for judicial
review.” Section 41.50(b) also provides:
When the Board enters such a non-final decision, the appellant,
within two months from the date of the decision, must exercise
one of the following two options with respect to the new ground
of rejection to avoid termination of the appeal as to the rejected
claims:
(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 prosecution
will be remanded to the examiner. The new ground of rejection
is binding upon the examiner unless an amendment or new
Evidence not previously of Record is made which, in the
opinion of the examiner, overcomes the new ground of rejection
designated in the decision. Should the examiner reject the
claims, appellant may again appeal to the Board pursuant to this
subpart.
(2) Request rehearing. Request that the proceeding be reheard
under § 41.52 by the Board upon the same Record. The request for rehearing
must address any new ground of rejection and state with particularity the
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points believed to have been misapprehended or overlooked in entering the
new ground of rejection and also state all other grounds upon which
rehearing is sought.
Further guidance on responding to a new ground of rejection can be
found in the Manual of Patent Examining Procedure § 1214.01.
REVERSED
37 C.F.R. § 41.50(b)
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