Ex Parte Haveliwala

Board of Patent Appeals and Interferences

Jun 1, 2011

10991663 (B.P.A.I. Jun. 1, 2011)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte TAHER H. HAVELIWALA
____________

Appeal 2009-008560
Application 10/991,663
Technology Center 2100
____________

Before JEAN R. HOMERE, ST. JOHN COURTENAY III, and
CARLOYN D. THOMAS, Administrative Patent Judges.

Opinion for the Board by COURTENAY, Administrative Patent Judge.

Dissenting Opinion by HOMERE, Administrative Patent Judge.

COURTENAY, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellant seeks our review under 35 U.S.C. § 134 of the Examiner’s
final decision rejecting claims 1-15, 21, 22, 25, 29-41, and 46-72. Claims
16-20, 23, 24, 26-28, and 42-45 are objected to for being dependent from a
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rejected base claim. We have jurisdiction over the appeal under 35 U.S.C.
§ 6(b).
We Affirm-in-part.

INVENTION
Appellant’s invention relates generally to improving keyterm-search
query processing over large document repositories. More particularly, the
invention on appeal relates to methods of compressing the precomputed
document attributes of documents in such repositories. (Spec. 1, para.
[0002]).

ILLUSTRATIVE CLAIM
1. A method of processing information related to documents,
comprising:

determining a first set of pre-computed document scores for at
least a portion of the documents in a collection of documents;

mapping and quantizing the first set of document scores into a
second set of document scores having a first distribution of score
values in a first portion and a second distribution of source values in a
second portion;

receiving a search query comprising one or more search terms;

identifying, using a document index, a plurality of documents in
the collection of documents that match at least one search term the
search query;

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computing for each identified document an information
retrieval score that is a function of the identified document’s score in
the second set of scores; and

ranking the identified documents in accordance with the
computed information retrieval scores.

PRIOR ART
The Examiner relies upon the following references as evidence in
support of the rejections:
Schuetze U.S. 6,567,797 B1 May 20, 2003
ROBERT M. GRAY ET. AL., QUANTIZATION, (First Draft) (Jan. 12,
1998) (hereinafter “Gray”).

CLAIMS OBJECTED TO BY THE EXAMINER
The Examiner states that claims 16-20, 23, 24, 26-28, and 42-45 are
objected to for depending from a rejected base claim. (Ans. 24; see also
Final “Office Action Summary” mailed Nov. 23, 2007). Therefore, these
claims are not before us on appeal.

PRELIMINARY OBSERVATIONS ON THE EXAMINER’S REJECTIONS
We observe that the headings of both rejections (§§102, 103) do not
agree with the detailed statement of rejections found under the heading.
For purposes of this appeal, we will ignore the inaccurate headings of
the Examiner’s rejections (Ans. 3, 13) and will consider only the claims
actually rejected with a detailed statement of rejection found under each
corresponding rejection heading, subject to any claim grouping addressed
below under 37 C.F.R. § 41.37(c)(1)(vii).
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INVERTED REJECTIONS FAIL TO ESTABLISH A PRIMA FACIE CASE
At the outset, we particularly observe that the Examiner rejects claims
12, 29, 57, and 63 under § 102. However, each of these claims depends
directly upon a claim rejected under § 103. As a matter of nomenclature, we
regard this facially improper form of rejection as an “inverted rejection.”
This type of Examiner error takes the form of a § 102-rejected claim
depending upon a § 103-rejected claim, or a § 103-rejected claim (rejected
over “n-1” or fewer references) that depends upon a § 103-rejected claim
that was rejected over “n” references (where “n” is a positive integer greater
than one).
In the present case, claims 12 and 29 (rejected under § 102) depend
directly upon claim 7 that stands rejected under § 103. Claims 57 and 63
(rejected under § 102) depend directly upon claim 52 that stands rejected
under § 103. Therefore, the Examiner’s rejection of claims 12, 29, 57, and
63 under § 102 fails to set forth a prima facie case of anticipation. 1
Because on this record it is clear the Examiner failed to establish a
prima facie case for the aforementioned claims, Appellant has no burden of
going forward to traverse the rejection of these improperly rejected claims.

1 The Examiner has the initial burden to set forth the basis for any
rejection so as to put the patent applicant on notice of the reasons why the
Applicant is not entitled to a patent on the claim scope that he seeks – the so
called “prima facie case.” In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir.
1992); In re Piasecki, 745 F.2d 1468, 1472 (Fed. Cir. 1984) (the initial
burden of proof is on the United States Patent and Trademark Office
(PTO)“to produce the factual basis for its rejection of an application under
sections 102 and 103”) (quoting In re Warner, 379 F.2d 1011, 1016 (CCPA
1967)).
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Accordingly, we pro forma reverse the Examiner’s improper anticipation
rejection of claims 12, 29, 57, and 63, and also the rejection of each
associated dependent claim (claims 13-15, 21, 22, 25, 30-32, 58-62, and 64-
66).
We consider below only the remaining claims that stand rejected on
appeal (as supported with a detailed statement of rejection in the Answer,
and not objected to by the Examiner, or reversed at the outset for the reason
discussed above), as follows:

REJECTIONS OF REMAINING CLAIMS
1. We consider the Examiner’s rejection of claims 1, 3-6, 35, 38, 39, 41, 46,
48-51, 69, and 72 under 35 U.S.C. § 102(e) as anticipated by Schuetze.
2. We consider the Examiner’s rejection of claims 2, 7-11, 33, 34, 36, 37,
40, 47, 52-56, 67, 68, 70, and 71 under 35 U.S.C. § 103(a) as
unpatentable over Schuetze and Gray.

ISSUES
1. Under § 102, has Appellant shown the Examiner erred in
finding claims 1, 3-6, 35, 38, 39, 41, 46, 48-51, 69, and 72
anticipated by Schuetze?
2. Under § 103, has Appellant shown the Examiner erred in
concluding that claims 2, 7-11, 33, 34, 36, 37, 40, 47, 52-56,
67, 68, 70, and 71 are obvious over the combination of
Schuetze and Gray?

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FACTUAL FINDINGS
We adopt the Examiner’s factual findings as set forth in the Answer
with respect to the claims addressed under Issues 1 and 2. (Ans. 3, et seq.).

ANALYSIS
ISSUE 1
§ 102 rejection of claims 1, 3-6, 35, 38, 39, 41, 46, 48-51, 69, and 72
Based on Appellant’s arguments in the Brief, we select representative
claim 1 to decide the appeal for the group of claims 1, 3-6, 35, 38, 39, 41,
46, 48-51, 69, and 72, that stand rejected under § 102. See 37 C.F.R.
§ 41.37(c)(1)(vii).
Appellant contends that Schuetze does not teach or suggest, either
alone or in combination with other reference, what claim 1 recites. (App.
Br. 15). Appellant urges that the teachings of Schuetze have “absolutely
nothing to do with the present invention.” (Id. at 16). Appellant further
avers that the Examiner “appears to demonstrate a lack of understanding of
what quantization is, and of the fact that quantization is something
independent of sorting and similarity measures.” (Id.). Appellant “submits
that the [PTO] has relied on an ‘apples and oranges’ reference (Schuetze).”
(Id.).
We begin our analysis by particularly observing that Appellant does
not argue any specific meaning or definition for the disputed claim term
“quantizing.” Instead, Appellant merely states that “quantization is
something independent of sorting and similarity measures.” (App. Br. 16).
However, these argued limitations are not claimed. Our reviewing court has
repeatedly warned against confining the claims to specific embodiments
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described in the specification. Phillips v. AWH Corp., 415 F.3d 1303, 1323
(Fed. Cir. 2005) (en banc).
Moreover, it is the Appellant’s burden to precisely define the
invention, not the PTO’s. In re Morris, 127 F.3d 1048, 1056 (Fed. Cir.
1997). Although a patent Applicant is entitled to be his or her own
lexicographer of patent claim terms, in ex parte prosecution it must be
within limits. In re Corr, 347 F.2d 578, 580 (CCPA 1965). The Applicant
must do so by placing such definitions in the Specification with sufficient
clarity to provide a person of ordinary skill in the art with clear and precise
notice of the meaning that is to be construed. See also In re Paulsen, 30
F.3d 1475, 1480 (Fed. Cir. 1994).
Here, when we look to the Specification for context, we observe that
paragraphs [0011] through [0014] of the Specification (cited by Appellant as
support for the claimed “quantizing”) merely discuss exemplary
embodiments. (App. Br. 8-9). Thus, on this record, Appellant has failed to
establish any specific meaning or definition for the disputed claim term
“quantizing” that supports the allegation of Examiner error. Instead,
Appellant merely asserts that the claimed “quantizing” is not taught or
suggested by the cited references. (App. Br. 15, et seq.).
Regarding the remaining independent claims 5, 38, 46, 50, and 72, we
note that Appellant merely recites the claim language, followed by a
statement that the rejection is traversed for the same reasons as stated for
claim 1. (App. Br. 17-19).
We particularly note the Examiner’s detailed response in the
Answer. (Ans. 25-26, et seq. “Response to Argument”). Appellant
did not file a Reply Brief.
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Based upon our review of the record, we find Appellant has failed to
present substantive arguments supported with specific factual evidence of
sufficient character and weight to persuade us of error regarding the
Examiner’s findings of anticipation regarding the cited Schuetze reference.
Merely reciting the language of the claim is insufficient. See 37
C.F.R. § 41.37(c)(vii) (“A statement which merely points out what a claim
recites will not be considered an argument for separate patentability of the
claim.”). Merely alleging that the reference has nothing to do with the
present invention (e.g., App. Br. 16) is insufficient to persuade us of
Examiner error. Attorney arguments and conclusory statements that are
unsupported by factual evidence are entitled to little probative value. See In
re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997); see also In re De Blauwe,
736 F.2d 699, 705 (Fed. Cir. 1984); and Ex parte Belinne, No. 2009-004693,
slip op. at 7-8 (BPAI Aug. 10, 2009) (informative), available at
http://www.uspto.gov/web/offices/dcom/bpai/its/fd09004693.pdf .)
Moreover, Appellant’s arguments fail to articulate any specific
difference between the claimed “quantizing” and the Examiner’s reading of
the claim on the Schuetze reference. “Argument in the brief does not take
the place of evidence in the record.” In re Schulze, 346 F.2d 600, 602
(CCPA 1965) (citing In re Cole, 326 F.2d 769, 773 (CCPA 1964)). This
reasoning is applicable here. We find Appellant’s arguments are conclusory
in nature and fail to address the thrust of the Examiner’s rejection.
On this record, we find Appellant has failed to present substantive
arguments and supporting evidence persuasive of Examiner error. For these
reasons, we find Appellant has not met the burden of showing reversible
error in the Examiner’s prima facie case of anticipation for representative
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claim 1 by specifically identifying to the Board of Patent Appeals and
Interferences what the Examiner did wrong.2
Arguments not made are waived. See 37 C.F.R. § 41.37(c)(1)(vii).
Accordingly, we sustain the Examiner’s § 102 rejection of
representative claim 1, and claims 3-6, 35, 38, 39, 41, 46, 48- 51, 69, and 72
(not argued separately) which fall therewith. See 37 C.F.R.
§ 41.37(c)(1)(vii).

ISSUE 2
§ 103 rejection of claims
2, 7-11, 33, 34, 36, 37, 40, 47, 52-56, 67, 68, 70, and 71
These claims were rejected by the Examiner as being obvious under
§ 103 over the combination of Schuetze and Gray. (Ans. 13 et seq.).
Appellant “submits that Gray does nothing to cure the deficiencies of
Schuetze.” (App. Br. 19).
However, we find no deficiencies with Schuetze for the reasons
discussed above regarding claim 1. Therefore, we sustain the Examiner’s
§ 103 rejection of claims 2, 7-11, 33, 34, 36, 37, 40, 47, 52-56, 67, 68, 70,
and 71 for the same reasons addressed supra regarding claim 1.

2 See In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011) (“Jung argues that the
Board gave improper deference to the examiner’s rejection by requiring
Jung to ‘identif[y] a reversible error’ by the examiner, which improperly
shifted the burden of proving patentability onto Jung. Decision at 11. This
is a hollow argument, because, as discussed above, the examiner established
a prima facie case of anticipation and the burden was properly shifted to
Jung to rebut it. . . . ‘[R]eversible error’ means that the applicant must
identify to the Board what the examiner did wrong . . . .”).

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DECISION
We reverse the Examiner’s § 102 rejection of claims 12, 29, 57, and
63.
We reverse the Examiner’s § 103 rejection of claims 13-15, 21, 22,
25, 30-32, 58-62, and 64-66.
We affirm the Examiner’s § 102 rejection of claims 1, 3-6, 35, 38, 39,
41, 46, 48-51, 69, and 72.
We affirm the Examiner’s § 103 rejection of claims 2, 7-11, 33, 34,
36, 37, 40, 47, 52-56, 67, 68, 70, and 71.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).

ORDER
AFFIRMED-IN-PART

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HOMERE, Administrative Patent Judge, dissenting-in-part.
I agree with the majority opinion (“Op.”) in all respects save one. I
write separately to voice my disagreement with the majority’s pro forma
reversal of the Examiner’s rejection of claims 12, 29, 57, and 63 under
§ 102, each of which depending upon a claim rejected under § 103. Because
of this so-called “inverted rejection,” the majority finds that the Examiner
failed to set forth a prima facie case of anticipation, and summarily reversed
the Examiner’s rejection of the cited claims. (Op. 5.) From that decision, I
respectfully dissent.
Our reviewing Court has held that Appellants have 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) (indicating that on appeal to
the Board, an Appellant can overcome a rejection by showing insufficient
evidence of prima facie case or by rebutting the prima facie case with
evidence.) (citing In re Rouffet, 149 F.3d 1350, 1355 (Fed. Cir. 1998)). See
also In re Jung3 (requiring Appellants to show a reversible error in the
Examiner’s rejection on appeal.)
In the present case, as noted by the majority, the Examiner carelessly
rejected claims 1-72 under § 102 as being anticipated by Schuetze while
rejecting under § 103 over the combination of Schuetze and Gray a number
of overlapping claims including claims 7 and 52 from which claims 12/ 29
and 57/ 63 depend respectively. Despite this oversight, I find that, on the
record before us, the Examiner has provided sufficient evidence to establish
a prima facie case of obviousness of claims 7, 12, 29, 52, 57, and 63. In

3 See supra note 2.
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other words, by having established that the subject matter of the cited claims
is taught by the combination of Schuetze and Gray, the Examiner has, albeit
awkwardly, shifted the burden to Appellant since one of ordinary skill in the
art would have been apprised of the factual basis for rejecting the claims
consistent with In re Oetiker and In re Piasecki.4 Therefore, I would have
considered the Examiner’s so-called inverted rejection as a mere harmless
error to then treat claims 7, 12, 29, 52, and 57 as being rejected over the
combination of Schuetze and Gray.
Further, it is noted that Appellant has not even raised this so-called
inverted rejection issue in this appeal. Instead, the majority chose to step
into Appellant’s shoes to sua sponte raise this issue, and to ultimately decide
it in Appellant’s favor. In my opinion, such a practice for the majority to act
as both prosecutor and judge is an ultra vires act. See Hyatt v. Dudas, 551
F.3d 1307, 1314 (Fed. Cir 2008) (“When the appellant fails to contest a
ground of rejection to the Board, section 1.192(c)(7) [(now section
41.37(c)(1)(vii))] imposes no burden on the Board to consider the merits of
that ground of rejection. . . . [T]he Board may treat any argument with
respect to that ground of rejection as waived.”). See also In re Guess, 347
Fed. Appx. 558, 559 (Fed. Cir. 2009) (“Appellants failed to argue that any
limitations unique to [the claims] survive [the rejection]. Appellants have
therefore waived any such arguments on appeal.”) (citing In re Watts, 354
F.3d 1362, 1367 (Fed. Cir. 2004)). Therefore, I would have considered
Appellant’s failure to raise this particular issue in this appeal as a waiver,

4 See supra note 1.
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and consequently allow the cited claims to fall with their respective base
claims.

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