Ex Parte Hodes

Board of Patent Appeals and Interferences

Dec 21, 2011

10788532 (B.P.A.I. Dec. 21, 2011)

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.
10/788,532 02/27/2004 Alan Scott Hodes 6928
54184 7590 12/22/2011
ALAN S. HODES
1755 POPPY AVE.
MENLO PARK, CA 94025-5737
EXAMINER
HASAN, SYED HAROON
ART UNIT PAPER NUMBER
2158
MAIL DATE DELIVERY MODE
12/22/2011 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte ALAN SCOTT HODES
____________

Appeal 2009-012106
Application 10/788,532
Technology Center 2100
____________

Before KRISTEN L. DROESCH, KALYAN K. DESHPANDE and
DAVID M. KOHUT, Administrative Patent Judges.

DROESCH, Administrative Patent Judge.
DECISION ON APPEAL
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STATEMENT OF THE CASE
Appellant seeks review under 35 U.S.C. § 134(a) of a final rejection
of claims 1-25. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM-
IN-PART and enter a new ground of rejection.
BACKGROUND
The invention generally relates to analysis of patents and patent
claims. Spec. ¶ 4; Abs. The invention includes steps and elements for
comparing patent claims to instances, such as described embodiments, prior
art references, or potentially infringing products. Spec. ¶¶ 37-41; Figs. 3-5.
The comparison can employ an ontology, which is a resource containing
knowledge regarding concepts and relationships among the concepts. Spec.
¶¶ 31, 35. Thus, a claim and an instance can be mapped to the ontology by
determining a correspondence between portions of the claim and portions of
the instance to the concepts in the ontology. Spec. ¶¶ 38-40. The mappings
can then be processed to make a determination of whether the instance and
the claim read on each other. Id. Further, based on the nature of the claim
and instance under analysis, the determination can indicate whether an
instance renders the claim invalid, renders the claim unpatentable or
infringes the claim. Spec. ¶¶ 38-40.
Claim 1 is illustrative and is reproduced below:
1. A method of analysis regarding at least one patent
claim, comprising:
a) determining a correspondence of the portions of the at
least one patent claim to the concept nodes of an ontology;
b) determining a correspondence of the portions of at
least one instance to the concept nodes of the ontology; and
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c) processing the determined correspondence of the
portions of the at least one patent claim and the determined
correspondence of the portions of the at least one instance;
wherein a result of processing the determined
correspondence of the portions of the at least one patent claim
portions and the determined correspondence of the portions of
the at least one instance includes a determination of whether the
at least one instance reads on the at least one patent claim.
The following claims are rejected as unpatentable under
35 U.S.C. § 103(a) over the applied prior art as follows:
claims 1-5, 11-14, and 18-25 over Roux (US 2002/0111941 A1)
and Stobbs (US 2004/0181427 A1);
claims 6-10 over Roux, Stobbs, and Copperman (US 6,711,585
B1); and
claims 15-17 over Roux, Stobbs and Sheremetyeva (Generating
Patent Claims from Interactive Input, 8th Int’l Natural Language Generation
(INLG) Workshop Proceedings 61-70 (1996)).
ISSUE
Did the Examiner err in determining that the claimed invention would
have been obvious to one with ordinary skill in the art at the time of the
invention in view of the combined teachings of the prior art?
ANALYSIS
Claims 1-5, 11-14 and 18-25
Independent claim 1 recites: “a) determining a correspondence of the
portions of the at least one patent claim to the concept nodes of an ontology;
b) determining a correspondence of the portions of at least one instance to
the concept nodes of the ontology; and c) processing the determined
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correspondence of the portions of the at least one patent claim and the
determined correspondence of the portions of the at least one instance . . . .”
Independent claims 13, 14 and 21 recite identical or substantially similar
limitations as sections a) through c) of claim 1.
The Examiner finds that Roux’s description of a method that includes
generating correspondences between documents to be retrieved, queries and
a semantic lattice meets limitations a) and b) recited in claim 1. Ans. 4
(citing Roux ¶¶ 38-41, 52, 75). The Examiner further finds that Roux’s
description of processing the two sets of correspondences to retrieve
documents meets the limitation in section c) of claim 1, which describes
processing the correspondences from the two determining steps recited in
limitations a) and b). Ans. 5 (citing Roux ¶¶ 41-43).
Indeed, Roux describes an apparatus and method for retrieving
documents in response to queries. Roux ¶ 41. The retrieval includes
preprocessing the documents and queries into internal representations, or
graphs, which express the syntactic relationships among terms contained in
the documents and queries. Roux ¶¶ 38-40, 52. Roux projects the graph of a
query onto a document and subsequently calculates a similarity between the
graphs. Roux ¶¶ 41, 75. The similarity includes syntactic similarity and
semantic similarity. Roux ¶¶ 75, 76. The semantic similarity utilizes a
semantic lattice that reflects similarities between terms used in the
documents and the queries. Roux ¶¶ 41, 91-95. The semantic similarity
between terms is computed by identifying the relative positions between the
document’s terms and the query’s terms within the semantic lattice. Roux ¶
92. For example, Roux determines whether the semantic lattice specifies
terms as semantically identical or merely related, such as, terms that are
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synonyms or related through a super-ordinated term. Roux ¶ 92. Roux’s
process further includes ranking and retrieving documents having the highest
degree of similarity to a query. Roux ¶ 41. Roux does not limit the process
to any particular field of use, instead suggesting a general use in retrieving
documents in a database. Roux ¶ 2. Moreover, Roux specifies that its
process provides a “core-basis for a large set of tools designed to perform
knowledge management.” Roux ¶ 100. The Examiner recognizes the
flexibility of Roux’s process by finding that the textual analysis described by
Roux could equally apply to patent claims. Ans. 4.
The Examiner further finds that Stobbs describes the processing
results recited in the “wherein” clauses of independent claims 1, 13, 14 and
21. Namely, Stobbs describes determining whether an instance reads on,
invalidates, infringes or renders unpatentable a patent claim. In support of
this finding, the Examiner finds that Stobbs describes a product
coverage/infringement analysis module 188 for determining whether
instances read on or infringe a patent claim. Ans. 5 (citing Stobbs ¶¶ 107-
109, Abs., Fig. 9). The Examiner also finds that Stobbs describes a validity
analysis module 190 for determining whether instances read on or invalidate
a patent claim. Id. Stobbs’ product coverage/infringement analysis module
188 utilizes an Internet search engine 186 to retrieve webpages containing
keywords extracted from patent claims or descriptions of products covered
by a claim. Stobbs ¶ 108. Similarly, validity analysis module 190 uses
Internet search engine 186 to retrieve webpages containing keywords
extracted from patent claims. Stobbs ¶ 109. The retrieved webpages include
the most likely candidates for possible infringement of the claims at issue.
Stobbs ¶¶ 108, 109.
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The Examiner determined that it would have been obvious to one of
ordinary skill in the art at the time of the invention to combine the teachings
of Roux and Stobbs in order to utilize Stobbs’ teachings to improve Roux’s
method, such that Roux’s information retrieval process would include the
discovery of documents, products or product descriptions that validate,
invalidate or infringe a patent claim. Ans. 5 (citing Stobbs ¶¶ 107-109; Abs.;
Fig. 9). In other words, the Examiner determined that one of ordinary skill at
the time of the invention would have found it obvious to apply Roux’s
generic document retrieval steps to the specific context of patent claim
analysis suggested by Stobbs. See Ans. 4-5. Thus, according to the
Examiner’s proposed modification, Roux’s document retrieval feature would
be utilized to process claims and instances to determine whether a
query/document reads on, invalidates or infringes a patent claim. See Ans. 5.
Appellant first argues that, contrary to the Examiner’s findings, Roux
does not disclose limitations a) through c) of independent claim 1. Br. 6-7.
Rather, Appellant asserts that Roux discloses a genus of text analysis, while
the claimed invention requires a species of patent claim analysis. Br. 7-8.
More specifically, Appellant asserts that claim analysis is a species of text
analysis since claim analysis requires element-by-element determinations
relative to patentability, invalidity and infringement. Id.
We do not agree with Appellant’s genus-species argument directed to
the teachings of Roux alone. The rejection does not rest on a mere finding
that the analysis of text and the analysis of patent claims are related as
genus-species. The rejection is based on the combined teachings of Roux
and Stobbs, as explained immediately above. One cannot show
nonobviousness by attacking references individually where the rejections are
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based on combinations of references. In re Merck & Co., Inc., 800 F.2d
1091, 1097 (Fed. Cir. 1986); In re Keller, 642 F.2d 413, 426 (CCPA 1981).
For the same reasons, we disagree with Appellant’s assertion that Roux’s
disclosure of processing text would not render obvious processing claims.
Br. 6.
Second, Appellant argues that the rejection relies on an improper
obvious-to-try rationale because the Examiner asserted that “any operation
that can be performed on a text document can also be performed on the text
of a patent claim.” Br. 7 (citing Final Rejection 18). We do not agree with
Appellant’s characterization of the rejection as based on an obvious-to-try
rationale. Rather, the Examiner determined that one of ordinary skill in the
art at the time of the invention would have found it obvious to adapt Roux’s
generic textual analysis to the specific field of patent claim analysis
suggested by Stobbs. The combination of Roux and Stobbs is no more than
the application of a technique used to improve one device (i.e., Roux’s
textual analysis) to a similar device (i.e., Stobbs’ patent claim analysis). KSR
International Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007) (“[I]f a
technique has been used to improve one device [or method], and a person of
ordinary skill in the art would recognize that it would improve similar
devices [or methods] in the same way, using the technique is obvious unless
its actual application is beyond his or her skill.”). Furthermore, we are
unpersuaded by Appellant’s argument that an obvious-to-try rationale is
improper. In KSR, the Court stated:
When there is a design need or market pressure to solve a
problem and there are a finite number of identified, predictable
solutions, a person of ordinary skill has good reason to pursue
the known options within his or her technical grasp. If this leads
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to the anticipated success, it is likely the product not of
innovation but of ordinary skill and common sense. In that
instance the fact that a combination was obvious to try might
show that it was obvious under § 103.

Id. at 421. Appellants do not direct us to objective evidence to demonstrate
that the combination of Roux and Stobbs would yield anything more than a
predictable result.
Third, Appellant challenges the relevance of Stobbs’ description to the
limitations recited in the “wherein” clauses of independent claims 1, 13, 14
and 21. App. Br. 8-9. Specifically, Appellant asserts that Stobbs’ module
188 does not determine infringement according to the steps of the claimed
invention. App. Br. 8. To support this assertion, Appellant notes the absence
of a description in Stobbs of an ontology, correspondences to the ontology
and the processing of the correspondences. Id.
Appellant’s arguments are unpersuasive because the rejection does not
rely on Stobbs alone to describe an ontology, correspondences or processing
of the correspondences. Rather, the rejection is based on the combined
teachings of Roux and Stobbs. Again, one cannot establish nonobviousness
by attacking a single reference, when obviousness is based on a combination
of teachings from multiple references. Merck; Keller. Here, the rejection is
premised on finding Roux’s textual analysis invention to be a flexible tool
that can process claims just as well as other forms of text. Moreover, the
rejection relies on Stobbs to establish patent claim analysis as a potential
field of use for Roux’s textual analysis tool. Appellant does not sufficiently
demonstrate how the foregoing features of Stobbs fail to suggest the concept
of an automated patent claim analysis that compares patent claims to textual
instances that may infringe or invalidate the patent claims.
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For all the foregoing reasons, we sustain the rejection of claims 1-5,
11-14 and 18-25 as obvious over Roux and Stobbs.
Claims 6-10
Claim 6 ultimately depends from claim 1 and further recites:
“determining whether there is a one to one correspondence between concept
nodes in the claim records and concept nodes in the instance records.”
Appellant alleges that the Examiner erred in finding the Copperman
describes the limitations of claim 6. Br. 9-10. Appellant’s allegation rests on
two premises: (1) Copperman does not disclose “claim records” and (2)
Copperman does not disclose a one to one correspondence between concept
nodes of an instance record and a claim record. Id.
We are not persuaded by Appellant’s arguments because they merely
point out the differences between the claimed invention and Copperman,
rather than addressing the combined teachings of the references. Merck;
Keller. The rejection relies on Copperman to establish two basic premises
that one with ordinary skill in the art would have recognized at the time of
the invention. First, Copperman establishes prior art knowledge of
taxonomic searches by matching a query to concept nodes in a knowledge
container (much like Roux’s text analysis). Ans. 12 (citing Copperman col.
2, ll. 53-59). Second, Copperman shows prior art knowledge of a one to one
correspondence between records and concept nodes within taxonomies.
Ans. 12 (citing Copperman col. 15, ll. 8-11). The Examiner’s findings from
Copperman are taken in conjunction with the previous determination that it
would have been obvious to apply Roux’s text analysis to the field of patent
claim analysis. Ans. 4-5, 11-12. Specifically, the Examiner determined that
it would have been obvious to apply Roux’s text analysis method to make
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several determinations, such as whether an instance reads on, infringes or
invalidates a patent claim. Ans. 4-5. Moreover, each determination of
whether an instance reads on, infringes or invalidates a patent claim is an
example of determining a one to one correspondence. See MPEP § 2131;
Spec. ¶ 7 (citing Chisum on Patents § 3.02(1)); App. Br. 10 (admitting that a
one to one correspondence “would typically be required” for determining
whether an instance invalidates or infringes a claim). Thus, we agree with
the Examiner that the use of a one to one correspondence would have been
an obvious expedient for determining whether an instance reads on, infringes
or invalidates a patent claim.
For all the foregoing reasons, we sustain the rejection of claims 6-10
as obvious over Roux, Stobbs and Copperman.
Claims 15-17
Claim 15 depends from independent claim 14 and further recites:
“determining a correspondence of the portions of an embodiment to the
concept nodes of the ontology; and processing the determined
correspondence of the embodiment portions and formulating the at least one
patent claim based at least in part thereon.” Claim 17, also dependent from
claim 14 recites nearly identical limitations.
Appellant asserts that the rejection failed to show how one of ordinary
skill could have combined the teachings of Roux, Stobbs and Sheremetyeva
to formulate a claim and then analyze the claim against the prior art as
required by claim 15 when read in conjunction with claim 14. App. Br. 10.
Countering this assertion, the Examiner finds that the claim is limited to
generating a new claim, but not analyzing the new claim against the prior
art. Ans. 27-28.
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We agree with Appellant’s argument. Claims 15 and 17 each recite,
“formulating the at least one patent claim” (emphasis added). Claim 14
provides antecedent basis for “the at least one patent claim” in the preamble.
The body of claim 14 further specifies steps for processing “the at least one
patent claim” in order to determine whether the claim is rendered invalid or
unpatentable by the prior art instance. Accordingly, we construe claims 15
and 17 as requiring the formulation of at least one patent claim and including
the processing of that patent claim according to the limitations of claim 14.
In contrast to construing claims 15 and 17 as incorporating the limitations of
claim 14 from which they depend, the Examiner states that the rejection is
merely premised on generating a new claim without processing the new
claim. Ans. 27-28. Thus, the Examiner does not sufficiently demonstrate
where or how all limitations of claims 15 and 17 are taught or suggested by
the cited prior art.
For all the foregoing reasons, we do not sustain the rejection of claims
15 and 17 as obvious over Roux, Stobbs and Sheremetyeva. Since claim 16
depends from claim 15, we do not sustain the rejection of claim 16 as
obvious over Roux, Stobbs and Sheremetyeva for the same reasons.
NEW GROUND OF REJECTION
We enter a new ground of rejection pursuant to our authority under 37
C.F.R. § 41.50(b). Claims 1, 13 and 14 are rejected under 35 U.S.C. § 101 as
being directed to non-statutory subject matter.
In accordance with § 101, there are four categories of patent eligible
subject matter: processes, machines, manufactures and compositions of
matter. Bilski v. Kappos, 130 S.Ct. 3218, 3225 (2010). Furthermore, the
Supreme Court has delineated several exceptions that constitute
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unpatentable subject matter outside the scope of § 101; one such exception
includes abstract ideas. Id.
Claims 1, 13 and 14 are directed to mental processes which constitute
an unpatentable abstract idea. Our reviewing courts have “refused to find
processes patentable when they merely claimed a mental process standing
alone and untied to another category of statutory subject matter even when a
practical application was claimed.” In re Comiskey, 554 F.3d 967, 979 (Fed.
Cir. 2009) (en banc); accord CyberSource Corp. v. Retail Decisions, Inc.,
654 F.3d 1366 (Fed. Cir. 2011). Claims 1, 13 and 14 do not expressly or
implicitly require the method to be performed by any machine, nor do the
claims require a transformation of a physical object or data. Rather, claims 1,
13 and 14 merely recite steps that can be performed in the human mind.
Specifically, the claims recite determining and processing steps involving
patent claims, instances and concepts nodes of an ontology without limits on
the manner or components with which one should perform the steps.
Moreover, Appellant’s written description does not limit the patent claims,
instances and concepts nodes of an ontology to those which can only be
generated by a machine or processed by a machine. Indeed, patent claims
and instances include textual or graphical expressions of ideas, namely,
inventions. Spec. ¶¶ 24-29, 39. An ontology, according to Appellant’s
Specification, is any type of resource (including non-physical resources) that
contains concepts and their relationships. Spec. ¶ 35. The correspondences
recited in the claims further represent relationships, or mappings, between
concepts in a claim and concepts in an ontology. Spec. ¶¶ 38-39.
Accordingly, Appellant’s claims 1, 13 and 14 are directed to a process that
can be performed entirely in the human mind.
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We further note that the broad language of Appellant’s claims
preempts the fundamental concept of claim analysis. See Bilski, 130 S.Ct at
3231 (finding that claims that cover the basic economic concept of hedging
would preempt the use of the concept in all fields). Indeed, claims 1, 13 and
14 broadly cover several of the basic mental steps of patent examination,
such as understanding what was invented, determining the state of the prior
art, construing the scope of a claim and comparing the scope of the claim to
the prior art to determine anticipation and obviousness. See, e.g., MPEP §§
704, 706, 706.02, 2111, 2131 (describing the examination process for
construing, searching and rejecting patent claims that are anticipated by the
prior art). Appellant’s claims would preempt patent claim analysis in all
fields where such analysis would be applied, including patent prosecution,
patent litigation and patent licensing.
Although we decline to reject every claim under our discretionary
authority under 37 C.F.R. § 41.50(b), we emphasize that our decision does
not mean the remaining claims are patentable. Rather, we leave the
patentability determination of the remaining claims to the Examiner. See
MPEP § 1213.02. With this in mind and should there be further prosecution
with respect to claims 2-12 and 15-25, the Examiner’s attention is directed to
Interim Guidance for Determining Subject Matter Eligibility for Process
Claims in View of Bilski v. Kappos, 75 Fed. Reg. 43,922 (July 27, 2010);
Memorandum to the TC Directors regarding New Interim Patent Subject
Matter Eligibility Examination Instructions, (August 24, 2009), available at
http://www.uspto.gov/web/offices/pac/dapp/opla/2009-08-25_interim_101_
instructions.pdf.
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DECISION
We AFFIRM the rejection of claims 1-5, 11-14 and 18-25 under
35 U.S.C. § 103(a) as being unpatentable over the combination of Roux and
Stobbs.
We AFFIRM the rejection of claims 6-10 under 35 U.S.C. § 103(a) as
being unpatentable over the combination of Roux, Stobbs and Copperman.
We REVERSE the rejection of claims 15-17 under 35 U.S.C. § 103(a)
as being unpatentable over the combination of Roux, Stobbs and
Sheremetyeva.
We enter a new ground of rejection for claims 1, 13 and 14 under
35 U.S.C. § 101 as directed to non-statutory subject matter.
TIME PERIOD
This decision contains a new ground of rejection pursuant to
37 C.F.R. § 41.50(b). 37 C.F.R. § 41.50(b) provides "[a] new ground of
rejection pursuant to this paragraph shall not be considered final for judicial
review." 37 CFR § 41.50(b) also provides that 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 proceeding will be remanded to
the examiner. . . .
(2) Request rehearing. Request that the proceeding be reheard
under § 41.52 by the Board upon the same record. . . .

No time period for taking any subsequent action in connection with this
appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).
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AFFIRMED-IN-PART
37 C.F.R. § 41.50(b)

ELD