Ex Parte Lee

Patent Trial and Appeal Board

Feb 28, 2017

13599415 (P.T.A.B. Feb. 28, 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.
13/599,415 08/30/2012 Eugene M. Lee 113708.121_CON3 2161
23400 7590 03/02/2017
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
03/02/2017 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):
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PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte EUGENE M. LEE
Appeal 2014-003734
Application 13/599,415
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 2 \-A 1. We have jurisdiction under 3 5
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 not only ties a given IP right to licenses, but also includes a negotiation
history application. See generally Spec. 1, 45^46; Figs. 1, 11—12. Claim 21
is illustrative:
Appeal 2014-003734
Application 13/599,415
21. A method for providing information relating to a
license, comprising:
providing a searchable license data store which is
configured to store information representative of license
agreements;
recording, in a computer processor device, license
negotiation histories that correspond to the license agreements,
wherein the license negotiation histories include electronic
annotations of terms in the license agreements; and
searching, by the computer processor device in the
searchable license data store, the annotations of the license
agreements, to retrieve one or more licenses as a search result.
THE REJECTIONS
The Examiner rejected claims 21, 22, 28, 29, 35, and 36 under 35
U.S.C. § 103(a) as unpatentable over Hamscher (US 2002/0188638 Al; Dec.
12, 2002), Powell (US 2001/0032189 Al; Oct. 18, 2001), and I. Eisen & S.
Murphrey, Searching for Annotation in Documents On a Computer, IBM
Tech. Disci. Bulletin (TDB), Res. Disci. n318 10-90 (1990) (“Eisen”). Final
Act. 2-8.1
The Examiner rejected claims 23, 24, 27, 30, 31, 34, 37, 38, and 41
under 35 U.S.C. § 103(a) as unpatentable over Hamscher, Powell, Eisen, and
Wilkinson (US 2002/0099637 Al; July 25, 2002). Final Act. 8-10, 12-13.2
1 Throughout this opinion, we refer to (1) the Final Rejection mailed April 1,
2013 (“Final Act.”); (2) the Appeal Brief filed September 30, 2013 (“App.
Br.”); (3) the Examiner’s Answer mailed December 3, 2013 (“Ans.”); and
(4) the Reply Brief filed February 3, 2013 (“Reply Br.”).
2 We consolidate the Examiner’s two separate rejections based on Hamscher,
Powell, Eisen, and Wilkinson here for clarity and brevity.
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Application 13/599,415
The Examiner rejected claims 25, 32, and 39 under 35 U.S.C. § 103(a)
as unpatentable over Hamscher, Powell, Eisen, Wilkinson, and Del Vecchio
(US 2003/0036945 Al; Feb. 20, 2003). Final Act. 10-11.
The Examiner rejected claims 26, 33, and 40 under 35 U.S.C. § 103(a)
as unpatentable over Hamscher, Powell, Eisen, and Reader (US
2002/0087442 Al; July 4, 2002). Final Act. 11-12.
THE REJECTION OVER HAMSCHER, POWELL, AND EISEN
The Examiner finds that Hamscher’s system (1) provides a searchable
data store configured to store information representative of agreements, and
(2) records negotiation histories that include electronic annotations of terms
in the agreements. Final Act. 2—3. The Examiner acknowledges that
Hamscher lacks license agreements and searching document annotations, but
cites Powell and Eisen for teaching these respective features in concluding
that the claim would have been obvious. Id. 3^4.
Appellant argues that the cited prior art does not teach or suggest
including annotations of license agreement terms in recorded license
negotiation histories, let alone search those annotations to retrieve one or
more licenses as a search result as claimed. App. Br. 11—20; Reply Br. 2—9.
According to Appellant, unlike the cited prior art that annotates the
document itself, the claimed invention annotates recorded negotiation
histories, nor is there any reason to modify the cited prior art to do so. App.
Br. 18—20; Reply Br. 5.
ISSUE
(1) Under § 103, has the Examiner erred in rejecting claim 21 by
finding that Hamscher, Powell, and Eisen collectively would have taught or
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Application 13/599,415
suggested searching license agreement annotations in recorded license
negotiation histories to retrieve one or more licenses as a search result?
(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 “license” 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 “license” according to its
plain meaning, namely “[a] permission, usu[ally] revocable, to commit some
act that would otherwise be unlawful.” Black’s Law Dictionary 1002
(9th ed. 2009). Notably, a license under this definition need not have any
particular form or content, so long as it expresses permission to commit an
otherwise unlawful act. In fact, a single sentence could constitute a license
(e.g., “Party A can trespass on my land,” “Party A can use my patented
invention,” etc.).
Therefore, retrieving one or more licenses as a search result can
involve merely retrieving a sentence of text. In any event, claim 21 does not
actually require such a retrieval, but rather merely requires searching
annotations to retrieve one or more licenses as a search result—a desired
result of the search that may or may not occur. Accord Ans. 3 (noting that
the recited “to retrieve” language is directed to the intended purpose of
performing the method step). That is, the recited annotation search must
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Application 13/599,415
merely be capable of retrieving at least one license which, as noted above,
can be a single sentence.
Given this interpretation, we see no error in the Examiner’s
obviousness rejection. First, Hamscher enables parties to a negotiation to
create, modify, and share an electronic document, known as a “Dynamic
Negotiation Document” (DND), that represents the current state of a
negotiated agreement. Hamscher 122. Negotiating parties can add
annotations to the document, and a version history can be maintained to
enable a user to view and display changes between successive versions of
the document. Id. ]f 12.
Because a DND reflects the document’s history during the course of
the negotiation, and enables the user to view those changes, the DND
effectively records negotiation histories—histories that can include
annotations. See Hamscher ]f]f 12, 29 (noting that the current state of the
negotiated agreement reflected by a DND can include a history of changes to
elements sufficient to reconstruct intermediate states of the negotiation and
identify users responsible for changes in each version). Given the
Examiner’s reliance on Powell for teaching license agreements (Final Act. 3;
Ans. 2—3), the Hamscher/Powell system at least suggests recording license
negotiation histories including annotations as claimed.
Although the Examiner acknowledges that Hamscher does not search
these annotations, we see no error in the Examiner’s reliance on Eisen’s
document annotation search function to teach the recited search step.
Although Eisen’s system enables users to find annotated pages quickly by
skipping to only annotated pages, Eisen nevertheless searches annotations to
find them in the first instance—a search function emphasized by the
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Application 13/599,415
function’s very title (“SEARCH”).3 Notably, this search would at least be
capable of retrieving one or more licenses as a search result, including
sentences in the annotations themselves expressing permission to commit
otherwise unlawful acts—a plausible scenario given the negotiating parties’
ability to annotate document-based license negotiation histories in the
Hamscher/Powell system. Accord Ans. 3^4 (finding that Hamscher’s
annotations are capable of disclosing any type of information, such as other
licenses).
Appellant’s arguments regarding Hamscher and Eisen’s individual
shortcomings (App. Br. 11—20; Reply Br. 2—9) are unavailing. Not only do
Appellant’s arguments attack the references individually as the Examiner
indicates (Ans. 4), they are also not commensurate with the scope of the
claim for the reasons noted above. We also find that the Examiner’s
proposed combination of references is supported by articulated reasoning
with some rational underpinning to justify the Examiner’s obviousness
conclusion.
Therefore, on this record, 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.
THE REJECTION OVER HAMSCHER, POWELL, El SEN, AND
READER
We also sustain the Examiner’s rejection of independent claim 26
over Hamscher, Powell, Eisen, and Reader. Final Act. 11—12. Claim 26
3 Eisen is a one-page document; therefore, all citations are to that single
page.
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recites, in pertinent part, searching license agreement annotations (1) to
retrieve one or more licenses as a search result, and (2) return, with the
search results, identifications of intellectual property (IP) assets that are
linked to the one or more licenses.
First, we are unpersuaded of error in the Examiner’s findings
regarding Hamscher, Powell, and Eisen for collectively at least suggesting
the recited search to retrieve one or more licenses as a search result for the
reasons noted previously.
Nor are we persuaded of error in the Examiner’s finding that Reader’s
determining a patent count in paragraphs 17 to 19 at least suggests linking
this count to a license agreement (Final Act. 11; Ans. 6) even assuming,
without deciding, that this patent count applies only to possible licensors and
licensees as Appellant contends. App. Br. 23—24. That is, augmenting the
Hamscher/Powell/Eisen annotation search result with a patent count as
suggested by Reader would predictably yield a search result that identifies a
license and the IP assets linked to that license—an identification that could
still be a single sentence (e.g., “Party A can use the claimed invention in my
one and only patent.”). Appellant’s arguments regarding Reader’s
individual shortcomings (App. Br. 23—24; Reply Br. 9-10) are unavailing.
Not only do Appellant’s arguments attack the reference individually as the
Examiner indicates (Ans. 6—7), they are also not commensurate with the
scope of the claim for the reasons noted above.
Therefore, on this record, we are not persuaded that the Examiner
erred in rejecting claim 26, and claims 33 and 40, not argued separately with
particularity.
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THE OTHER OBVIOUSNESS REJECTIONS
We also sustain the Examiner’s obviousness rejection of claims 23—
25, 27, 30—32, 34, 37—39, and 41. Final Act. 8—10, 12—13. Because these
rejections are not argued separately with particularity, we are not persuaded
of error in these rejections for the reasons previously discussed.
CONCLUSION
The Examiner did not err in rejecting claims 21—41 under § 103.
DECISION
The Examiner’s decision rejecting claims 21—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).
AFFIRMED
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