Ex Parte Kim et al

Patent Trial and Appeal Board

Oct 22, 2012

09912522 (P.T.A.B. Oct. 22, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte JIN-KWAN KIM, JONG-SOO YOON, and YEA-SUN YOON
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Appeal 2010-000729
Application 09/912,522
Technology Center 2100
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Before, DEBRA K. STEPHENS, ERIC S. FRAHM, and
DAVID M. KOHUT, Administrative Patent Judges.

KOHUT, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2010-000729
Application 09/912,522

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This is a decision on appeal under 35 U.S.C. § 134(a) of the final
rejection of claims 1, 3-7, 9-14, and 16-18.1 We have jurisdiction under 35
U.S.C. § 6(b).
We reverse the Examiner’s rejection of these claims.

INVENTION
The invention is directed to a method and computer-based system for
analyzing and utilizing intellectual property information through the use of a
search strategy and by accessing Internet websites to search for and collect
intellectual property information. Spec. 3-6. Claim 1 is representative of the
invention and is reproduced below:
1. A method for analyzing and utilizing intellectual property
(IP) information, comprising steps of:
(a) registering search strategy formulas for extracting IP
information into a IP information extraction unit;
(b) accessing and searching Internet websites that provide IP
information based on the registered search strategy
formulas, and extracting first IP information according to
the search;
(c) converting the first IP information to a standard form and
storing the first IP information, and transmitting the first
IP information converted in the standard form to a
research center analyzing unit;
(d) discarding the first IP information upon a determination
by the research center analyzing unit that the first IP
information is not related to at least one project
accessible by the research center analyzing unit;
(e) if the first IP information is determined to include IP
information that is related to the least one project,
accessing the Internet websites and extracting second IP
information corresponding to the first IP information
upon a request for detailed information; and

1 Claims 2, 8, and 15 were previously cancelled.
Appeal 2010-000729
Application 09/912,522

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(f) converting the second IP information to the standard
form and storing and transmitting the second IP
information converted in the standard form to the
research center analyzing unit,
wherein the step (c) includes steps of:
determining if third IP information has been received from
the research center analyzing unit, the third IP information
including technical analyses and opinion contents; and
storing the third IP information upon receiving the third
IP information; and
wherein the IP information extraction unit stores a
plurality of predetermined keywords.

.

REFERENCES
Unger US 5,721,910 Feb. 24, 1998

Walker US 5,862,223 Jan. 19, 1999

Ohtsuka US 6,088,765 July 11, 2000

Adler US 2003/0033295 A1 Feb. 13, 2003

REJECTIONS AT ISSUE
Claims 4-14 and 16-18 are rejected under 35 U.S.C. § 101 as being
directed to non-statutory subject matter.2 Ans. 4-6.
Claims 1 and 3 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Unger and Adler. Ans. 6-11.

2 The Examiner’s statement of the rejection includes claim 15. Ans. 4. As
this claim has been cancelled, we have removed it here.
Appeal 2010-000729
Application 09/912,522

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Claims 4-7, 9-14, 16, and 17 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over the combination of Unger, Adler, and Walker. Ans.
11-27.
Claim 18 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over the combination of Unger, Adler, Walker, and Ohtsuka. Ans. 27-29.

ISSUES
Did the Examiner err in finding that claims 4-14 and 16-18 are
directed to non-statutory subject matter?
Did the Examiner err in finding that the combination of Unger and
Adler teaches or suggests transmitting the first and second IP information
converted in the standard form to a research center analyzing unit?3

ANALYSIS
35 U.S.C. § 101 rejection
Claims 4-14 and 16-18 contain claim language that includes a variety
of different “computer units” including a “research center analyzing unit.”
Appellants argue that the claims contain statutory subject matter consistent
with In re Bilski because the term “computer” associates hardware to the
functionality of the “units.” App. Br. 9. The Examiner finds that there is
nothing in Appellants’ Specification that defines the term “computer units.”
Ans. 31. As such, the Examiner finds that, since a computer is required to
execute software and a unit is software, the designation “computer unit”
does not necessarily limit the units to hardware. Ans. 31. Instead,

3 Appellants make additional arguments with respect to claims 1, 3-7, 9-14,
and 16-18. App. Br. 11-16. We will not address the additional arguments as
this issue is dispositive of the appeal.
Appeal 2010-000729
Application 09/912,522

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“computer unit” can be interpreted broadly to encompass purely software.
Ans. 5. We disagree. Appellants’ Specification, on page 11, requires the
research center analyzing unit 500 to have a plurality of project duty PCs
510, i.e., personal computers, and a plurality of research center PCs 520.
See also Figure 1. Therefore, while we agree the Examiner that the term
“computer unit” can be interpreted to encompass software, we find that
taking a broad, but reasonable, interpretation in light of Appellants’
Specification requires at least the research center analyzing unit to be
interpreted as encompassing hardware. Thus, we agree with Appellants that
the claim contains statutory subject matter and we cannot sustain the
Examiner’s rejection of claims 4-14 and 16-18.

35 U.S.C. §103(a) rejections
Claim 1
Claim 1 requires transmitting first IP information and second IP
information to a research center analyzing unit after converting the
information into a standard form. Independent claims 4 and 11 contain a
similar limitation. Claims 3, 5-7, 9, 10, 12-14, and 16-18 depend upon one
of independent claims 1, 4, and 11. Appellants argue that neither Unger nor
Adler teaches this limitation because a research center analyzing unit is not
the same as a graphical interface because a graphical interface does not
analyze information, it simply displays information.. App. Br. 11. The
Examiner interprets a “research analyzing unit” as “any ‘unit’ which would
allow ‘analysis’ to be performed” and, thus, a graphical interface as taught
by Unger. Ans. 33.However, we disagree. Taking the broad, but reasonable
interpretation of “research center analyzing unit” in light of the
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Specification, we find that the “research center analyzing unit” classifies and
analyzes IP information. The Examiner does not provide sufficient
evidence, nor do we find, that Unger’s graphical interface performs any
analysis or classification. The additional references were not cited to teach
or suggest this limitation and we will not engage in any inquiry as to
whether these additional references cure the noted deficiencies. As such, we
cannot sustain the Examiner’s rejection of claims 1, 3-7, 9-14, and 16-18.

CONCLUSION
The Examiner erred in finding that claims 4-14 and 16-18 are directed
to non-statutory subject matter.
The Examiner erred in finding that the combination of Unger and
Adler teaches or suggests transmitting the first and second IP information
converted in the standard form to a research center analyzing unit.

SUMMARY
The Examiner’s decision to reject claims 4-14 and 16-18 under 35
U.S.C. § 101 and claims 1, 3-7, 9-14, and 16-18 under 35 U.S.C. § 103(a) is
reversed.

REVERSED
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