Ex Parte Kamath et al

Patent Trial and Appeal Board

Dec 31, 2012

11180197 (P.T.A.B. Dec. 31, 2012)

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.
11/180,197 07/12/2005 Chandrika Kamath IL-10714B 3404
7590 12/31/2012
Eddie E. Scott
Assistant Laboratory Counsel
Lawrence Livermore National Laboratory
P.O. Box 808, L-703
Livermore, CA 94551
EXAMINER
ROSTAMI, MOHAMMAD S
ART UNIT PAPER NUMBER
2156
MAIL DATE DELIVERY MODE
12/31/2012 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 CHANDRIKA KAMATH and ERICK CANTU-PAZ
____________

Appeal 2010-006819
Application 11/180,1971
Technology Center 2100
____________

Before THU A. DANG, JAMES R. HUGHES, and
GREGORY J. GONSALVES, Administrative Patent Judges.

HUGHES, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
This is an appeal under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 1-8 and 10-17, which are all the claims remaining in the
application. Claims 9 and 18-36 were cancelled during prosecution. We
have jurisdiction under 35 U.S.C. § 6(b).

1 Application filed on July 12, 2005. The Real Party in Interest is Lawrence
Livermore National Security, LLC and the United States of America as
represented by the U. S. Department of Energy. (App. Br. 3.)
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We affirm.
Invention
Appellants’ invention relates to “decision trees and more particularly
to a parallel object-oriented decision tree system.” (Spec. 1, ¶ [0003].)2
Representative Claim
Independent claim 1, reproduced below further illustrates the
invention:
1. A decision tree based data mining system for processing
data; comprising:
a multiplicity of processors,
a multiplicity of data files including features in the data,
an object oriented pattern recognition algorithms module
operatively connected to said multiplicity of processors and
operatively connected to said multiplicity of data files for pattern
recognition by recognizing patterns among objects in the data based
upon features of the data,
a decision tree system including
an object oriented module operatively connected to said
multiplicity of processors and connected to said multiplicity of data
files to read said data and partition said data files among said
multiplicity of processors,
an object oriented module operatively connected to said
multiplicity of processors to identify said objects in the data wherein
said objects include relevant features,
an object oriented module operatively connected to said
multiplicity of processors to extract said relevant features,

2 We refer to Appellants’ Specification (“Spec.”); Reply Brief (“Reply Br.”)
filed Jan. 28, 2010; and Appeal Brief (“App. Br.”) filed July 16, 2009. We
also refer to the Examiner’s Answer (“Ans.”) mailed Jan. 20, 2010.
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an object oriented module operatively connected to said
multiplicity of processors to parallel sort said data using said
multiplicity of processors, if sorting is necessary,
an object oriented module operatively connected to said
multiplicity of processors to determine the best manner to split said
data according to some criterion, and
an object oriented module operatively connected to said
multiplicity of processors to split said data, and
a data mining system, having
a storage module, and
an object oriented linking module for linking said decision tree
system and said storage module.

Rejection on Appeal
The Examiner rejects claims 1-8 and 10-17 under 35 U.S.C. § 103(a)
as being unpatentable over Busche (U.S. Patent No. 6,430,547 B1, issued
Aug. 6, 2002), Runkler (U.S. Patent No. 7,197,504 B1, issued Mar. 27, 2007
(filed Apr. 21, 2000)) and Agrawal (U.S. Patent No. 6,003,029, issued Dec.
14, 1999).
Grouping of Claims
Based on Appellants’ arguments in the Brief, we will decide the
appeal on the basis of representative claim 1. See 37 C.F.R.
§ 41.37(c)(1)(iv) (2012).

ISSUES
1. Under § 103, did the Examiner err in finding that the
combination of Busche, Runkler, and Agrawal would have taught or
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Application 11/180,197

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suggested the limitations recited in independent claim 1 and the
commensurate limitation recited in independent claim 10?
2. Under § 103, did the Examiner err in combining Busche,
Runkler, and Agrawal.

FINDINGS OF FACT
We adopt the Examiner’s findings in the Answer and the Final Office
Action mailed on May 8, 2009 as our own, except as to those findings that
we expressly overturn or set aside in the analysis as follows.

ANALYSIS
Obviousness Rejection
Appellants contend, inter alia, the following:
The criterion that prior art reference, or references when
combined, must teach or suggest all the claim limitations has
not been met. The Busche, Runkler, and Agrawal references
fail to teach the limitations of Appellants’ claims 1-8 and 10-17
identified below.
(App. Br. 16.)
At the outset, we observe that Appellants’ arguments consist of a
recitation of the claim limitations (App. Br. 17), a conclusion that the recited
limitations are not taught or suggested by the cited references (App. Br. 18),
and no further arguments or evidence.
Based upon our review of the record before us, we find Appellants
have 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 fact and ultimate legal conclusion of
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obviousness. Merely reiterating the language of the claim is insufficient.
This form of argument does not amount to a separate patentability argument
and is unpersuasive of error in the Examiner’s rejection. See Ex parte
Belinne, No. 2009-004693, 2009 WL 2477843 at *3-4 (BPAI Aug. 10,
2009) (informative); see also 37 C.F.R. § 41.37(c)(iv) (“A statement which
merely points out what a claim recites will not be considered an argument
for separate patentability of the claim.”). Appellants’ argument “do[es] not
. . . explain why the Examiner’s explicit fact finding is in error.” Belinne,
2009 WL 2477843 at *4. Mere attorney arguments and conclusory
statements that are unsupported by factual evidence are entitled to little
probative value. 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),
On this record, we find Appellants have failed to present substantive
arguments and supporting evidence persuasive of Examiner’s error. Cf. In re
Baxter Travenol Labs., 952 F.2d 388, 391 (Fed. Cir. 1991) (“It is not the
function of this court to examine the claims in greater detail than argued by
an appellant, looking for nonobvious distinctions over the prior art.”).3
While we have fully considered Appellants’ responses in the Reply
Brief, we decline to address any new arguments not originally presented in
the principal Brief and we deem these newly presented arguments to be
waived. See Ex parte Borden, 93 USPQ2d 1473, 1474 (BPAI 2010)
(“informative”) (absent a showing of good cause, the Board is not required
to address arguments in the Reply Brief that could have been presented in
the principal Brief). With respect to all claims before us on appeal,

3 Arguments not made are waived. See 37 C.F.R. § 41.37(c)(1)(iv).

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arguments which Appellants could have made but chose not to make have
not been considered and are deemed to be waived. See 37 C.F.R.
§ 41.37(c)(1)(iv). See also In re Watts, 354 F.3d 1362, 1368 (Fed. Cir.
2004).
Combinability
No Reasonable Expectation of Success
Similar to the above, Appellants contend “[t]here could be no
combination of the Busche, Runkler, and Agrawal references that would
provide a reasonable expectation of success or that would show Applicants’
invention of claims 1-8 and 10-17.” (App. Br. 24.) Appellants provide no
further argument except that because the cited references do not disclose the
limitations of claim 1, “there could be no combination of the references that
would have reasonable expectation of success of providing Applicant’s
invention of claims 1-8 and 10-17.” (Id.) For the same reasons discussed
supra, we find this type of argument unavailing.
Motivation to Combine References
Appellants’ content that the Examiner did not provide a valid
explanation of how or why the cited references would or could be combined
to produce the missing claim elements. Appellants did not provide any
further evidence in support of the present argument. (App. Br. 25.)
We find this type of argument unavailing for the reasons discussed
supra. Moreover, we find that the Examiner did provide motivation to
combine the cited references. (Ans. 5 and 9.)
For these reasons, we sustain the Examiner’s § 103 rejection of
representative claim 1 over the combination of Busche, Runkler, and
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Agrawal. Claims 2-8 and 10-17, not argued separately, fall therewith. See
37 C.F.R. § 41.37(c)(1)(iv).

CONCLUSION OF LAW
Appellants have not shown that the Examiner erred in rejecting claims
1-8 and 10-17 under 35 U.S.C. § 103(a).

DECISION
We affirm the Examiner’s rejection of claims 1-8 and 10-17 under 35
U.S.C. § 103(a).

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).

AFFIRMED

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