Ex Parte LundbergDownload PDFPatent Trial and Appeal BoardMay 27, 201613309146 (P.T.A.B. May. 27, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 13/309,146 12/01/2011 Steven W. Lundberg 21186 7590 06/01/2016 SCHWEGMAN LUNDBERG & WOESSNER, P.A. P.O. BOX 2938 MINNEAPOLIS, MN 55402 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. 3431.0lSUSl 9886 EXAMINER CESE, KENNY A ART UNIT PAPER NUMBER 2668 NOTIFICATION DATE DELIVERY MODE 06/01/2016 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): 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 Appeal2015-007422 Application 13/309,146 Technology Center 2600 MICHAEL M. BARRY, Administrative Patent Judges. STRAUSS, Administrative Patent Judge. DECISION ON APPEAL Appeal2015-007422 Application 13/309,146 STATE~vfENT OF THE CASE Appellant appeals under 35 U.S.C. § 134(a) from the Examiner's Final Rejection of claims 1---6, which constitute all the claims pending in this application. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. THE INVENTION The claims are directed to a patent management system. Spec., Abst. Claim 1, reproduced below, is representative of the claimed subject matter: 1. A method of providing data, the method comprising: hosting a patent management system presenting one or more data fields of interest to a user; downloading at least one patent document from an external patent database; applying optical character recognition to the downloaded document to provide a text-readable version of the at least one patent document; automatically applying electronic text analysis to the text- readable version to extract one or more data elements associated with a data field of interest, and transmitting the data elements to a user. REFERENCES The prior art relied upon by the Examiner in rejecting the claims on appeal is: Tran Matsukawa et al. ("Matsukawa") US 2005/0210009 Al US 2008/0030800 Al REJECTIONS The Examiner made the following rejections: 2 Sept. 22, 2005 Feb. 7,2008 Appeal2015-007422 Application 13/309,146 Claims 1, 3, and 5 stand rejected under 35 U.S.C. §102(b) as being anticipated by Tran. Final Act. 4---6. Claims 2, 4, and 6 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Tran and Matsukawa. Final Act. 7-8. APPELLANT'S CONTENTIONS 1. In connection with the 35 U.S.C. § 102(b) rejection, the Examiner errs by finding one element teaches multiple claim elements. App. Br. 6. 2. Tran's patent data does not disclose and the Examiner does not explain which portions of Tran's patent data constitute "one or more data fields," as required by claim 1. App. Br. 6-7. 3. In connection with the rejections under 35 U.S.C. § 103(a), Matsukawa's time stamp or filing date does not teach an action date, as required by claim 2. App. Br. 8. 4. In connection with the rejections under 35 U.S.C. § 103(a), the Examiner's statement that "motivation to combine may be gleaned from the prior art" is inadequate reasoning for combining Matsukawa and Tran in rejecting claim 2. App. Br. 8. ANALYSIS We have reviewed the Examiner's rejections in light of Appellant's arguments that the Examiner has erred. We disagree with Appellant's conclusions. We adopt as our own (1) the findings and reasons set forth by the Examiner in the action from which this appeal is taken (Final Act. 4--8) and (2) the reasons set forth by the Examiner in the Examiner's Answer in response to Appellant's Appeal Brief (Ans. 4--7) and concur with the 3 Appeal2015-007422 Application 13/309,146 conclusions reached by the Examiner. \Ve highlight the following for emphasis. 35 U.S.C. § 102(b) In connection with contention 1, Appellant contends the Examiner errs in rejecting claim 1 by "us[ing] the same element in Tran for multiple elements of the claim." App. Br. 6. We disagree. It is well established that multiple claim limitations can read on a single structure. See, e.g., In re Kelley, 305 F.2d 909, 915-16(CCPA1962). We find Appellant's contention unpersuasive because it does not identify how the Examiner maps the same feature of Tran's disclosure to more than one element of claim 1 in a way that is inconsistent with the claim requirements or the teachings of Tran. In connection with contention 2, Appellant contends Tran's patent data does not disclose "one or more data fields" because the Examiner fails to show an interpretation of the patent data that has plain meaning support; the interpretation is unreasonable; and Tran does not use the term data field nor does it discuss the patent document as a data field. App. Br. 6-7. The Examiner responds by finding the term "data field" in image analysis can encompass any form of information entered or displayed in any area or region in any location. Ans. 5---6. The Examiner finds support for such an interpretation of data field in Appellant's specification at paragraph 72 which describes data fields as data stored in a database and/or data displayed in a text-readable version, extracted, and transmitted to the user. Id. Appellant replies, arguing the Examiner's interpretation of the disclosure at paragraph 72 is not accurate and, rather than disclosing the data fields are various forms of data, discloses the data field of interest is the same whether it corresponds to the user interface, a patent stored in a database, or the data 4 Appeal2015-007422 Application 13/309,146 elements extracted and transmitted to the user. Reply Br. 3. Appellant further argues Tran's OCR processed document fails to disclose one or more data elements associated with a data field of interest to a user and extracting one or more data elements. Reply Br. 3--4. We are unpersuaded of Examiner error. Appellant fails to provide sufficient evidence or a persuasive line of reasoning rebutting the Examiner's finding that Tran's patent data includes a data field as disclosed, for example, by Appellant's Specification at paragraph 72. See Ans. 5---6 and Tran i-f 119. In particular, Tran discloses a list of patents to be downloaded (602) with each patent including data within the document representing text or pictures. Similarly, Appellant's Specification provides data fields may be any data associated with the user interface elements. Spec. i-f 72. Therefore, consistent with Appellant's Specification and under the broadest reasonable interpretation, the patent data of Tran, which has data in the form of text or pictures, discloses the "data field." Ans. 5. We are also not persuaded by Appellant's argument the Examiner's interpretation of paragraph 72 of Appellant's Specification is inaccurate and Tran's OCR processed document fails to disclose one or more data elements associated with a data field of interest to a user and extracting one or more data elements. Reply Br. 3--4. For the reasons discussed supra, we find no error in the Examiner's interpretation of the subject portion of Appellant's Specification and construction of the disputed data field to include "any form of information entered or displayed in any area or region in any location." Ans. 5. We further find unpersuasive Appellant's contention Tran's OCR processed document fails to disclose one or more data elements associated with a data field of interest to a user and extracting one or more 5 Appeal2015-007422 Application 13/309,146 data elements (Reply Br. 3), as this amounts to no more than a naked assertion the disputed claim limitations are not found in the prior art. See 37 C.F.R. § 41.37(c)(l)(iv) ("A statement which merely points out what a claim recites will not be considered an argument for separate patentability of the claim."); In re Lovin, 652 F.3d 1349, 1357 (Fed. Cir. 2011) ("[W]e hold that the Board reasonably interpreted Rule 41.37 to require more substantive arguments in an appeal brief than a mere recitation of the claim elements and a naked assertion that the corresponding elements were not found in the prior art."). Accordingly, Appellant's contention 21 is unpersuasive of Examiner error. For the reasons discussed supra, we sustain the anticipation rejection of independent claim 1 and, for the same reasons, the rejection of independent claim 5 together with the rejection of dependent claim 3, which are not separately argued. 35 U.S.C. § 103(a) In connection with contention 3, Appellant contends Matsukawa does not disclose "an action date" because Tran only embeds a time stamp or filing date. App. Br. 8. The Examiner responds by finding Figure 21 together with paragraph 134 of Matsukawa teaches embedding an action date in the text-readable version of the at least one patent document by extracting a scanned patent document and embedding a time stamp or filing date of the document. Ans. 6. We are unpersuaded of Examiner error. Appellant fails to provide sufficient evidence or a persuasive line of reasoning rebutting the Examiner's finding that Matsukawa discloses an action date. That is, 6 Appeal2015-007422 Application 13/309,146 Appellant does not explain why the disputed action date is not equivalent to and taught by the time-stamp or filing date of the document as depicted by Figure 21 and paragraph 134 ofMatsukawa. In particular, Matsukawa teaches embedding the acquired time-stamp token in PDF data. Neither Appellant's Specification nor the limitations of claim 2 excludes a time- stamp or filing date from being an action date. Instead, under the broadest reasonable interpretation, an action date may include any date or time associated with a patent document, such that Matsukawa's filing date and time-stamp disclose the disputed action date limitation. Accordingly, Appellant's contention 3 is unpersuasive of Examiner error. In connection with contention 4, Appellant contends the Examiner's expressed rationale for combining prior art references, i.e., "motivation to combine may be gleaned from the prior art," fails to provide any motivation for combining Matsukawa and Tran and, therefore, cannot support a prima facie case of obviousness, which requires an explicit statement by the Examiner explaining the motivation for combining references. App. Br. 8. The Examiner responds by finding one skilled in the art would have been motivated to modify Tran in order to improve management of a patent document by embedding a time stamp on the document in order to provide date information to the user. Ans. 7. In reply, rather than rebut the Examiner's reason for modifying Tran to include Matsukawa's time stamp or filing date, Appellant argues Matsukawa's time stamp is not an action date as claimed. Reply Br. 4. Appellant's argument is unpersuasive of Examiner error. We disagree the combination of Matsukawa and Tran is improper because, according to Appellant, there is no suggestion or motivation to modify Tran according to 7 Appeal2015-007422 Application 13/309,146 ~vfatsukawa. App. Br. 8. \Ve note, in view of KSR Int'l Co. v. Teleflex, Inc., 550 U.S. 398 (2007), motivation is not a rigid requirement as there are other indicia to consider, including: some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness .... [H]owever, the analysis need not seek out precise teachings directed to the specific subject matter of the challenged claim, for a court can take account of the inferences and creative steps that a person of ordinary skill in the art would employ. Id. at 418 (quoting In re Kahn, 441F.3d977, 988 (Fed. Cir. 2006) (internal quotation marks omitted)). Appellant fails to persuade us the Examiner's reasoning for combining the references, i.e., to improve management of a patent document by embedding a time stamp on the document in order to provide date information to the user (Ans. 7) is inadequate. Instead, we conclude the factual underpinnings articulated by the Examiner provide an adequate basis for combining Tran and Matsukawa according to the rejection of claim 2. Accordingly, Appellant's contention 4 is unpersuasive of Examiner error. For the reasons discussed supra, Appellant's arguments are unpersuasive of Examiner error. Therefore, we sustain the obviousness rejection of dependent claim 2 and, for the same reasons, the rejection of the remaining dependent claims 4 and 6, which are not separately argued. DECISION The Examiner's decision to reject claims 1, 3, and 5 under 35 U.S.C. § 102(b) is affirmed. The Examiner's decision to reject claims 2, 4, and 6 under 35 U.S.C. § 103(a) is affirmed. 8 Appeal2015-007422 Application 13/309,146 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 9 Copy with citationCopy as parenthetical citation