Ex Parte Lundberg

Patent Trial and Appeal Board

Jul 27, 2017

13464598 (P.T.A.B. Jul. 27, 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.
13/464,598 05/04/2012 Steven W. Lundberg 2385.014US1 3976
21186 7590 07/31/2017
SCHWEGMAN LUNDBERG & WOESSNER, P.A.
P.O. BOX 2938
MINNEAPOLIS, MN 55402
EXAMINER
CHANNAVAJJALA, SRIRAMA T
ART UNIT PAPER NUMBER
2157
NOTIFICATION DATE DELIVERY MODE
07/31/2017 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):
uspto@slwip.com
SLW @blackhillsip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte STEVEN W. LUNDBERG
Appeal 2016-007415
Application 13/464,598
Technology Center 2100
Before JOHN A. JEFFERY, BRUCE R. WINSOR, and
JUSTIN BUSCH, 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 1—13, 15—23, and 25—29. We have jurisdiction
under 35 U.S.C. § 6(b). Claims 14, 24, and 30-45 were cancelled.
We affirm-in-part.
STATEMENT OF THE CASE
Appellant’s invention displays on a computer monitor the text of
independent claims in a first row and automatically generated preliminary
scope-concept phrases from the text in a second row. Upon receiving user
input that selects a particular preliminary scope-concept phrase, each
occurrence of the particular preliminary scope-concept phrase is highlighted
Appeal 2016-007415
Application 13/464,598
in the displayed text of the independent claims. See generally Abstract.
Claim 1 is illustrative:
1. A computer-implemented method comprising:
obtaining, into a computer, text of a first patent;
automatically finding and extracting, using the computer,
claim text from the text of the first patent;
identifying, using the computer, text of a first plurality of
claims from the set of claim text of the first patent;
displaying in a first area on a computer monitor the text
of the first plurality of claims;
automatically generating, from the first plurality of
claims, text of a plurality of preliminary scope-concept phrases
derived from the first plurality of claims, wherein the plurality
of preliminary scope-concept phrases includes a first
preliminary scope-concept phrase and a second preliminary
scope-concept phrase;
displaying in a second area on the computer monitor the
text of at least the first and second preliminary scope-concept
phrases from the first plurality of claims;
eliciting and receiving user input to select a first specified
one of the displayed preliminary scope-concepts phrases; and
highlighting each occurrence of the first specified one of
the displayed preliminary scope-concept phrases in a plurality
of the first plurality of claims displayed in the first area that
contain the first specified one of the plurality of preliminary
scope-concept phrases.
RELATED APPEALS
Appellant did not identify any related appeals. See App. Br. 3.
However, there are at least twenty-eight (28) related appeals, which are:
Anneal No. Application No. Decided/Status
10/128,141 Decision mailed Mar. 22, 2010
10/874,486 Decision mailed July 30, 2010
11/061,383 Decision mailed Jan. 29, 2014
2009-005709
2009-006404
2011-009966
2
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Application 13/464,598
2012-004166 11/061,312
2015-000319 13/309,080
2015-000321 13/309,127
2015-003180 13/309,039
2015-007422 13/309,146
2016-000912 13/309,060
2016-001687 11/888,632
2016-002121 13/309,200
2016-002680 13/310,279
2016-002792 12/605,030
2016-006797 13/310,368
2016-007186 13/573,803
2016-007623 13/408,877
2016-007787 13/310,322
2016-008030 13/253,936
2017-000280 13/408,917
2017-000386 11/098,761
2017-002337 14/010,376
2017-003702 14/483,903
2017-003815 14/094,542
2017-004158 14/010,391
2017-004159 14/010,380
2017-004188 14/010,400
2017-006390 13/409,189
2017-006642 13/310,452
Decision mailed Oct. 31, 2014
Decision mailed May 27, 2016
Pending
Decision mailed Sept. 21, 2016
Decision mailed June 1, 2016
Pending
Decision mailed Jan. 17, 2017
Pending
Pending
Pending
Pending
Pending
Pending
Pending
Pending
Pending
Pending
Pending
Pending
Pending
Pending
Pending
Pending
Pending
Pending
3
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Application 13/464,598
THE REJECTIONS
The Examiner rejected claims 1, 6, 10, 13, 22, 25, and 26 under
35U.S.C. § 101 as being directed to non-statutory subject matter.
Final Act. 12—15.1
The Examiner rejected claims 1, 13, 15, 22, 25, and 26 on the ground
of non-statutory obvious-type double patenting over (1) claims 1—21 of
Application No. 13/310,322; and (2) claims 121 of Application No.
13/310,452. Id. at 16-18.
The Examiner rejected claims 1—12, 15—21, 23, and 25—29 under
35 U.S.C. § 102(b) as anticipated by Lundberg (US 2007/0198578 Al; Aug.
23, 2007). Id. at 19-28; Ans. 2.
The Examiner rejected claims 13 and 22 under 35 U.S.C. § 103(a) as
unpatentable over Lundberg and Lin (US 2005/0004806 Al; Jan. 6, 2005).
Final Act. 29—34; Ans. 2.
THE § 101 REJECTION
The Examiner finds that specific language from independent claim 1
is directed to an abstract idea. Final Act. 12—15; Ans. 3—5. The Examiner
adds that claim 1 does not include additional elements sufficient to transform
the abstract idea into a patent-eligible application of the abstract idea. Id.
As such, claim 1 is said to not recite significantly more than the abstract idea
itself and, therefore, is ineligible under § 101. Id.
1 Throughout this opinion, we refer to (1) the Final Rejection mailed July 28,
2015 (“Final Act.”); (2) the Appeal Brief filed January 28, 2016 (“App.
Br.”); (3) the Examiner’s Answer mailed May 26, 2016 (“Ans.”); and (4) the
Reply Brief filed July 26, 2016 (“Reply Br.”).
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Appellant argues that the claimed invention is not directed to an
abstract idea as the Examiner asserts. App. Br. 14—15; Reply Br. 2—3.
According to Appellant, the Examiner merely quotes language from claim 1
and, therefore, fails to provide the required substantial evidence to support
the rejection. Id.
ISSUE
Has the Examiner erred in finding that claim 1 is directed to ineligible
subject matter under § 101? This issue turns on whether the claimed
invention is directed to a patent-ineligible abstract idea and, if so, whether
elements of the claim—considered individually and as an ordered
combination—transform the nature of the claim into a patent-eligible
application of that abstract idea.
ANALYSIS
In Mayo Collaborative Services v. Prometheus Laboratories., Inc.,
566 U.S. 66, 71—73 (2012), the Supreme Court established an analytical
framework under § 101 to distinguish patents that claim patent-ineligible
laws of nature, natural phenomena, and abstract ideas—or add too little to
such underlying ineligible subject matter—from those that claim patent-
eligible applications of those concepts. To determine whether claims are
patent eligible under § 101, we apply the Supreme Court’s two-step test
articulated in Alice Corp. Pty. Ltd. v. CLS Bank Inti, 134 S. Ct. 2347
(2014). Following the Court’s guidance, we turn to the first step of the Alice
analysis to determine if the claim is directed to one of the judicial
exceptions, i.e., an abstract idea. If so, we then proceed to the second step
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and examine the elements of the claim—considered individually and as an
ordered combination—to determine whether the claim contains an
“inventive concept” sufficient to transform the claimed abstract idea into a
patent-eligible application. Id. at 2357.
Under Alice step one, where we consider whether the claims are
directed to a patent-ineligible concept, such as an abstract idea, the inquiry is
not merely whether the claims embody an abstract idea, but rather whether
the claims, when considered as a whole, are directed to an abstract idea. See
McRO, Inc. v. Bandai Namco Games Am., Inc., 837 F.3d 1299, 1312
(Fed. Cir. 2016) (quoting Mayo, 566 U.S. at 71 (“[A]ll inventions at some
level embody, use, reflect, rest upon, or apply laws of nature, natural
phenomena, or abstract ideas.”). For example, abstract ideas include, but are
not limited to, fundamental economic practices, methods of organizing
human activities, an idea of itself, and mathematical formulas or
relationships. Alice, 134 S. Ct. at 2355—57. If the claims are not directed to
an abstract idea, the inquiry ends. McRO, 837 F.3d at 1312.
On the record before us, we find that the Examiner has not shown that
the claims are directed to patent-ineligible subject matter. The difficulty
with the Examiner’s finding under the first part of the Alice framework is the
lack of any meaningful analysis or reasoning in arriving at the judicial
exception. The Examiner simply quotes portions of claim 1 and asserts that
the recited language from claim 1 is an abstract idea. See Final Act. 12
(equating the abstract idea with quoted claim language). Notably, the
Examiner does not explain why the claim is directed to an abstract idea. To
the extent that the recited method may be directed to a fundamental
economic practice, a method of organizing human activity, an idea of itself,
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Application 13/464,598
a mathematical formula or relationship, or other type of abstract idea, no
such finding has been articulated on this record, let alone with the requisite
explanation and analysis to substantiate such a finding. Nor will we
speculate in that regard here in the first instance on appeal.
Therefore, we find that the Examiner’s determination of the abstract
idea under the first step of the Alice inquiry is unfounded. As such, we need
not assess the Examiner’s determination regarding the second step of the
Alice inquiry. Accordingly, we do not sustain the rejection of claim 1 under
35 U.S.C. § 101, and the rejection of claims 6, 10, 13, 22, 25, and 26 for
similar reasons (see Final Act. 12—15; Ans. 3—5).
THE PROVISIONAL DOUBLE PATENTING REJECTIONS
Because the provisional double patenting rejections (Final Act. 16—
18) are not ripe for decision, we decline to reach them. See Ex parte
Moncla, 95 USPQ2d 1884, 1885 (BPAI2010) (precedential); see also
Exparte Jerg, No. 2011-000044, 2012 WL 1375142, at *3 (BPAI 2012)
(expanded panel) (informative) (“Panels have the flexibility to reach or not
reach provisional obviousness-type double-patenting rejections.”).
THE ANTICIPATION REJECTION
The Examiner finds that Lundberg discloses every recited element of
independent claim 1 including, among other things, (1) automatically
generating text of preliminary scope-concept phrases derived from a first
plurality of claims; and (2) displaying text of the claims. Final Act. 19—20.
Appellant argues that Lundberg does not automatically generate the
text of preliminary scope-concept phrases derived from the first plurality of
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Application 13/464,598
claims. App. Br. 15—16; Reply Br. 4. According to Appellant, Lundberg’s
scope-concepts are already defined before applying the scope-concepts to
the claims. Id. Appellant adds that paragraph 66 of Lundberg is silent
regarding displaying text of the first plurality of claims. App. Br. 16.
ISSUE
Under § 102, has the Examiner erred in rejecting claim 1 by finding
that Lundberg (1) automatically generates text of a plurality of preliminary
scope-concept phrases derived from a first plurality of claims, and (2)
displays text of the first plurality of claims?
ANALYSIS
Appellant’s argument is premised on the assumption that generating
the text of preliminary scope-concept phrases must be performed after the
text of the first plurality of claims is identified. See App. Br. 15—16; Reply
Br. 4. But method steps are not ordinarily construed to require an order
unless they expressly or implicitly require performance in that order. Altiris
v. Symantec Corp., 318 F.3d 1363, 1369 (Fed. Cir. 2003) (citing Interactive
Gift Express, Inc. v. CompuServe Inc., 256 F.3d 1323 (Fed. Cir. 2001)).
“First, we look to the claim language to determine if, as a matter of logic or
grammar, [the method steps] must be performed in the order written.”
Altiris, 318 F.3d at 1369. If the claim language itself does not require
performing the steps in that order, we then look to the Specification “to
determine whether it ‘directly or implicitly requires such a narrow
construction.”’ Id. at 1370.
The latter requirement applies here. Claim 1 recites, in pertinent part:
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Application 13/464,598
[a] obtaining, into a computer, text of a first patent;
[b] automatically finding and extracting, using the
computer, claim text from the text of the first patent;
[c] identifying, using the computer, text of a first
plurality of claims from the set of claim text of the first patent;
[d] displaying in a first area on a computer monitor the
text of the first plurality of claims;
[e] automatically generating, from the first plurality of claims,
text of a plurality of preliminary scope-concept phrases derived from
the first plurality of claims
App. Br. 20 (Claims App’x). As noted above, step [a] must be performed
before step [b] because the extracted claim text is from the text of the first
patent that was obtained in a computer. Step [c] is directed to identifying
text of a first plurality of claims from the set of claim text of the first patent.
Although there is no antecedent basis for the set of claim text of the first
patent from step [c],2 the limitation nonetheless implicitly requires
performing step [b] before step [c] because claim text identification must
occur from step [b]’s extracted claim text. Moreover, step [c] must be
performed before step [e] because the automatically generated text of a
plurality of preliminary scope-concept phrases is derived from the first
plurality of claims from step [c]. Thus, when considering the claim
limitation as a whole, steps [a], [b], [c], and [e] must occur in that order.
We note, however, that steps [d] and [e] need not be performed in the
recited order. That is, the text of the first plurality of claims could be
displayed after—not necessarily before—generating preliminary scope-
2 We leave to the Examiner the question of whether the lack of antecedent
basis for the set of claim text of the first patent introduced in the third step
renders the claim indefinite under 35U.S.C. § 112, second paragraph.
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Application 13/464,598
concept phrases. In any event, step [c] must occur before step [d] because
the text of the first plurality of claims from step [c] is displayed in step [d].
Turning to the rejection, we see no error in the Examiner’s finding
that Lundberg discloses step [e] in light of the particular order discussed
above. Final Act. 19-20 (citing Lundberg || 24—26, 47, 57; Fig. 7D).
Lundberg is directed to patent mapping, storage, and searching. Lundberg,
Abstract. Lundberg first obtains a pool (also referred to as a universe) of
patent documents to be mapped, the patent documents including patents and
published patent applications. Lundberg || 23, 36. Patents are composed of
text, and therefore Lundberg obtains the text of a first patent within the pool
(step [a]). Lundberg’s patent mapping process includes first selecting a
patent claim from the obtained patent’s text. Id. 146; Fig. 3, step 302.
Patent claims are composed of claim text, and therefore Lundberg’s
selection of a patent claim is finding and extracting claim text from the text
of the obtained patent (step [b]).
Once the patent claim text is selected, Lundberg maps reusable claim
concepts to the selected patent claim text as a whole. Id. Tflf 24, 47; Fig. 3,
step 304. Lundberg also maps reusable claim limitation concepts, kept in a
concept catalog, to the patent claim text’s individual limitations. Id. 26,
47; Fig. 3, step 306. Lundberg further discloses that “[i]f the catalog does
not contain a suitable limitation concept to map to, a new limitation concept
is added to the catalog 'on the fly’.” Id. 126 (emphasis added). Once the
selected patent claim text is mapped to the claim limitation concepts,
Lundberg’s software similarly analyzes and maps each successive claim
based on the selected patent claim text’s mapping. Id. 127. Accordingly,
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Application 13/464,598
text for each successive claim (the claimed “first plurality of claims”) is
identified from the claim text from the first selected patent claim (step [c]).
A portion of Lundberg’s Figure 7D is illustrative and reproduced
below:
Reproduction of a portion of Lundberg’s Figure 7D
The Lundberg published application claims benefit to the
provisional application 60/703,413. Id. at 1. Solely for purposes of
clarity, the same portion of Figure 7D of the ’413 provisional is
reproduced below:
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Appeal 2016-007415
Application 13/464,598
Figure 7D of Lundberg, as relied upon by the Examiner (Final Act. 19; Ans.
9), illustrates a user interface (730) that visually maps concepts to claims of
a particular patent or patent application. Id. 1 57. As shown, each
successive independent claim (i.e., independent claims 11 and 12) visually
maps a “Cabinet” concept. Upon displaying the concepts relating to
successive patent independent claims in the user interface (730), Lundberg
discloses automatically generating, from each successive patent independent
claim, text of claim concepts (the claimed “plurality of preliminary scope-
concept phrases”) derived from each successive patent claim (step [e]).
Accordingly, Lundberg discloses step [e] in light of the particular order
discussed above.
Nor do we see error in the Examiner’s finding that Lundberg displays
text of the patent claims (step [d]). Figure 7D of Lundberg, as discussed
above, illustrates one particular user interface (730) among multiple user
interfaces of Figures 7A—7G as one exemplary embodiment. Lundberg | 54.
A portion of Figure 7C is illustrative and is reproduced below:
Portion of Lundberg’s Figure 7C in Lundberg’s provisional application
Solely for purposes of clarity, the same portion of Figure 7C of the
’413 provisional application is reproduced below:
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Appeal 2016-007415
Application 13/464,598
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Portion of Figure 7C in Lundberg’s provisional application
Figure 7C of Lundberg illustrates a user interface (720) that “provides
claim details of a patent or patent application, such as claim language.”
Lundberg | 56. As shown, upon selecting the “Claims” tab, a column of
“Claim Text Excerpt” displays claim language including independent claim
1 and successive dependent claims 2 and 3 (in accordance with our findings
discussed above with respect to step [c]). Accordingly, Lundberg discloses
displaying in a “Claims” tab (the claimed “first area on a computer
monitor”) the text of successive dependent claims 2 and 3 (step [d]).
Appellant’s contention that the Examiner does not consider claim 1 as
a whole because, although Lundberg may disclose displaying preliminary
scope-concept phrases, Lundberg does not disclose automatically generating
the preliminary scope-concept phrases (App. Br. 16 (citing Lundberg || 66—
67; Figs. 8A, 8B); Reply Br. 4—5) is unavailing for the reasons previously
discussed.
Lastly, Appellant’s contention that the Examiner did not sufficiently
explain how Lundberg displays preliminary scope concepts and claim text in
separate display areas (Reply Br. 4) is unavailing. As previously discussed,
Figure 7C of Lundberg illustrates a user interface (720) that displays claim
text, and Figure 7D of Lundberg illustrates a user interface (730) that
displays preliminary scope concepts.
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Application 13/464,598
Therefore, we are not persuaded that the Examiner erred in rejecting
claim 1, and claims 2—12, 15—21, 23, and 25—29 not argued separately with
particularity.3
THE OBVIOUSNESS REJECTION
Regarding claim 13, the Examiner finds that Lundberg generates
preliminary scope-concept phrases as similarly discussed above for claim 1.
Final Act. 30, 32; Ans. 13, 15. Although the Examiner acknowledges that
Lundberg does not teach the specifics of the preliminary scope-concept
phrase generation, including the first, second, and third processes as claimed
(lines 21—39), the Examiner cites Lin as teaching this feature in concluding
that the claim would have been obvious. Final Act. 31—34; Ans. 14—17.
Appellant asserts Lin parses a claim by punctuation, noun, noun­
adjective pair, or verb, but argues that Lin does not involve adding words
progressively to generate the one-word, two-word, and three-word scope-
concept phrases among claims. App. Br. 17—18.
ISSUE
Under § 103, has the Examiner erred in rejecting claim 13 by finding
that Lundberg and Lin collectively would have taught or suggested a
progressive addition of words to generate the one-word, two-word, and
three-word scope-concept phrases among claims?
3 Although Appellant nominally argues claim 26 separately (App. Br. 16—
17), the arguments are similar to those made for claim 1. Accordingly, we
group these claims together.
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Application 13/464,598
ANALYSIS
We do not sustain the Examiner’s rejection of independent claim 13.
Claim 13 recites, in pertinent part, a first processing step that involves
identifying claims having a first selected word (a first one-word preliminary
scope-concept phrase), and claims having a second selected word (a second
one-word preliminary scope-concept phrase). Claim 13 further recites a
second processing step that involves identifying claims having both the first
and second selected word (a first two-word preliminary scope-concept
phrase), and claims having both the second and a third selected word (a
second two-word preliminary scope-concept phrase).
Given this construction, we find the Examiner’s rejection problematic.
Lin is directed to categorizing parsed claim elements according to a
predetermined rule. Lin, Abstract. Lin logically pairs claim elements from
one claim with other claim elements from another claim. Id. ^ 21. Lin’s
example logically pairs the element “processing a photoresist layer” from
one claim with “applying a photoresist layer” and “removing the photoresist
layer” from another claim. Id. Although Lin’s process identifies separate
word sequences (i.e., a process that identifies selected words including
combinations thereof), Lin does not disclose separate processes that each
individually identity separate word sequences (i.e., (1) a first process that
identifies a first and second selected word, and (2) a second separate process
that identifies the combination of the first and second selected words, and
the combination of the second and a third selected word). In other words,
although Lin discloses a process that identifies “processing a photoresist
layer” from one claim and “applying a photoresist layer” from another
claim, which consequentially identifies a one selected word “photoresist”
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and a second selected word “layer,” and further identifies combinations of
“photoresist layer” and “a photoresist,” Lin does not disclose separate
individual processes that each identify separate word sequences (i.e., a first
process that identifies “photoresist” and “layer,” and then a second process
that separately identifies combinations of “photoresist layer” and “a
photoresist”), let alone repeat that process for a second selected claim as
recited. Accordingly, the weight of the evidence on this record favors
Appellant’s position. See App. Br. 17—18.
Therefore, we are persuaded that the Examiner erred in rejecting (1)
independent claim 13; and (2) independent claim 22 which recites
commensurate limitations. Because this issue is dispositive regarding our
reversing the rejection of these claims, we need not address Appellant’s
other arguments.
CONCLUSION
The Examiner erred in rejecting claims 1, 6, 10, 13, 22, 25, and 26
under § 101.
The Examiner did not err in rejecting claims 1—12, 15—21, 23, and 25—
29 under § 102(b), but erred in rejecting claims 13 and 22 under § 103.
We do not reach the Examiner’s provisional double patenting
rejections.
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DECISION
The Examiner’s decision to reject claims 1—12, 15—21, 23, and 25—29
is affirmed.
The Examiner’s decision to reject claims 13 and 22 is reversed.
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-IN-PART
17