Ex Parte Lundberg

Patent Trial and Appeal Board

Nov 15, 2017

11098761 (P.T.A.B. Nov. 15, 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.
11/098,761 04/04/2005 Steven W. Lundberg 1551.004US1 8731
68242 7590 11/17/2017
FIALA & WEAVER P.L.L.C.
C/O CPA GLOBAL
900 Second Avenue South
Suite 600
MINNEAPOLIS, MN 55402
EXAMINER
WEISENFELD, ARYAN E
ART UNIT PAPER NUMBER
3689
NOTIFICATION DATE DELIVERY MODE
11/17/2017 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):
DOCKETING@CPAGLOBAL.COM
docketing@fwiplaw.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 2017-000386
Application 11/098,7611
Technology Center 3600
Before JOHN A. JEFFERY, BRUCE R. WINSOR, and
JUSTIN BUSCH, Administrative Patent Judges.
BUSCH, Administrative Patent Judge.
DECISION ON APPEAL
Appellant seeks our review under 35 U.S.C. § 134 of the Examiner’s
final decision rejecting claims 1—4, 6, 9, 10, 12, 13, 15—19, 21, and 23—30,
which are all the claims pending in the application.2 Claims 5, 7, 8, 11, 14,
20, and 22 were cancelled previously. We have jurisdiction under 35 U.S.C
§ 6(b).
We affirm.
1 According to Appellant, the real party in interest is FoundationIP, LLC.
Br. 1.
2 Although the Examiner indicates in the Final Action that claim 4 is not
pending (see Final Act. 1—2, 9; but see id. at 6, 14—15), Appellant indicates
this claim is pending (see Amendment 3 (May 4, 2015)). Accordingly, for
clarity, we indicate here claim 4 is pending, and deem the Examiner’s error
in this regard harmless.
Appeal 2017-000386
Application 11/098,761
STATEMENT OF THE CASE
Claims 1,9, 15, 18, and 23 are independent claims. The claims relate
generally to “a system and method for information disclosure statement
[(IDS)] management.” Spec., Abstract. Claim 1 is representative and
reproduced below:
1. A method comprising:
maintaining a patent case database, wherein the database
includes data about a plurality of cases, the data comprising: a
priority date, an association of related cases, and a pending claim
set;
automatically deriving, by a processor, first case keywords
from a pending claim set of a first case;
performing, by the processor, a keyword analysis on a
reference document based on occurrences of the first case
keywords in the reference document to derive a score;
increasing relevancy of the score based on data associated
with the reference document, the data associated with the
reference document being selected from a group comprising: a
priority date of the reference document, an author of the
reference document, an assignee of the reference document, a
number of citations of the reference document, and a source of
the reference document;
associating, by the processor, the reference document with
the first case and with cases related to the first case in the case
database based on the score; and
marking the reference for inclusion in a disclosure
statement based on the score.
RELATED APPEALS
Appellant did not identify any related appeals. See Br. 12. However,
there are at least thirty-one (31) related appeals:
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Appeal 2017-000386
Application 11/098,761
Anneal No. Annlication No.
2009-005709 10/128,141
2009-006404 10/874,486
2011-009966 11/061,383
2012-004166 11/061,312
2015-000321 13/309,127
2015-003180 13/309,039
2015-007422 13/309,146
2016-000319 13/309,080
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
2016-007415 13/464,598
2016-007623 13/408,877
2016-007787 13/310,322
2016-008030 13/253,936
2017-000280 13/408,917
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
Decided/Status
Decision mailed Mar. 23, 2010
Decision mailed Aug. 2, 2010
Decision mailed Jan. 31, 2014
Decision mailed Nov. 4, 2014
Decision mailed July 26, 2017
Decision mailed Sept. 23, 2016
Decision mailed June 1, 2016
Decision mailed May 27, 2016
Decision mailed Aug. 25, 2017
Decision mailed Jan. 19, 2017
Decision mailed Aug. 28, 2017
Decision mailed Aug. 30, 2017
Decision mailed Sept. 1, 2017
Decision mailed Aug. 30, 2017
Decision mailed July 28, 2017
Decision mailed July 31, 2017
Decision mailed Sept. 6, 2017
Decision mailed Sept. 20, 2017
Decision mailed Aug. 3, 2017
Decision mailed Sept. 12, 2017
Decision mailed Sept. 8, 2017
Decision mailed Sept. 25, 2017
Decision mailed Sept. 18, 2017
Decision mailed Oct. 25, 2017
Decision mailed Sept. 27, 2017
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Application 11/098,761
2017-004188 14/010,400 Decision mailed Nov. 3,2017
2017-006390 13/409,189 Pending
2017-006642 13/310,452 Decision mailed Sept. 27, 2017
2017-011247 13/253,811 Decision mailed Nov. 1,2017
2017-011549 14/608,520 Pending
2017-011552 14/628,941 Pending
REJECTIONS
Claims 1—4, 6, 9, 10, 12, 13, 15—19, 21, and 23—30 stand rejected
under 35 U.S.C. § 101, as being directed to non-statutory subject matter.
See Final Act. 5—8.3
Claims 1,9, 15, and 23 stand rejected under 35 U.S.C. § 112, second
paragraph, as being indefinite. See Final Act. 8.
Claims 1—4, 6, 9, 10, 12, 13, 15—19, and 21 stand rejected under
35 U.S.C. § 103(a) as being unpatentable over Grainger (US 2002/0065676
Al; May 30, 2002), Poltorak (US 2004/0158559 Al; Aug. 12, 2004), and
Barney (US 6,556,992 Bl; Apr. 29, 2003). See Final Act. 8-28.4
Claims 23—30 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Grainger, Poltorak, Barney, and Niwa (US 5,987,460;
Nov. 16, 1999). See Final Act. 28—34.
3 Claims 7, 11, and 20 are mistakenly included in the header for this
rejection (see Final Act. 6), but are indicated by Appellant as cancelled by
amendment (see Amendment 3, 5 (May 4, 2015)). We find the Examiner’s
typographical error to be harmless.
4 Claim 4 is mistakenly omitted from the header for this rejection (see
Final Act. 9), but otherwise appears in the body of the rejection (id. at 14—
15). We find the Examiner’s typographical error to be harmless.
4
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Application 11/098,761
THE § 101 REJECTION
The Examiner finds that specific elements from the claims are
directed to “the abstract idea of document management.” Final Act. 5—6;
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 and, therefore, is ineligible under § 101.
Final Act. 6—8; Ans. 5—6.
Appellant contends that specific elements from the independent
claims, when considered in combination with other elements of the
independent claims, cannot be construed as abstract ideas. Br. 12.
Appellant further argues the independent claims include specific elements
requiring more than a generic computer to perform generic computer
functions that are well-understood, routine and conventional activities
previously known to the industry. Id. at 12—15.
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. v. CLS Bank International, 134 S. Ct. 2347
(2014).
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Alice Step One
According to Alice step one, “[w]e must first determine whether the
claims at issue are directed to a patent-ineligible concept,” such as an
abstract idea. Alice, 134 S. Ct. at 2355 (emphasis added). “[T]he ‘directed
to’ inquiry applies a stage-one filter to claims, considered in light of the
[Specification, based on whether ‘their character as a whole is directed to
excluded subject matter.’” Enfish, LLC v. Microsoft Corp., 822 F.3d 1327,
1335 (Fed. Cir. 2016) (quoting Internet Patents Corp. v. Active Network,
Inc., 790 F.3d 1343, 1346 (Fed. Cir. 2015)) (second bracket in original).
The Specification discusses the problem to be solved by the
invention—reducing the time of determining which patent applications must
disclose a reference document. Spec. 1—2. According to the Specification,
the inventor provides a method that derives a score by comparing extracted
characters between the reference document and a patent application’s
pending claims. Id. at 4—5. “The score is then used to determine if the
reference document should be provided in a disclosure statement to a
patenting authority. If the score meets a certain criteria, the [reference]
document is marked in the database for disclosure.” Id. at 5.
Appellant argues the claims as a group. See Br. 8—10. We, therefore,
select independent claim 1 as the representative claim for this group, and the
remaining claims 2-4, 6, 9, 10, 12, 13, 15—19, 21, and 23—30 stand or fall
with claim 1. 37 C.F.R. § 41.37(c)(l)(iv). Here, claim 1 recites four distinct
steps: (a) maintaining a patent case database; (b) deriving a score based on
comparing keywords between a reference document and a pending claim set;
(c) increasing relevancy of the score based on data associated with the
reference document; and (d) marking the reference based on the score. Each
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of these steps involve information. In particular, various forms of
information are stored in a database, derived by comparing the stored
information, increased based on other information associated with the stored
information, and marked based on the derived information. This is the
essence of information gathering, analyzing, and organizing that is
fundamental to human behavior. Thus, in light of the Specification
discussed above, we agree with the Examiner that claim 1 as a whole, is
directed to document management, and document management is a method
of organizing human activity. See Final Act. 6; Ans. 4.
Therefore, claim 1 is directed to an abstract idea under the first step of
the Alice analysis.
Alice Step Two
Turning to the second step of the Alice analysis, we see nothing in the
claimed subject matter that transforms the abstract idea of document
management into an inventive concept. Specifically, none of steps (1)—(4)
discussed above, either individually or ‘“as an ordered combination’ . . .
‘transform the nature of the claim’ into a patent-eligible application.” Alice,
134 S. Ct. at 2355 (quoting Mayo, 566 U.S. at 78).
Appellant contends (1) the automatic keyword analysis to derive a
score for a reference, and (2) the marking of the reference for inclusion in a
disclosure statement based on the score, as claimed, amount to significantly
more than an abstract idea because a user meets the duties of prior art
disclosure more efficiently and faster. Br. 13. Appellant argues this process
solves technological problems, improves the functioning of a computer, or
improves a technical field. Br. 14—15. We disagree. The only portion of the
claimed method that could be considered “technological” is the use of
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generic computer hardware, i.e., the claimed “database” and “processor,”
which is not enough to confer subject matter eligibility. See Alice,
134 S. Ct. at 2358 (“[I]f a patent’s recitation of a computer amounts to a
mere instruction to ‘implemen [t]’ an abstract idea ‘on ... a computer,’ that
addition cannot impart patent eligibility.”) (citation omitted). The claimed
method does not improve a computer’s functionality or efficiency, or
otherwise change the way the computer functions. Cf. Enfish, 822 F.3d at
1335. Nor does the claimed method represent an improvement to a technical
field, but a computerization of a method of organizing human activity.
Merely reciting a generic computer cannot transform a patent-ineligible
abstract idea into a patent-eligible invention. Alice, 134 S. Ct. at 2358. In
other words, merely reciting an abstract idea while adding the words “apply
it with a computer” does not render an abstract idea non-abstract: there must
be more. See id. at 2359; see also DDR Holdings, LLC v. Hotels.com, L.P.,
773 F.3d 1245, 1256 (Fed. Cir. 2014).
Thus, “the claims at issue amount to ‘nothing significantly more’ than
an instruction to apply the abstract idea . . . using some unspecified, generic
computer.” Alice, 134 S. Ct. at 2360 (citing Mayo, 566 U.S. at 71).
Therefore, we are not persuaded that the Examiner erred in rejecting claim 1,
and claims 2-4, 6, 9, 10, 12, 13, 15—19, 21, and 23—30, which fall with claim
1.
THE § 112, SECOND PARAGRAPH REJECTION
The Examiner finds increasing relevancy of a score, recited in claim
1, renders the claim indefinite because it raises a question of “whether
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increasing the score will increase relevancy or decreasing the score will
increase relevancy.” Ans. 7.
Appellant argues that claim 1 is definite because, if the claim is read
in light of page 5 of the Specification, those skilled in the art would
understand that increasing the relevancy of the score is independent of
whether the score is increased or decreased. Br. 16—17. According to
Appellant, “the relevancy of the computed score may be improved by using
various characteristics associated with the reference.” Id. at 17.
Analysis
The test for definiteness is whether one skilled in the art would
understand the bounds of the claim when read in light of the specification.
Orthokinetics, Inc. v. Safety Travel Chairs, Inc., 806 F.2d 1565, 1676 (Fed.
Cir. 1986). If the claims read in light of the specification reasonably apprise
those skilled in the art of the scope of the invention, Section 112 demands no
more. Hybritech, Inc. v. Monoclonal Antibodies, Inc., 802 F.2d 1367, 1385
(Fed. Cir. 1986). “A claim is not ‘indefinite’ simply because it is hard to
understand when viewed without benefit of the specification.” S3, Inc. v.
NVidia Corp., 259 F.3d 1364, 1369 (Fed. Cir. 2001).
We will not sustain the Examiner’s indefmiteness rejection of claim 1
that is based on requiring the claims to include an explanation of whether
increasing relevancy of a score increases or decreases the score itself.
Ans. 7. The Specification discloses that a reference document’s information
alters relevancy of scoring for purposes of determining whether the
reference document is marked for inclusion in a disclosure statement, but
does not alter the scoring itself. Spec. 5:8—22. Thus, we agree with
Appellant (see Br. 16—17) that one of ordinary skill in the art would
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understand that increasing relevancy of a score is independent of increasing
or decreasing the score.
The Examiner has not established that the claims’ lack of an
explanation regarding “whether increasing the score will increase relevancy
or decreasing the score will increase relevancy” would render the bounds of
the claim when read in light of the Specification unclear to one of ordinary
skill in the art. Final Act. 8; Ans. 7. Thus, on this record, we find claim 1 is
sufficiently clear.
For the reasons discussed above, we are persuaded the Examiner erred
in rejecting claim 1 under § 112, second paragraph. Accordingly, we do not
sustain the Examiner’s rejection of claim 1. For similar reasons, we do not
sustain the Examiner’s rejection of claims 9, 15, and 23 which recite similar
limitations.
THE OBVIOUSNESS REJECTION OVER
GRAINGER, POLTORAK, AND BARNEY
The Examiner finds that Grainger, Poltorak, and Barney collectively
teach or suggest all recited elements of claim 1. Final Act. 9—13. Among
other things, the Examiner finds Grainger performs a keyword analysis on a
reference document based on occurrence of first case keywords in the
reference document. Final Act. 10 (citing Grainger 147); Ans. 7—8. The
Examiner also cites Poltorak for teaching deriving first case keywords from
a pending claim set of a first case and deriving a score by performing a
keyword analysis on a reference document based on occurrence of first case
keywords in the reference document. Final Act. 11—12 (citing Poltorak
1125, 30-37); Ans. 8—9. Barney is also cited for teaching increasing
relevancy of the score based on data associated with the reference document.
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In view of these collective teachings, the Examiner concludes that claim 1
would have been obvious. Final Act. 13 (citing Barney 24:15—50); Ans. 9.
Appellant argues, among other things, that the Examiner’s reliance on
Grainger is misplaced because, although Grainger’s user manually identifies
a reference document in response to the user’s search strings, Grainger does
not teach or suggest deriving a score to identify the reference document.
Br. 22—23. Appellant further contends Poltorak’s reference document in a
search result is not assigned a score based on the occurrences of keywords in
the reference document. Id. at 23—25. Appellant further contends Grainger
teaches away from automated reference document identification based on a
score because Grainger’s reference document is manually identified. Id. at
25—26. Appellant also argues Barney’s patent rating method does not
indicate relevancy of a score based on data associated with a patent
application. Id. at 20.
Analysis
We begin by noting the Examiner’s obviousness rejection relies on
Grainger to show, among other things, performing “a keyword analysis on a
reference document based on occurrences of the first case keywords in the
reference document,” as recited in claim 1. Final Act. 10 (citing
Grainger 147); Ans. 7—8. For example, the Examiner finds Grainger’s user
filing a patent application related to an on-line auction method may search
web sites for an existing on-line auction web site (the claimed “reference
document”) based on keywords. Ans. 7—8. The Examiner acknowledges
Grainger’s keyword analysis does not automatically derive a score based on
the occurrences of the keywords in the reference document, and cites
Poltorak for teaching that an automatic score derivation would have been
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obvious. Final Act. 11—12 (citing Poltorak || 25, 30-37); Ans. 8—9.
Therefore, Appellant’s argument regarding Grainger’s alleged shortcomings
with respect to the recited limitations pertaining to a keyword analysis to
derive a score is unpersuasive where, as here, the rejection is not based
solely on Grainger, but rather on the combination of Grainger and Poltorak.
Br. 23, 26; see In re Merck & Co., Inc., 800 F.2d 1091, 1097 (Fed. Cir.
1986). To the extent Appellant contends Grainger’s search results are not
“already available,” such argument is not commensurate with the scope of
the claim. Br. 22. Nor is Appellant’s contention that Grainger’s search
method “requires a user to enter a search string or perform a search action on
the [Ijnternet” persuasive because the scope of the claim does not preclude a
user from entering a search string or performing a search on the Internet. Id.
at 23.
The Examiner’s obviousness rejection further relies on Grainger to
teach or suggest marking the reference document for inclusion in a
disclosure statement. Final Act. 10 (citing Grainger || 48-49). We find
unpersuasive Appellant’s contentions that the Examiner’s motivation is
based on hindsight and that one of ordinary skill in the art would not be
motivated to modify Grainger’s manual selection of the reference document
for marking to include Poltorak’s automatic scoring because Grainger
teaches away from the claimed invention. Br. 25—26. Although Grainger’s
manual selection does not contemplate an automated selection by scoring,
we do not see how Grainger criticizes, discredits, or otherwise discourages
investigation into an automated process. See Norgren, Inc. v. Int 7 Trade
Commission, 699 F.3d 1317, 1326 (Fed. Cir. 2012) (citation omitted); see
also In re Kahn, 441 F.3d 977, 990 (Fed. Cir. 2006). We find the Examiner
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has set forth an articulated reasoning with some rational underpinning to
combine Grainger, Poltorak, and Barney, i.e., “to provide the predictable
result of quantitatively determining how relevant a reference document is to
a patent case; and providing an efficient and automated means of searching
for prior art for a patent application based on the claim terms of the patent
application.” Final Act. 12; see also KSR Int’l Co. v. Teleflex, Inc., 550 U.S.
398, 418 (2007) (citing In re Kahn, 441 F.3d at 978).
Nor do we find error in the Examiner’s finding that Poltorak’s search
results correspond to the recited score derivation. See Ans. 8 (citing
Poltorak || 30-37). Appellant’s arguments that paragraph 31 of Poltorak
does not disclose computing a relevancy score for a reference document and
that Poltorak’s disclosure of methods of assigning relevancy scores is
inadequate, Br. 24—25 (citing Poltorak 139), do not persuasively rebut the
Examiner’s reliance on paragraph 37 of Poltorak. Final Act. 12; Ans. 8.
According to Poltorak, key terms of a patent claim’s preamble and
major limitations are identified. Poltorak, Abstract, 125. Poltorak then
formulates search queries to include the identified key terms of the patent
claim. Id. at Abstract, || 28—29. Upon using the formulated search queries
on various search engines, Poltorak’s search results are organized “in order
of decreasing contextual relevance,” which has criteria related “to the steps
of determining key terms of the preamble and the limitations.” Id. Tflf 32, 37.
Because the term “score” is not defined in the Specification, we interpret the
term with its plain meaning, namely “[a] result, usually expressed
numerically, of a test or examination.” The American Heritage
Dictionary of the English Language 1618 (n. 2c) (3rded. 1992).
Because Poltorak’s search results are organized in relation to the key terms,
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Poltorak at least suggests performing a keyword analysis on each individual
search result based on the occurrences of key terms in each individual search
result to derive a resulting placement in the search results (the claimed
“score”).
Lastly, we find unpersuasive Appellant’s contentions regarding
Barney’s alleged shortcomings pertaining to increasing relevancy of the
score based on data associated with the reference document as claimed.
Br. 19—21. At the outset, we note the claim requires only increasing
relevancy of a score based on data associated with a reference document,
which may or may not be a patent application, let alone the patent
application’s pending claim set that derives the first case keywords as
claimed. Thus, to the extent Appellant contends Barney’s patent rating is
different from relevancy of a score that “may be increased or improved
using some data associated with the patent application,” such an argument is
not commensurate with the scope of the claim, which recites no such
function. Br. 20 (emphasis added).
Barney is generally directed to rating patents. Barney, Abstract.
Barney’s patent report identifies a patent being reported and includes ratings
of the reported patent related to patent breadth, defensibility, and
commercial relevance. Id. at 24:18—20. Barney’s commercial relevance
rating of the reported patent is “adjusted to be predictive of patent
maintenance rates and/or mortality rates based on ... at least one
comparative metric based on a normalized forward patent citation rate
(normalized according to patent age).” Id. at 24:25—31; see also id. at
23:44—55 (correlating forward citations as “the number of citations
subsequently received by a patent”). Because the reported patent’s
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commercial relevance rating is adjusted based on a “forward citation rate,”
and forward citations are defined as the number of citations subsequently
received by a patent, Barney at least suggests that the reported patent’s
commercial relevance rating is adjusted based on a rate of citations
subsequently received by the reported patent over time. In other words, if
the rate of citations subsequently received by the reported patent changes
over time, then Barney’s reported patent’s commercial relevance rating is
adjusted. Thus, Barney at least suggests increasing relevancy of the reported
patent’s commercial relevance rating based on data associated with the
reported patent, the data associated with the reported patent being a number
of citations of the reported patent.
Accordingly, we are not persuaded the Examiner erred in rejecting
independent claim 1, and claims 2-4, 6, 9, 10, 12, 13, 15—19, and 21 for
similar reasons.
THE OTHER OBVIOUSNESS REJECTION
We also sustain the Examiner’s obviousness rejection of claims 23—
30. Ans. 10-11. 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 1—4, 6, 9, 10, 12, 13, 15—
19, 21, and 23-30 under 35 U.S.C. §§ 101 and 103.
The Examiner erred in rejecting claims 1,9, 15, and 23 under § 112,
second paragraph.
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DECISION
The Examiner’s decision in rejecting claims 1—4, 6, 9, 10, 12, 13, 15—
19, 21, and 23—30 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). See 37
C.F.R. § 41.50(f).
AFFIRMED
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