Ex Parte Lee

Patent Trial and Appeal Board

Mar 13, 2017

13618979 (P.T.A.B. Mar. 13, 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.
13/618,979 09/14/2012 Eugene M. Lee 113708.121_CON7 9895
23400 7590 03/15/2017
POSZ LAW GROUP, PLC
12040 SOUTH LAKES DRIVE
SUITE 101
EXAMINER
MOONEYHAM, JANICE A
RESTON, VA 20191 ART UNIT PAPER NUMBER
3689
NOTIFICATION DATE DELIVERY MODE
03/15/2017 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):
mailbox@poszlaw.com
dposz@poszlaw.com
tvarndell @ poszlaw. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte EUGENE M. LEE
Appeal 2014-008495
Application 13/618,979
Technology Center 3600
Before JOHN A. JEFFERY, ST. JOHN COURTENAY III, and CAROLYN
D. THOMAS, Administrative Patent Judges.
JEFFERY, Administrative Patent Judge.
DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s
decision to reject claims 21^42. We have jurisdiction under 35 U.S.C.
§ 6(b). We affirm.
STATEMENT OF THE CASE
Appellant’s invention is an integrated intellectual property (IP) system
that includes IP docketing and prosecutor applications. The docketing
application provides information for managing and scheduling all
prosecution duties relating to patents, trademarks, and copyrights. See
generally Abstract; Spec. 1,23. Claim 21 is illustrative:
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Application 13/618,979
21. A computer program stored on a non-transitory
computer-readable medium with a computer-implemented
method for electronic intellectual property (IP) prosecution, the
instructions for implementing the steps of:
providing a date indication and an electronically
cognizable identifier on patent prosecution documents, wherein
the electronically cognizable identifier is a predetermined code
indicating the type of action;
electronically identifying the type of document
responsive to the electronically cognizable identifier on one of
the patent prosecution documents;
providing an IP docketing application that includes rules
to be taken corresponding to different types of actions;
generating, in response to the one of the patent
prosecution documents with the electronically cognizable
identifier, a document having a predetermined form that is
retrieved and then pre-filled with IP docketing information
relevant to a combination of the type of action and the date
indication; and at the same time electronically entering, into the
IP docketing application, the date indication and the
electronically cognizable identifier to trigger the IP docketing
application to make a docket entry based on the type of the
action, the date indication, and the corresponding rules.
THE REJECTIONS
The Examiner rejected claims 21—42 under 35 U.S.C. § 112, first
paragraph as failing to comply with the written description requirement.
Final Act. 4—5.1
The Examiner rejected claims 21, 23—25, 27—30, 32, 34—36, and 38—
41 under 35 U.S.C. § 103(a) as unpatentable over Snyder (US 2002/0111953
1 Throughout this opinion, we refer to (1) the Final Rejection mailed
September 11, 2013 (“Final Act.”); (2) the Appeal Brief filed April 10, 2014
(“App. Br.”); (3) the Examiner’s Answer mailed May 30, 2014 (“Ans.”); and
(4) the Reply Brief filed July 30, 2014 (“Reply Br.”).
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Al; Aug. 15, 2002), Grow (US 6,694,315 Bl; Feb. 17, 2004), and
Zimmerman (US 6,484,933 Bl; Nov. 26, 2002). Final Act. 5—27.
The Examiner rejected claims 22 and 33 under 35 U.S.C. § 103(a) as
unpatentable over Snyder, Grow, Zimmerman, and Leedom (US 5,329,447;
July 12, 1994). Final Act. 27—29.
The Examiner rejected claims 26 and 37 under 35 U.S.C. § 103(a) as
unpatentable over Snyder, Grow, Zimmerman, and Grainger (WO 01/95215
Al; Dec. 13, 2001). Final Act. 29-30.
The Examiner rejected claims 31 and 42 under 35 U.S.C. § 103(a) as
unpatentable over Snyder, Grow, Zimmerman, and Manual of Patent
Examining Procedure (MPEP) § 1415.01 (Aug. 2001). Final Act. 30-31.
RELATED APPEALS
On page 2 of the Reply Brief, Appellant cites six related appeals, five
of which are cited on page 4 of the Appeal Brief. We decided the appeals in
two of those applications, where one application (10/229,273) involved
multiple appeals. See Ex parte Lee, No. 2009-010022 (BPAI Apr. 22, 2011)
(“LeeF); Ex parte Lee, No. 2014-009230 (PTAB Aug. 5, 2016) (“Lee IF),
reh ’g denied (PTAB Nov. 15, 2016). The appeal in Application 13/599,415
has also been decided. See Ex parte Lee, No. 2014-003734 (PTAB Mar. 2,
2017).
THE WRITTEN DESCRIPTION REJECTION
The Examiner finds that Appellant’s written description does not
support (1) generating a document having a predetermined form, and (2)
electronically entering a date indication and an electronically cognizable
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identifier into an IP docketing application, where steps (1) and (2) are
performed at the same time as claimed. Final Act. 4—5. Although, the
Examiner acknowledges that the original claims recited that these steps are
performed at substantially the same time, that performance is said to differ
from performing the steps at the same time as recited in claim 21. Ans. 4—7.
Appellant argues that because the original independent claims recited
performing the above-noted steps at substantially the same time, that
recitation, considered in light of the automatic docketing and response
generation functionality on pages 19 and 60 of the Specification and Figure
20, provides sufficient written description support for the phrase “at the
same time” in claim 21. App. Br. 7—8; Reply Br. 3—5.
ISSUE
Has the Examiner erred in rejecting claim 21 by finding that
Appellant’s original disclosure does not convey with reasonable clarity that
Appellant possessed simultaneously (1) generating a document having a
predetermined form, and (2) electronically entering a date indication and an
electronically cognizable identifier into an IP docketing application?
ANALYSIS
It is undisputed that original independent claim 21 recited performing
steps (1) and (2) above at substantially the same time. The written
description issue, then, turns on one question: Does the fact that original
claim 21 recited performing these steps at substantially the same time
convey with reasonable clarity that Appellant possessed performing these
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steps at the same time as now claimed in claim 21? On this record, we find
that it does.
It is well settled that original claims are part of the Specification, and,
in many cases, will satisfy the written description requirement. Crown
Packaging Tech., Inc. v. Ball Metal Beverage Container Corp., 635 F.3d
1373, 1380 (Fed. Cir. 2011) (citing AriadPharms., Inc. v. EliLilly & Co.,
598 F.3d 1336, 1349 (Fed. Cir. 2010) (enbanc)). Certain claims, however,
such as claims to a functionally defined genus, will not satisfy the written
description requirement without a disclosure showing that the applicant had
invented species sufficient to support the claim. Crown Packaging, 635
F.3d at 1380.
That exception, however, is inapplicable here. To be sure, performing
steps at substantially the same time is broader than performing the steps at
the same time because it contemplates a small range of times that includes,
but is not limited to, simultaneous performance. This interpretation is
consistent with both the Examiner’s and Appellant’s proffered definitions of
the term “substantially” which, notably, both define the term, in pertinent
part, as “largely.” See Ans. 4; Reply Br. 4—5 (citing definitions of
“substantially”); see also Wilson Sporting Goods Co. v. Hillerich & Bradsby
Co., 442 F.3d 1322, 1328-29 (Fed. Cir. 2006) (“The term ‘substantial
implies ‘approximate,’ rather than perfect.”). That is, performing steps at
substantially the same time includes not only performing the steps at the
same time, but also at other times that, while not exactly the same time, are
nonetheless largely or essentially the same time consistent with the
proffered definitions. To the extent that the Examiner interprets performing
the steps at substantially the same time in original claim 21 to somehow omit
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performing those steps at the same time (see Ans. 4), such an interpretation
is unreasonable given the scope of the limitation.
So by deleting the term “substantially” to recite “at the same time” as
now claimed in claim 21, Appellant narrowed the limitation to recite solely
simultaneous performance, and therefore excluded other times that are
largely or essentially at the same time, but not exactly at that time. See App.
Br. 7 (explaining why claim 21 was narrowed during prosecution).
To be sure, although an invention need not be described verbatim, a
description that merely renders the invention obvious does not satisfy the
written description requirement. See AriadPharms., Inc. v. Eli Lilly & Co.,
598 F.3d 1336, 1352 (Fed. Cir. 2010) (enbanc) (citations omitted). But that
is not the case here.
Nor is this a case where Appellant’s original disclosure fails to show
that Appellant invented species sufficient to support the claim—an omission
that would likewise fail to satisfy the written description requirement. See
Crown Packaging, 635 F.3d at 1380. Rather, this is a case where Appellant
simply narrowed a slightly broader time-based limitation to a particular time
by deleting the term “substantially.” Given the language of original claim
21 which includes that particular time—and indeed recites it explicitly—we
agree with Appellant that performing the above-noted steps at substantially
the same time as originally claimed provides sufficient written description
support for the phrase “at the same time” in claim 21. See App. Br. 7—8.
Therefore, we are persuaded that the Examiner’s written description
rejection of claims 21—42 is erroneous.
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THE REJECTION OVER SNYDER, GROW, AND ZIMMERMAN
Regarding claim 21, the Examiner finds that Snyder (1) provides a
date indication and an electronically cognizable identifier on patent
prosecution documents; (2) electronically identifies the type of document
responsive to the identifier on one of the documents; (3) provides an IP
docketing application including the recited rules; and (4) electronically
enters the date indication and identifier into the docketing application to
trigger the application to make a docket entry as claimed. Final Act. 5—7.
Although the Examiner acknowledges that Snyder does not generate a
document with a predetermined form that is then pre-filled with docketing
information, the Examiner cites Grow for teaching this element in
concluding that the claim would have been obvious. Id. 7—8. The Examiner
also concludes that generating this document simultaneously with entering
the recited data into the docketing application would have been obvious to
expedite the process of responding to and docketing a received prosecution
document. Id. 8.
Lastly, the Examiner cites Zimmerman for teaching that providing an
electronically cognizable identifier as a predetermined code indicating the
action’s type is known in the art, and that using such an identifier in the
Snyder/Grow system would have been obvious. Id. 8—9.
Appellant argues that the cited prior art does not teach or suggest
generating the recited form-based document responsive to one of the patent
prosecution documents with the electronically cognizable identifier. App.
Br. 10-12; Reply Br. 6—10. Although Appellant acknowledges that Grow
generates a document, Appellant contends that Grow’s document is not
generated responsive to a patent prosecution document with the recited
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identifier as claimed, but rather is based on manual data entry. App. Br. 11—
12; Reply Br. 7—8.
Appellant also contends that simultaneously generating the recited
form-based document and electronically entering the recited data into the IP
docketing application as claimed is not a matter of obvious design choice as
the Examiner contends, nor has the Examiner explained why these steps
should be performed simultaneously. App. Br. 12—13; Reply Br. 10-12.
ISSUES
I. Under § 103, has the Examiner erred by finding that Snyder, Grow,
and Zimmerman collectively would have taught or suggested:
(1) generating the recited form-based document simultaneously with
entering the recited data into the docketing application as recited in claim
21?
(2) forwarding the document with a predetermined form to a
predetermined individual, where the document is a notification to a
predetermined addressee indicating receipt of the office action, and includes
the recited IP docketing informationas recited in claim 23?
(3) providing, from the IP docketing application, application-specific
data that is used by other IP applications to fill out forms and responses as
recited in claim 28?
II. Is the Examiner’s proposed combination of references supported by
articulated reasoning with some rational underpinning to justify the
Examiner’s obviousness conclusion?
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ANALYSIS
Claims 21, 24, 25, 27, 29, 30, 32, 35, 36, 38, 40 and 41
We begin by noting that the Examiner’s reliance on the Zimmerman
reference in the obviousness rejection of claim 21 is undisputed. Rather, as
noted above, this dispute turns solely on the Examiner’s reliance on Snyder
and Grow for teaching the recited document generation and IP docketing
application data entry limitations. Therefore, we confine our discussion
principally to Snyder and Grow.
Grow generates “assembled” documents in the process shown in
Figure 3. Grow, col. 7,11. 14—17. In step 330, case data from case table 230
is combined with a form document from form table 270 to generate a test
document. Grow, col. 9,11. 13—21. Although, assembled documents can be
created in step 330, their generation is not limited to this step. See Grow,
col. 15,11. 51—52 (noting that step 330 is an example of when assembled
documents are generated). In any event, the exemplary assembled document
in Grow’s Figure 4(c) is created by inserting data from the case table 230 in
Figure 4(b) into corresponding fields in form document 400 in Figure 4(a).
Grow, col. 9,11. 18-21; col. 15,1. 35-col. 16,1. 42.
Not only can each assembled document be generated for the entire
proceeding during step 330, but Grow’s system can also, among other
things, generate only those assembled documents selected by the user in
stage 370. Grow, col. 9,11. 21—27.
Given this functionality, we see no error in the Examiner’s finding
that Grow generates a litigation-based document, namely an Answer to a
received Complaint, having a predetermined form that is retrieved and then
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pre-filled with IP docketing application that is at least relevant to an action
type and date indication. Final Act. 7; Ans. 9-10.
Nor are we persuaded of error in the Examiner’s finding that the
relied-upon document in Grow, namely an Answer, is generated responsive
to a document, namely a received Complaint, particularly since the Answer
must be filed with the court 30 days after the Complaint is served. Id.',
Grow, col. 5,11. 64—66. Although, there are some manual steps involved in
generating an “assembled” Answer using Grow’s technique in Figure 3, the
document is nevertheless generated automatically in step 330 or some other
process stage. See Grow, col. 15,11. 51—52 (noting that step 330 is an
example of when assembled documents are generated).
So even if a user must enter data before Grow’s system generates an
assembled document, such as an Answer, this initial manual phase of the
process is still performed responsive to receiving a litigation document,
namely a Complaint—a point that Appellant apparently acknowledges. See
Reply Br. 8 (“Grow may disclose to manually enter data in response to
receiving a litigation document....”) (emphasis added). That is, but for
receiving the Complaint, this initial manual step would not be performed in
Grow (at least in the scenario consistent with the Examiner’s position), and
but for this manual step, the Answer document would not be generated.
Nothing in the claim precludes manual steps in this chain of causation and,
as such, Appellant’s arguments regarding manual steps in Grow’s process
(Reply Br. 8—9) are unavailing and not commensurate with the scope of the
claim.
Although the relied-upon received Complaint in Grow is a litigation-
based case document and not a patent prosecution document with an
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electronically cognizable identifier, the Examiner nevertheless relies on
Snyder’s paragraph 52 for teaching that feature. See Ans. 10—11. On this
record, we see no error the Examiner’s findings and conclusions in that
regard based on the collective teachings of Grow and Snyder.
Nor are we persuaded of error in the Examiner’s conclusion that
generating the recited form-based document simultaneously with entering
the recited data into the IP docketing application would have been obvious at
least to the extent that performing that such a simultaneous performance
would expedite both docketing a received prosecution document and
responding to it. Final Act. 8; Ans. 12. Indeed, there are only two
possibilities in this regard: the steps are either performed sequentially or
simultaneously. Certainly, performing the steps at least partially
simultaneously would at least contribute to expediting the docketing and
response process as opposed to performing the steps sequentially,
particularly in light of the manual steps involved in Grow’s assembled
document generation process.
Nor is there any persuasive evidence on this record proving that the
document generation and data entry steps could not be performed at least
partially simultaneously, for example, by multitasking.2 In general,
performing process steps simultaneously is faster than performing them
sequentially—speed that would expedite the overall process as the Examiner
indicates. Final Act. 8; Ans. 12. Therefore, on this record, we find the
Examiner’s obviousness rationale is supported by articulated reasoning with
2 “Multitasking” is “[a] mode of operation offered by an operating system in
which a computer works on more than one task at a time.” Microsoft
Computer Dictionary 321 (3ded. 1997).
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some rational underpinning to justify the Examiner’s obviousness
conclusion. To the extent that the Examiner’s proposed combination would
somehow increase the level of difficulty and complexity of the docketing
task as Appellant contends (App. Br. 12—13)—a theory that is
unsubstantiated on this record—the drawbacks of any such complexity may
very well be outweighed by the benefits provided by the combination. In
any event, such considerations amount to an engineering trade-off well
within the level of ordinarily skilled artisans.
Lastly, Appellant’s argument that Grow teaches away from the
claimed invention (Reply Br. 12—13) is raised for the first time in the Reply
Brief and is, therefore, waived as untimely. See 37 C.F.R. § 41.41(b)(2)
(2012). But even if the argument was timely raised (which it is not), it is
unpersuasive for the reasons previously discussed.
Therefore, we are not persuaded that the Examiner erred in rejecting
claim 21, and claims 24, 25, 27, 29, 30, 32, 35, 36, 38, 40, and 41 not argued
separately with particularity.
Claims 23 and 34
We also sustain the Examiner’s rejection of claim 23 reciting (1)
determining whether the identifier indicates an office action; and (2)
forwarding the document with a predetermined form to a predetermined
individual, where the document with the form that is generated is a
notification to a predetermined addressee indicating receipt of the office
action, and includes the recited IP docketing information. Final Act. 9—10;
Ans. 12-13.
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On this record, we see no error in the Examiner’s reliance on (1)
Snyder for teaching entering information regarding received office actions in
a docketing system in paragraph 52, and (2) Grow for teaching forwarding
assembled documents generated responsive to receiving a case document
(which could be an office action in a patent prosecution context in light of
Snyder) along with a reminder to a predetermined user workstation
(addressee) for further action. Ans. 12—13. Despite Appellant’ arguments to
the contrary (App. Br. 14—15; Reply Br. 13—14), Appellant does not
persuasively rebut the Examiner finding that Grow’s reminder is a
notification at least indicates receipt of the office action. Ans. 13. Notably,
Grow’s reminders (e.g., email messages) can be sent on the notification date
to remind the user of a pending critical date. Grow, col. 12,1. 65 — col. 13,1.
2. For example, if a Complaint was served on June 1, the critical date for
filing the Answer is June 30; therefore, the notification date is June 30 or
earlier which, in one example, is June 25 to allow for advance warning.
Grow, col. 6,11. 2—10.
This advance warning—even if minimal—at least indicates receipt of
the case document (i.e., the Complaint), namely that the document was
received, and, as a result, there is a forthcoming critical date that is the
deadline to file an Answer. Although Grow’s reminders pertain to litigation-
based case documents and not patent prosecution documents such as office
actions, the Examiner does not rely solely on Grow for teaching the
limitations of claim 23, but rather also Snyder for data entry and docketing
techniques pertaining to office actions as noted above. Appellant’s
arguments regarding Snyder’s and Grow’s individual shortcomings in this
regard, then, do not show nonobviousness where, as here, the rejection is
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based on the cited references’ collective teachings. See In re Merck & Co.,
Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986). Accord Ans. 12 (noting this
point).
Therefore, we are not persuaded that the Examiner erred in rejecting
claim 23, and claim 34 not argued separately with particularity.3
Claims 28 and 39
We also sustain the Examiner’s rejection of claim 28 reciting
providing, from the IP docketing application, application-specific data that is
used by other IP applications to fill out forms and responses. Final Act. 14;
Ans. 13-14.
Despite Appellant’s arguments to the contrary (App. Br. 15—16; Reply
Br. 15—16), we see no error in the Examiner’s reliance on the information
sent from Snyder’s docketing system (DS) 105 to IP offices via their
electronic interfaces in paragraph 47 for at least suggesting that this provided
data is used by other IP applications at those offices to fill out forms and
responses. See Ans. 14. Although Snyder’s paragraph 47 does not state
explicitly that IP offices use the information to fill out forms and responses,
such a use would nevertheless have been at least an obvious variation,
particularly in light of Snyder’s system interfacing with programs provided
3 We leave to the Examiner to consider whether claim 28’s recited
notification to a predetermined addressee indicating office action receipt
merely pertains to the generated document’s content and, therefore, does not
further limit the claim functionally under the printed matter doctrine. See
King Pharms. v. Eon Labs, Inc., 616 F.3d 1267, 1277—81 (Fed. Cir. 2010)
(holding merely informing someone about the existence of an inherent
property of a method did not add novelty to an otherwise anticipated claim).
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by patent offices, including the USPTO’s Electronic Filing System (EFS)
and Patent Application Information Retrieval (PAIR) systems in paragraph
51.
Therefore, we are not persuaded that the Examiner erred in rejecting
claim 28, and claim 39 not argued separately with particularity.
THE OTHER OBVIOUSNESS REJECTIONS
We also sustain the Examiner’s obviousness rejections of claims 22,
26, 31, 33, 37, and 42. Final Act. 27—31. Because these rejections are not
argued separately with particularity, we are not persuaded of error in those
rejections for the reasons previously discussed.
CONCLUSION
The Examiner erred in rejecting claims 21—42 under § 112, first
paragraph, but did not err in rejecting those claims under § 103.
DECISION
The Examiner’s decision rejecting claims 21—42 is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED
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