Ex Parte Lee

Patent Trial and Appeal Board

Mar 17, 2017

13599639 (P.T.A.B. Mar. 17, 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.
13/599,639 08/30/2012 Eugene M. Lee 113708.121_CON5 4217
23400 7590 03/21/2017
POSZ LAW GROUP, PLC
12040 SOUTH LAKES DRIVE
SUITE 101
RESTON, VA 20191
EXAMINER
MOONEYHAM, JANICE A
ART UNIT PAPER NUMBER
3689
NOTIFICATION DATE DELIVERY MODE
03/21/2017 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 2014-009733
Application 13/599,639
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, 22, 24—29, and 31—36, and 38-41. We have
jurisdiction under 35 U.S.C. § 6(b). We affirm.
STATEMENT OF THE CASE
Appellant’s invention is an intellectual property (IP) information
analysis, searching, and access system that provides, among other things,
license information. To this end, the system uses an IP licensing application
that, among other things, prepares customized license agreements. See
generally Spec. 1, 45^48; Figs. 1, 11—12. Claim 21 is illustrative:
Appeal 2014-009733
Application 13/599,639
21. A method for managing licenses, comprising:
providing, by a computer processor device, a first data base which is
configured to store customized license agreements;
providing, by the computer processor device, a second data base
which is configured to store predetermined sections of licenses, the
predetermined sections include form license paragraphs, licensing rates, and
customizable basic license agreements;
preparing, by the computer processor device, one of the customized
license agreements utilizing the second data base to provide a predetermined
section which is incorporated into the one of the customized license
agreements; and
recording, by the computer processor device, during preparation of the
one of the customized license agreements stored in the first data base,
electronic annotations relating to individual sections in the customized
license agreements, content of the electronic annotations being searchable.
RELATED APPEALS
On page 2 of the Reply Brief, Appellant cites seven related appeals,
only one of which is cited on page 2 of the Appeal Brief.1 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) (“Leer); Ex parte Lee, No. 2014-009230 (PTAB Aug. 5, 2016)
(“Lee IF’ ), reh ’g denied (PTAB Nov. 15, 2016). The appeals in
Applications 13/599,415, 13/618,979, and 13/619,486 have also been
decided. See Ex parte Lee, No. 2014-003734 (PTAB Mar. 2, 2017); Ex
parte Lee, No. 2014-008495 (PTAB Mar. 13, 2017); and Ex parte Lee, No.
2014-008498 (PTAB Mar. 13, 2017).
1 Although the Appeal Brief filed January 20, 2014 is incorrectly styled as
an amendment in the heading on its first page, we treat this apparent
typographical error as harmless.
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Application 13/599,639
THE REJECTIONS
The Examiner rejected claims 21, 22, 28, 29, 35, and 36 under 35
U.S.C. § 103(a) as unpatentable over Shirley (US 5,692,206; Nov. 25, 1997)
and Williamson (US 7,080,076 Bl; July 18, 2006). Final Act. 3—14.2
The Examiner rejected claims 24—26, 31—33, and 38-403 under 35
U.S.C. § 103(a) as unpatentable over Shirley, Williamson, and Frank (US
7,801,830 Bl; Sept. 21, 2010). Final Act. 1^U19.
The Examiner rejected claims 27, 34, and 41 under 35 U.S.C. § 103(a)
as unpatentable over Shirley, Williamson, and Rivette (US 6,014,663; Jan.
11,2000). Final Act. 19-21.
THE REJECTION OVER SHIRLEY AND WILLIAMSON
The Examiner finds that Shirley discloses many recited elements of
independent claim 21 including recording electronic annotations relating to
individual sections in customized license agreements while preparing one of
the agreements. Final Act. 3—7. According to the Examiner, Shirley’s
annotations are in the form of (1) redlines made to contract documents; (2)
notes that a user records in notepad 212 in column 15, lines 36 to 44; and (3)
user notes and legal information in legal advisor 400. See Final Act. 5—7;
2 Throughout this opinion, we refer to (1) the Final Rejection mailed June
19, 2013 (“Final Act.”); (2) the Appeal Brief filed January 20, 2014 (“App.
Br.”); (3) the Examiner’s Answer mailed May 23, 2014 (“Ans.”); and (4) the
Reply Brief filed July 23, 2014 (“Reply Br.”).
3 Although the Examiner omits claims 38-40 in the statement of the
rejection, the Examiner nonetheless includes those claims in the
corresponding discussion. Compare Final Act. 14 with Final Act. 15—16, 18.
Accordingly, we include claims 38-40 here for clarity, and treat the
Examiner’s error as harmless.
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Application 13/599,639
Ans. 3—9. Notably, the Examiner finds that all of these annotations relate to
individual sections in customized license agreements, and are recorded while
one of the agreements is prepared. See id.
Although the Examiner acknowledges that Shirley does not disclose
explicitly that the content of these annotations is searchable, the Examiner
cites Williamson as teaching this feature in concluding that the claim would
have been obvious. Final Act. 7—8; Ans. 5, 8.
Appellant argues, among other things, that the three elements in
Shirley that the Examiner maps to the recited annotations are not related to
the agreements’ individual sections, nor are they recorded while one of the
agreements is prepared as claimed. App. Br. 9—13; Reply Br. 3—11.
Appellant adds that not only is there no reason to modify the
Shirley/Williamson system to record annotations during agreement
preparation, the Examiner’s proposed combination requires changes in
functions in Shirley’s relied-upon elements contrary to established
obviousness case law, and results from impermissible hindsight. App. Br.
13—14; Reply Br. 3—11.
ISSUES
(1) Under § 103, has the Examiner erred in rejecting claim 21 by
finding that Shirley and Williamson collectively would have taught or
suggested a computer processing device recording searchable electronic
annotations relating to individual sections in customized license agreements
while preparing one of the agreements?
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(2) Is the Examiner’s proposed combination supported by articulated
reasoning with some rational underpinning to justify the Examiner’s
obviousness conclusion?
ANALYSIS
We begin by construing the term “annotations” in claim 1. Notably,
Appellant’s Specification does not define this term, unlike at least one other
term which leaves no doubt as to its meaning. See Spec. 2 (defining the term
“application”). We, therefore, construe the term “annotation” in accordance
with its plain meaning, namely “the making of notes: a note of explanation:
comment.” The Wordsworth Concise English Dictionary 36 (G.W.
Davidson et al. eds. 1994). The same dictionary defines the term “note,” in
pertinent part, as “a distinguishing mark: a sign or symbol... an observation
or remark ... a short statement or record . . . .” Id. at 659.
Given these definitions, we see no error in the Examiner’s mapping
the three identified forms of data in Shirley to the recited annotations,
namely (1) redlines made to contract documents; (2) notes that a user
records in note pad 212 in column 15, lines 36 to 44; and (3) user notes and
legal information in legal advisor 400. See Final Act. 5—7; Ans. 3—9. That
is, each of these forms of data constitutes an “annotation” under the term’s
plain meaning.
Nor do we see error in the Examiner’s finding that Shirley at least
suggests that at least the notepad-based annotations (1) are recorded during
agreement preparation, and (2) at least relate to individual sections in
customized license agreements. In Shirley’s Figure 8, a contract folder is
generated by, among other things, a user selecting the “author contract”
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function in step 710—a process detailed in Figure 10. See Shirley, col. 10,
11. 29-43. As shown in Figure 10, after the user selects the notepad function
at step 802, the process then proceeds to step 820 where a notepad text editor
504 is coupled with notepad 212, and text editor 504 is activated so that the
user can now edit text in the notepad. Shirley, col. 15,11. 36-42; Figs. 5, 10.
The notepad is typically used to record notes related to the negotiation
process or generating the contract folder. Shirley, col. 15,11. 43 45.
Notably, after the user edits notepad text (i.e., records annotations) in
step 820 of Shirley’s Figure 10, the process returns to step 802 for further
contract authoring selections as indicated by the arrows in that figure. See
Shirley, col. 15,11. 45—47. Given this intermediate notepad editing step in
Shirley’s contract authoring process, Shirley at least suggests recording
electronic annotations during agreement preparation, as claimed.4
So even assuming, without deciding, that user notes 444 in Shirley’s
legal advisor and redlined annotations are not recorded during agreement
preparation as Appellant contends (Reply Br. 10-11), Appellant still does
not persuasively rebut the Examiner’s reliance on the third form of
electronic annotations in Shirley noted above, namely the annotations in
notepad 212.
Because Shirley’s notepad-based annotations are related to at least the
negotiation process or generating the contract folder (Shirley, col. 15,11. 43—
45), they are at least related to individual agreement sections despite the fact
4 “[T]he question under 35 U.S.C. § 103 is not merely what the references
expressly teach but what they would have suggested to one of ordinary skill
in the art at the time the invention was made.” Merck & Co., Inc. v. Biocraft
Laboratories, Inc., 874 F. 2d 804, 807-08 (Fed. Cir. 1989) (emphasis
added).
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Application 13/599,639
that these notepad-based annotations are also related to the contract folder as
a whole as Appellant contends. App. Br. 11; Reply Br. 7—9. That these
annotations are in a contract folder 200 as shown in Figure 2 as Appellant
indicates (Reply Br. 7—10) does not negate these annotations’ relation to
individual sections of a customized agreement generated from elements in
this folder. That is, the fact that the annotations are stored in that folder
along with other elements that are used to generate an agreement means that
these annotations are at least related to the agreement’s individual sections.
Therefore, despite the fact that Shirley’s notepad relates to the contract
folder and its documents as a whole as Appellant acknowledges (App. Br.
11; Reply Br. 9), Shirley’s notepad also relates to individual sections of the
agreement generated from elements in this folder. Appellant’s arguments to
the contrary are unavailing and not commensurate with the scope of the
claim.
And as noted previously, Shirley’s notepad-based annotations are also
related to individual agreement sections in the sense that the annotations are
related to the negotiation process pertaining to the agreement—an
agreement comprising individual sections. See Shirley, col. 15,11. 43 45.
Accord Final Act. 6 (finding that Shirley’s notepad-based annotations in
column 15 are related to a contract’s individual provisions or sections that
parties negotiate). The Examiner’s point is well taken: it is plausible that
parties can negotiate individual contract provisions or sections and, in such a
scenario, record notes in Shirley’s notepad 212 pertaining to this section-
based negotiation. But even if Shirley’s notepad-based annotations are
limited to the agreement as a whole and do not specifically mention
individual sections comprising that agreement, the annotations are still at
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Application 13/599,639
least related to those sections that collectively comprise the agreement as a
whole.
And even assuming, without deciding, that Shirley’s notepad is not
searchable as Appellant contends (App. Br. 11), we see no error in the
Examiner’s reliance on Williamson to show that searching annotations in
legal documents is known in the art, and that providing searchable
annotations in Shirley—including those in notepad 212—would have been
obvious. See Final Act. 7—8 (citing Williamson, col. 3,11. 37^46; col. 9,11.
39-41). Such an enhancement uses prior art elements predictably according
to their established functions—an obvious improvement. See KSR Int 7 Co.
v. Teleflex, Inc., 550 U.S. 398, 417 (2007). That Shirley teaches that text
can be searched in connection with information available in legal advisor
400—information that includes user notes 444 of a negotiating database 440
as shown in Figure 4—only bolsters the Examiner’s conclusion that making
Shirley’s notepad-based annotations searchable would have been obvious.
See Shirley, col. 8,11. 4A48; col. 14,1. 56-col. 15,1. 17.
For the reasons noted above, we also find unavailing Appellant’s
contention the Examiner’s proposed combination requires changes in
functions in Shirley’s relied-upon elements contrary to KSR, and allegedly
results from impermissible hindsight. App. Br. 13—14; Reply Br. 3—11. On
this record, we find that the Examiner’s proposed combination is supported
by articulated reasoning with some rational underpinning to justify the
Examiner’s obviousness conclusion.
Therefore, we are not persuaded that the Examiner erred in rejecting
claim 21, and claims 22, 28, 29, 35, and 36 not argued separately with
particularity.
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THE REJECTION OVER SHIRLEY, WILLIAMSON, AND FRANK
We also sustain the Examiner’s obviousness rejection of claim 245
reciting, in pertinent part, searching the agreements’ electronic annotations
to retrieve one or more customized license agreements as a search result.
Final Act. 14—19.
Despite Appellant’s arguments to the contrary (App. Br. 14—15; Reply
Br. 12—14), Appellant does not persuasively rebut the Examiner’s reliance
on Frank for at least suggesting the recited annotation search functionality,
and that providing such functionality in the Shirley/Williamson system
would have been obvious. Final Act. 15—16; Ans. 10. Even assuming,
without deciding, that Frank relates to the entire contract as Appellant
contends (App. Br. 15; Reply Br. 13), the Examiner’s rejection is not based
solely on Frank, but rather the collective teachings of Shirley, Williamson,
and Frank. As such, Appellant’s arguments regarding Frank’s individual
shortcomings do not show nonobviousness where, as here, the rejection is
based on the cited references’ collective teachings. See In re Merck & Co.,
5 Although claims 24—27 are indefinite because they depend directly or
indirectly from cancelled claim 23, we nonetheless presume that claim 24
was intended to depend from independent claim 21. Claims 31—33 are also
indefinite because they depend directly or indirectly from cancelled claim
30. Similarly, claims 38-40 are indefinite because they depend directly or
indirectly from cancelled claim 37. We likewise presume that these claims
were intended to depend from their respective independent claims. We
leave appropriate correction by amendment to Appellant in the event of
further prosecution. We note Appellant indicates that the “[cjanceled claims
are not included in the attached Appendix A.” App. Br. 4. Although the
Board is authorized to reject claims under 37 C.F.R. § 41.50(b), no inference
should be drawn when the Board elects not to do so. See MPEP § 1213.02.
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Application 13/599,639
Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986). But even assuming, without
deciding, that the Shirley/Williamson/Frank annotation search function only
involves the agreement as a whole as Appellant seems to suggest (see Reply
Br. 13), the searched annotations are still at least related to the individual
sections that collectively comprise the agreement as a whole.
Therefore, we are not persuaded that the Examiner erred in rejecting
claim 24, and claims 25, 26, 31—33, and 38 40 not argued separately with
particularity.
THE OTHER OBVIOUSNESS REJECTION
We also sustain the Examiner’s obviousness rejection of claims 27,
34, and 41. Final Act. 19—21. Despite nominally arguing this rejection
separately, Appellant reiterates similar arguments made in connection with
the independent claims, and alleges that Rivette fails to cure those purported
deficiencies. App. Br. 14—15. We are not persuaded by these arguments for
the reasons previously discussed.
CONCLUSION
The Examiner did not err in rejecting claims 21, 22, 24—29, and 31—
36, and 38-41 under § 103.
DECISION
The Examiner’s decision rejecting claims 21, 22, 24—29, and 31—36,
and 38-41 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).
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AFFIRMED
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