Ex Parte Lundberg

Patent Trial and Appeal Board

Sep 21, 2016

13309039 (P.T.A.B. Sep. 21, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/309,039 12/01/2011 Steven W. Lundberg
21186 7590 09/23/2016
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.
3431.0lOUSl 4233
EXAMINER
BROWN, SHEREE N
ART UNIT PAPER NUMBER
3649
NOTIFICATION DATE DELIVERY MODE
09/23/2016 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
Appeal2015-003180
Application 13/309,039
Technology Center 3600
Before HUNG H. BUI, JOSEPH P. LENTIVECH, and
MICHAEL M. BARRY, Administrative Patent Judges.
BUI, Administrative Patent Judge.
DECISION ON APPEAL
Appellant1 seeks our review under 35 U.S.C. § 134(a) of the
Examiner's Non-Final Office Action rejecting claims 1-25, which are all of
the claims pending on appeal. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.2
1 According to Appellant, the real party in interest is Black Hills IP
Holdings, LLC. App. Br. 1.
2 Our Decision refers to Appellant's Appeal Brief filed September 3, 2014
("App. Br."); Reply Brief filed January 14, 2015 ("Reply Br."); Examiner's
Answer mailed November 14, 2014 ("Ans."); Non-Final Office Action
mailed September 11, 2014 ("Non-Final Act."); and original Specification
filed December 1, 2011 ("Spec.").
Appeal2015-003180
Application 13/309,039
STATEMENT OF THE CASE
Appellant's invention relates to "a computer-implemented method and
[patent management] system ... for reviewing and mapping prior art."
Abstract. According to Appellant, the patent management system is used to
monitor patent activities of one or more competitors and provide up-to-date
information related to cited references. Spec. i-f 11.
Claims 1, 11, 21, and 25 are independent. Claim 1 is illustrative of
Appellant's invention, as reproduced with a disputed limitation emphasized
below:
1. A computer-implemented method of analyzing prior art,
the method comprising using one or more processors to perform
at least a portion of one or more of the following, the method
including:
identifying a first set of cited references cited against a
target entity;
identifying at least a second set of cited references cited
against at least one other entity;
mapping the first set of references against the at least
second set of references to determine a prior art overlap of
identified references common to both or all sets; and
communicating a representation of the prior art overlap to
a user.
App. Br. 14 (Claims App.).
Examiner's Rejection and References
Claims 1-25 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Germeraad et al., (US 2002/0035499 Al, published Mar.
21, 2002) ("Germeraad") and Gipp et al., "Comparative Evaluation of Text-
and Citation-based Plagiarism Detection Approaches using GettenPlag," in
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Appeal2015-003180
Application 13/309,039
11th ACM/IEEE-CS Joint Conference on Digital Libraries (JCDL), June 13-
17, 2011, Ottawa, Canada ("Gipp"). Non-Final Act. 3-30.
ISSUE
Based on Appellant's arguments, the dispositive issue presented on
appeal is whether the Examiner erred in finding the combination of
Germeraad and Gibb teaches or suggests the disputed limitation: "mapping
the first set of references against the at least second set of references to
determine a prior art overlap of identified references common to both or all
sets," as recited in independent claims 1, 11, and 21, similarly recited in
independent claim 25. App. Br. 7-12; Reply Br. 2-3.
ANALYSIS
With respect to claims 1, 11, and 21, the Examiner finds Germeraad
discloses a computer-implemented method of analyzing prior art,
compnsmg:
identifying a first set of cited references cited against a
target entity ("identifies frequently cited patents by assignee ... "
See Figure 22, 24 & 31 "Company A" & Paragraph 0195);
identifying at least a second set of cited references cited
against at least one other entity ("identifies frequently cited
patents by assignee ... " See Figure 22, 24 & 31 "Company B" &
Paragraph 0195);
mapping the first set of references against the at least
second set of references (See "Bar Map" in Figure 22, 24 & 31 ).
Non Final Act. 3--4 (citing Germeraad i-f 195, Figs. 22, 24, 41, emphasis
omitted).
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Appeal2015-003180
Application 13/309,039
The Examiner also finds Germeraad teaches "prior art overlap." Id. at
4 (citing Germeraad i-f 125, Figs. 22, 24, and 31). However, the Examiner
acknowledges Germeraad does not expressly disclose, but relies on Gipp for
teaching the disputed limitation: "determining an overlap of identified
references common to both or all sets" and also "communicating a
representation of the overlap to a user" in order to support a conclusion of
obviousness. Id. at 4--5 (citing Gipp, pp. 2-3, Fig. 4). According to the
Examiner, Gipp teaches an overlap of identified references common to both
or all sets of recited references in the context of "finding similar patterns in
the citations used within two scientific texts ... for semantic text similarity"
and "it would have obvious to one of ordinary skill in the art ... because
finding the commonality enables users for comparative evaluation of
commonly applied test which is beneficial to analyzing citations and
references more effectively." Id. at 4--5 (citing Gipp, pp. 2-3).
Appellant disputes the Examiner's factual findings regarding Gipp. In
particular, Appellant argues Gipp's disclosure of using the overlap of
bibliographical references and patterns in academic/scientific papers is not
and cannot be considered the same as Appellant's claimed "mapping the first
set of references against the at least second set of references to determine a
prior art overlap of identified references common to both or all sets," as
recited in claims 1, 11, and 21. App. Br. 8-9 (citing Gipp 2-3). According
to Appellant, Gipp' s "bibliographic references are not cited against their
respective papers or an entity." Id. at 9.
In addition, Appellant argues "combining the references would
change the principle mode of operation of Germeraad" because ( 1) "Gipp is
directed generally to determining plagiarism, among other things, matching
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Appeal2015-003180
Application 13/309,039
citations to paraphrased and translated text in documents" and (2)
incorporating Gipp' s plagiarism finding algorithm into the patent portfolio
management system of Germeraad "would result in incorrect results." Id. at
10. Appellant further argue there is no motivation to combine the references
because the combination "would fail to provide any beneficial enhancement
when looking for patents" and, as such, "is more likely to be detriment." Id.
at 11.
We do not find Appellant's arguments persuasive. Instead, we find
the Examiner has provided a comprehensive response to Appellant's
arguments supported by a preponderance of evidence. Ans. 3-7. As such,
we adopt the Examiner's findings and explanations provided therein. Id.
For additional emphasis, we note that claim terms are given their broadest
reasonable interpretation consistent with the specification. In re Am. Acad.
of Sci. Tech Ctr., 367 F.3d 1359, 1369 (Fed. Cir. 2004). The term "prior art
overlap" is not defined in Appellant's Specification. However, "prior art
overlap" is described in terms of commonality of references from different
entities, i.e., a target entity and its competitor. Spec. i-fi-132-37, 72-74, and
84. For example, the commonality of references may include (1) scope
concepts, i.e., concepts that a claim is limited to, or (2) technology
categories, i.e., categories that claims relate to, but are not necessarily
limited thereto. Id. According to Appellant's Specification,
The representation of the prior art overlap may include a listing
of the cited references common to both or all sets of cited
references. Still further, the representation of the prior art
overlap may include a listing of the owners of the cited
references common to both or all sets of cited references.
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Appeal2015-003180
Application 13/309,039
The cited references found for the target and other entities can be
conveniently displayed in a bar chart or other graphic. In an
example embodiment, numeral 434 shows a chart having three
bar lines. Each bar line represents the citation listings for a target
entity and two competitors A and B identified by a user. Details
of each citation listed in a bar line may be given, but are not
shown here in the interests of clarity. A representation of the
prior art overlap can be shown and is here illustrated by arrow
436 which indicates a zone of commonality of references found
for each of the target and competitors A and B. Other zones of
commonality, such as indicated by arrow 438, listing references
common to the target and competitor A only, can be given. At
quick glance, a user can determine which areas of art or
technology are being cited against or developed by each entity.
In various embodiments, the zone of commonality can be
rechecked at various intervals so that ongoing trends in the art
can be analyzed over time.
Spec. i-fi-174, 82 (emphasis added).
In other words, the term "prior art overlap" or "an overlap of
identified references common to both or all sets" simply refers to a listing of
prior art references from a target and other entities that overlap or that is
common in terms of concepts, claims, technologies, or ownership (assignee),
all of which require Gipp' s techniques of finding similarity between cited
references to identify such a "prior art overlap" as correctly recognized by
the Examiner. Ans. 4--5. Appellant's reference to Gipp's intended use for
purposes of determining plagiarism is misplaced. Reply Br. 2-3. As such,
we do not see any error in the Examiner's findings regarding Germeraad and
Gipp. Nor do we see any error in the Examiner's conclusion of obviousness.
Separately, we note that "anticipation is the epitome of obviousness."
In re McDaniel, 293 F3d. 1379, 1385 (Fed. Cir. 2002) (quoting Connell v.
Sears Roebuck & Co., 722 F.2d 1542, 1548 (Fed. Cir. 1983)); In re
Fracalossi, 681 F.2d 792, 794 (CCPA 1982). Based on our construction of
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Appeal2015-003180
Application 13/309,039
the term "prior art overlap," we find Germeraad alone also teaches the
disputed limitation of claims 1, 11, and 21 : "mapping the first set of
references against the at least second set of references to determine a prior
art overlap of identified references common to both or all sets" as well as
"communicating a representation of the prior art overlap to a user." See
Germeraad i-fi-f 128, 147, 195, Figs. 6, 11, 98.
For example, Germeraad's Figure 6 is reproduced below:
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