Ex Parte LeeDownload PDFPatent Trial and Appeal BoardMar 17, 201713599639 (P.T.A.B. Mar. 17, 2017) Copy Citation 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. 2 Appeal 2014-009733 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. 3 Appeal 2014-009733 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? 4 Appeal 2014-009733 Application 13/599,639 (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” 5 Appeal 2014-009733 Application 13/599,639 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). 6 Appeal 2014-009733 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 7 Appeal 2014-009733 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. 8 Appeal 2014-009733 Application 13/599,639 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. 9 Appeal 2014-009733 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). 10 Appeal 2014-009733 Application 13/599,639 AFFIRMED 11 Copy with citationCopy as parenthetical citation