Ex Parte Lee

Patent Trial and Appeal Board

Sep 22, 2016

13619686 (P.T.A.B. Sep. 22, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/619,686 09/14/2012
23400 7590 09/26/2016
POSZ LAW GROUP, PLC
12040 SOUTH LAKES DRIVE
SUITE 101
RESTON, VA 20191
FIRST NAMED INVENTOR
Eugene M. Lee
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
l 13708.128_CON1 2654
EXAMINER
ROBINSON, GRETA LEE
ART UNIT PAPER NUMBER
2169
NOTIFICATION DATE DELIVERY MODE
09/26/2016 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
Appeal2015-004121
Application 13/619,6861
Technology Center 2100
Before DEBRA K. STEPHENS, KEVIN C. TROCK, and
JESSICA C. KAISER, Administrative Patent Judges.
TROCK, Administrative Patent Judge.
DECISION ON APPEAL
Introduction
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner's
Non-Final Rejection of claims 26-43. We have jurisdiction under 35 U.S.C.
§ 6(b ).
We AFFIRM.
1 According to Appellant, the real party in interest is Eugene M. Lee. App.
Br. 4.
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Application 13/619,686
Invention
The claims are directed to a method and system for linking intellectual
property information to item of trade (IOT) information and to technical,
legal or interpretive analysis. Abstract.
Exemplary Claim
Claim 26, reproduced below, is illustrative of the claimed subject
matter with disputed limitations emphasized:
26. A method for linking information regarding intellectual
property, items of trade, and technical, legal or interpretive
analysis, comprising:
storing, in a computer processor device, intellectual
property information in a plurality of IP data records respectively
corresponding to individual intellectual property;
storing, in the computer processor device, IOT
information concerning an item of trade (IOT), the IOT
information being information regarding at least one of products
and services, the JOT information being stored segmented into
data records with each data record linked to a single intellectual
property in the IP data records;
storing, in the computer processor device, a technical,
legal or interpretive analysis, the technical, legal or interpretive
analysis being stored segmented into data records with each data
record linked to a single intellectual property in the IP data
records;
associating, in the computer processor device, the stored
intellectual property information with the stored IOT information
and the stored technical, legal or interpretive analysis,
wherein
the data records in the IOT information are forward and
backward linked so a user can search the IOT database, and
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follow a link in the data records returned as search results to the
IP data records that correspond to the IOT, and
the data records in the technical, legal or interpretive
analysis are forward and backward linked so a user can search
the technical, legal or interpretive analysis, and follow a link in
the data records returned as search results to the IP data records
that correspond to the IOT.
REJECTION
Claims 26-43 stand rejected under 35 U.S.C. § 102(e) as being
anticipated by Rivette et al. (US Patent 5,991,751; Nov. 23, 1999). Non-
Final Act. 3-9.
ANALYSIS
We have reviewed the Examiner's rejections and the evidence of
record in light of Appellant's argument that the Examiner has erred. We
disagree with Appellant's arguments and conclusions. We adopt as our own
the findings and reasons set forth by the Examiner in the action from which
this appeal is taken (Non-Final Act. 3-9) and the findings and the reasons set
forth in the Examiner's Answer (Ans. 8-11). We concur with the
conclusions reached by the Examiner and further highlight specific findings
and argument for emphasis as follows.
Independent Claims 26, 32, and 38
Appellant contends Rivette does not disclose "IOT information being
stored segmented into data records with each data record linked to a single
intellectual property in the IP data records," as recited in claim 26 and
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similarly recited in claims 32 and 38. App. Br. 13-14; Reply Br. 6-10.
Specifically, Appellant argues the Examiner's rejection "improperly requires
an artisan to combine and revise multiple distinct teachings in Rivette."
Reply Br. 8; App. Br. 14. Appellant further argues that Rivette's bill of
material (BOM) data is "linked to multiple intellectual properties" rather
than linked to a single intellectual property. Reply Br. 8-10 (citing Rivette
86:1--40, 88:14--27, Figs. 26, 86-87).
The Examiner finds, however, and we agree, Rivette discloses
databases 316 which include a patent database 614 (i.e., intellectual property
in IP data records) and a BOM database 626 (i.e., IOT information). Non-
Final Act. 4 (citing Rivette 16: 19-35); Ans. 9 (citing Rivette Figs. 6, 86-87);
see also Rivette 16:42-52. The Examiner further finds, and we agree,
Rivette links patents to BOMs; indeed, Rivette's patent citation module
"identif1ies] patents mapped to the BOMs." See Ans. 9 (citing Rivette Figs.
86-87); Non-Final Act. 9; see also Rivette 20:64--21:16.
We disagree with Appellant's arguments that Rivette does not link a
BOM to a single intellectual property. Reply Br. 8-10. Although Appellant
points out examples in Rivette in which BOMs are mapped to multiple
patents, e.g., "BOM_ID 1 (for the bicycle) is linked to [patent] DI and
[patent] D2," (Reply Br. 8 (citing Rivette Figs. 17, 26, 86-87)), linking
multiple patents to a BOM includes linking "a single intellectual property"
to the BOM-any one of the linked patents is a linked "single intellectual
property." Furthermore, Rivette's BOM_patent_xref table provides
examples in which a BOM is linked to only a single patent; e.g., BOM 3 is
linked to a single patent document D4, BOM 6 is linked to a single patent
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document D8, BOM 7 is linked to a single patent document D9, and BOM 9
is linked to a single patent document DlO. Rivette 72:20-27, Figs. 17, 26.
We also disagree with Appellant's arguments that the Examiner's
rejection "improperly requires an artisan to combine and revise multiple
distinct teachings" (Reply Br. 8) and to "improperly pick and choose how to
use Rivette's generic document databases" (App. Br. 14). While the
Examiner cites multiple portions of Rivette (see Non-Final Act. 3---6, 8-9;
see also Ans. 8-9), the portions the Examiner highlights describe Rivette' s
system's components, how those components function, and how those
components function together; e.g., the Examiner finds that Rivette provides
a plurality of databases 316 (Ans. 8 (citing Rivette 16: 19-35)); that Rivette's
databases 316 can store patent information 614 (Non-Final Act. 3--4 (citing
Rivette 11 :20--44)) and BOM information 626 (Non-Final Act. 6, 9 (citing
Rivette Figs. 86-87)); and that the patent information and BOM information
are linked using hyperlinks (Non-Final Act. 6, 9 (citing Rivette 117:7-
118:67)). Contrary to Appellant's arguments, these portions of Rivette do
not require an artisan "to combine and revise multiple distinct teachings"
(Reply Br. 8) or to "pick and choose how to use Rivette's generic document
databases," (App. Br. 14) but rather explain how Rivette's components and
system collectively functions. Accordingly, we are not persuaded by
Appellant's arguments that the Examiner erred because the Examiner cited
to multiple portions of Rivette.
Additionally, Appellant contends Rivette does not disclose "technical,
legal or interpretive analysis being stored segmented into data records with
each data record linked to a single intellectual property in the IP data
records," as recited in claim 26 and similarly recited in claims 32 and 38.
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App. Br. 14--15; Reply Br. 10-11. Specifically, Appellant argues Rivette's
"ability of a user to define storage, or to use modules, or to define a link
from a patent to a document or website," or to define groups would "fail[]
to lead one of skill in the art to arrive at the limitations recited in this claim
element." Reply Br. 11; App. Br. 15.
The Examiner finds, however, and we agree, Rivette discloses that
"depositions (papers from the court), pleadings, [and] prior art references"
(i.e., technical, legal, or interpretive analysis), can be stored in Rivette's
databases. Ans. 9 (citing Rivette 17:21--40, Fig. 6). The Examiner further
finds, and we agree, Rivette links patents to prior art references; indeed,
Rivette's patent citation module "identif[ies] patents that are cited in each of
the patents by reference to PatentRef table." See Ans. 9 (citing Rivette Figs.
86-87).
Appellant's arguments regarding user-defined storage, user-defined
groups, modules, and hyperlinks (App. Br. 14--15; Reply Br. 10-11) do not
address the Examiner's finding that Rivette's prior art references (i.e.,
technical, legal, or interpretive analysis) are linked to a patent (Ans. 9 (citing
Rivette Figs. 86-87); Non-Final Act. 6, 9).2 Accordingly, we are not
persuaded the Examiner erred in finding Rivette discloses "technical, legal
or interpretive analysis being stored segmented into data records with each
data record linked to a single intellectual property in the IP data records,"
within the meaning of claims 26, 32 and 38.
2 The Specification explains that the recited "technical analysis" may include
"qualitative/quantitative test data and ... prior art search results, etc." Spec.
iT 18.
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Additionally, Appellant, for the first time in the Reply Brief~ raises the
argument that Rivette does not disclose "the data records in the technical,
legal or interpretive analysis are forward and backward linked so a user can
search the technical, legal or interpretive analysis, and follow a link in the
data records returned as search results to the IP data records that correspond
to the IOT," as recited in claim 26 and similarly recited in claims 32 and 38.
Reply Br. 11-13. Appellant contends these arguments are made in light of
the Examiner's Answer, but the record shows findings concerning these
contested limitations were first made in the Examiner's Non-Final Rejection
(Non-Final Act. 6, 8, 9) and Appellant's opening brief did not present any
argument regarding forward and backward linked technical, legal or
interpretive analysis (see App. Br. 13-15). Therefore, these newly presented
arguments are not entitled to our consideration because they were not
initially presented in the opening brief and were not in response to a new
argument present by the Examiner. Optivus Technology, Inc. v. Ion Beam
Applications S.A., 469 F.3d 978, 989 (Fed. Cir. 2006) (argument raised for
the first time in the reply brief that could have been raised in the opening
brief is waived); Exparte Borden, 93 USPQ2d 1473, 1473-74 (BPAI 2010)
(informative opinion) (absent a showing of good cause, the Board is not
required to address an argument newly presented in the reply brief that could
have been presented in the principal brief on appeal).
Accordingly, for the reasons stated above, we sustain the Examiner's
rejection of independent claims 26, 32, and 38.
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Dependent Claims 27, 33, and 39
Appellant contends Rivette does not disclose "the IOT records are
searchably indexed by company and division," as recited in claim 27 and
similarly recited in claims 33 and 39. App. Br. 15-16; Reply Br. 14--15.
Specifically, Appellant argues Rivette discloses user-defined groups and
discloses that "a customer to whom [Rivette' s] system is adapted may be a
company," but does not disclose searching IOT records by both company
and division. App. Br. 16 (citing Rivette 15:34--36); Reply Br. 14.
The Examiner finds, however, and we agree, Rivette performs
database searches by indexing database data. Ans. 9 (citing Rivette 25:50-
51 ). Further, the Examiner finds, and we agree, Rivette discloses "search
parameters, such as assignee." Ans. 10 (citing Rivette Fig. 53).
Appellant's arguments directed to Rivette's user-defined groups and
company customers (App. Br. 15-16; Reply Br. 14--15) are not persuasive
because they do not persuasively address the Examiner's finding that Rivette
searches its databases by assignees. Rivette's "searching module ...
conduct[ s] searches through the data in the databases 316 pursuant to search
requests from the clients" by indexing data in the databases 316. Rivette
25:38--42, 50-51. As discussed supra, those indexed and searched databases
316 include BOM databases 626, i.e., IOT information (Rivette 16:42-52,
Fig. 6), and Figure 53 of Rivette describes a "searching module" that allows
a client to search by assignee, i.e., company and division (see Rivette 27:14--
20). Accordingly, we are not persuaded the Examiner erred in finding
Rivette discloses "the IOT records are searchably indexed by company and
division," within the meaning of claims 27, 33, and 39. Therefore, we
sustain the Examiner's rejection of dependent claims 27, 33, and 39.
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Dependent Claims 28, 34, and 40
Appellant contends Rivette does not disclose "the IOT records are
searchably indexed by technology, product and component," as recited in
claim 28 and similarly recited in claims 34 and 40. App. Br. 16-17; Reply
Br. 16-17. Specifically, Appellant argues Rivette's "non-indexed text
search for a search string that returns search results fails to teach or suggest
that any records, let alone the IOT records, are searchably indexed, let alone
searchably indexed by 'technology, product, and component."' App. Br. 17;
Reply Br. 16-17. Appellant further argues Rivette's "patent records (FIG.
53) are searchably indexed" but Rivette's BOM data (i.e., IOT information)
is not searchably indexed. Reply Br. 16.
The Examiner finds, however, and we agree, "optional search
parameters" can be defined for Rivette's search (Ans. 10 (citing Rivette
Fig. 53)); those optional search parameters include a technology class
(Rivette Fig. 53, 27:14--20).
Appellant's arguments that Rivette' s text searches are "non-indexed"
is not supported by Rivette's disclosure; indeed, Rivette discloses that
"[ s ]earch engine 424 is well suited for performing text searches because the
text in the databases 316 is indexed." Rivette 31:53-58 (emphasis added).
Furthermore, we disagree with Appellant's argument that Rivette's BOM
records are not searchably indexed. Reply Br. 16-17. As discussed supra,
Rivette discloses databases 316, which include BOM databases 626, are
indexed and searched. Rivette 16:19-35, 42-52, 25:38--42, 50-51, Fig. 6.
Because Rivette's databases 316 include BOM databases, an indexed search
of Rivette' s databases 316 based on technology class includes an indexed
search of Rivette's BOM databases 626 based on technology class. We also
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note that a search for a BOM is a search for a technology, product, or
component since a BOM defines a technology, product, and component,
e.g., a bike, a lawn mower, or an engine. Rivette Fig. 24; see Rivette 86:6-
10.
Accordingly, we are not persuaded the Examiner erred in finding
Rivette discloses "the IOT records are searchably indexed by technology,
product and component," within the meaning of claims 28, 34, and 40.
Therefore, we sustain the Examiner's rejection of dependent claims 28, 34,
and 40.
Dependent Claims 29, 35, and 41
Appellant contends Rivette does not disclose "the IOT records are
searchably indexed by license agreement and region or country," as recited
in claim 29 and similarly recited in claims 35 and 41. App. Br. 17-19;
Reply Br. 18-19. Specifically, Appellant argues Rivette's
"acknowledgement that a patent can be licensed, and that a system can be
adapted to a customer/company, and that a user can define 'user-defined
groups,' and that records can be searched," does not disclose records which
are searchably indexed by license agreement and region or country. App.
Br. 18; Reply Br. 18-19. Appellant further argues Rivette does not "index[]
by the combination of 'license agreement and region or country."' Reply
Br. 18.
The Examiner finds, however, and we agree, Rivette's database data
includes licensing agreement data (Ans. 11 (citing Rivette 11 :20-39));
indeed, Rivette's databases 316 include financial databases 638 containing
licensing agreement data (Rivette 18:4--5, 79:44--67, Fig. 6). The Examiner
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further finds, and we agree, that search parameters include foreign
documents. Ans. 11 (citing Rivette Fig. 53); see also Rivette 27:5-9.
Appellant's arguments that Rivette does not index and search by
license agreement and region or country is not persuasive. As discussed
supra, Rivette' s "searching module ... conduct[ s] searches through the data
in the databases 316 pursuant to search requests from the clients" by
indexing data in the databases 316. Rivette 25:38--42, 50---51. Because the
data in Rivette's databases 316 include licensing agreement data and foreign
document data (Rivette 11:20---39, 18:4--5, 27:5-9, 79:44--67), Rivette's
search indexes licensing data and foreign document data. Furthermore,
Rivette discloses that multiple search parameters can be defined in a search,
i.e., a combination of indexed search parameters are disclosed by Rivette.
Rivette 27: 1-35, Fig. 53. Accordingly, we are not persuaded the Examiner
erred in finding Rivette discloses "the IOT records are searchably indexed
by license agreement and region or country," within the meaning of claims
29, 35, and 41. Therefore, we sustain the Examiner's rejection of dependent
claims 29, 35, and 41.
Dependent Claims 30, 36, and 42
Appellant contends Rivette does not disclose "the IOT records are
searchably indexed by litigation and region or country," as recited in claim
30 and similarly recited in claims 36 and 42. App. Br. 19-20; Reply Br. 20.
Specifically, Appellant argues Rivette's "disclosure that a user can define
'user-defined groups,' and that records can be searched" does not disclose
records which are searchably indexed by litigation and region or country.
App. Br. 19-20; Reply Br. 20. Appellant further argues Rivette does not
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index "by the combination of 'litigation and region or country.'" Reply Br.
20.
The Examiner finds, however, and we agree, database data searched
includes database groups (Non-Final Act. 7 (citing Rivette 19:48-52, 26:34--
45)) and database groups can include litigation data (see Non-Final Act. 4
(citing Rivette 11:20-44); see also Rivette 67:51-55, 68:8-11). As
discussed supra, we agree with the Examiner finding Rivette's search
parameters include foreign documents. Ans. 11 (citing Rivette Fig. 53); see
also Rivette 27:5-9.
Appellant's arguments that Rivette does not index and search by
litigation data and region or country is not persuasive. As discussed supra,
Rivette' s "searching module ... conduct[ s] searches through the data in the
databases 316 pursuant to search requests from the clients" by indexing data
in the databases 316. Rivette 25:38--42, 50-51. Because the data in
Rivette' s databases 316 include litigation data and foreign document data
(Rivette 11:20-44, 27:5-9, 67:51-55, 68:8-11 ), Rivette's search indexes
litigation data and foreign document data. Furthermore, Rivette discloses
that multiple search parameters can be defined in a search, i.e., a
combination of indexed search parameters are disclosed by Rivette. Rivette
27: 1-35, Fig. 53. Accordingly, we are not persuaded the Examiner erred in
finding Rivette discloses "the IOT records are searchably indexed by
litigation and region or country," within the meaning of claims 30, 36, and
42. Therefore, we sustain the Examiner's rejection of dependent claims 30,
36, and 42.
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Remaining Claims 31, 3 7, and 43
Appellant does not argue separate patentability for dependent claims
31, 37, and 43 which depend directly or indirectly from claims 26, 32, and
38. See App. Br. 11-20. For the reasons set forth above, therefore, we are
not persuaded the Examiner erred in rejecting these claims. See In re Lovin,
652 F.3d 1349, 1356 (Fed. Cir. 2011) ("We conclude that the Board has
reasonably interpreted Rule 41.3 7 to require applicants to articulate more
substantive arguments if they wish for individual claims to be treated
separately."). Accordingly, we sustain the Examiner's rejections of claims
31, 37, and 43. See 37 C.F.R. § 41.37(c)(l)(iv).
DECISION
We AFFIRM the Examiner's 35 U.S.C. § 102(e) rejection of claims
26-43.
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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