Ex Parte Lundberg

Patent Trial and Appeal Board

May 27, 2016

13309102 (P.T.A.B. May. 27, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/309, 102 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.
3431.013US1 9380
EXAMINER
BROWN, SHEREE N
ART UNIT PAPER NUMBER
3649
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
Appeal2015-000320
Application 13/309, 102
Technology Center 2100
MICHAEL M. BARRY, Administrative Patent Judges.
STRAUSS, Administrative Patent Judge.
DECISION ON APPEAL
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Application 13/309, 102
STATE~vfENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from a rejection of claims
1--4, 6-12, and 14--17. Claims 5 and 13 are canceled. We have jurisdiction
over the rejected claims under 35 U.S.C. § 6(b ).
We reverse and enter new grounds of rejection pursuant to 37 C.F.R.
§ 41.50(b).
THE INVENTION
The claims are directed to a patent management system. Spec., Title.
Claim 1, reproduced below with a dispositive disputed limitation
emphasized in italics, is illustrative of the claimed subject matter:
1. A method for managing patent matters, the method
compnsmg:
scraping patent data from an external patent database, the
data including event dates for at least one patent matter;
providing a docket engine for docketing the scraped event
dates and, based on the scraped dates, calculating response due
dates for the at least one patent matter;
downloading at least one document from the external
patent database; and
associating at least one response due date with the at least
one downloaded document and embedding the at least one
response date into the downloaded document, wherein the
downloaded document contains at least the one response due
date in a text-readable version of the downloaded document.
REFERENCE
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Grainger US 2002/0161733 Al Oct. 31, 2002
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THE REJECTION
The Examiner rejected claims 1--4, 6-12, and 14--17 under 35 U.S.C.
§ 102(b) as being anticipated by Grainger. Final Act. 5-8.
APPELLANT'S CONTENTION
Appellant contends Grainger's column of due dates within the website
document, which is merely a screen shot of a Web Page containing an
HTML link to a document, does not disclose the disputed limitation of
"embedding the at least one response date into the downloaded document,
wherein the downloaded document contains at least the one response due
date in a text-readable version of the downloaded document," as required by
claim 1. App. Br. 8-13.
ANALYSIS
We have reviewed the Examiner's rejections in light of Appellant's
arguments the Examiner has erred in rejecting independent claims 1, 9, and
17 under 35 U.S.C. § 102(b) as anticipated by Grainger. We agree with
Appellant's conclusions as to this rejection of the claims.
Appellant contends Grainger fails to disclose or suggest the disputed
limitation of "embedding the at least one response date into the downloaded
document, wherein the downloaded document contains at least the one
response due date in a text-readable version of the downloaded document"
because Grainger's website document with due dates is merely a screen shot
of a Web Page containing an HTML link to a document in which a due date
acts as an alert. App. Br. 10. The Examiner responds by finding Grainger's
optical character recognition, which captures, e.g., due dates, and stores the
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dates into a database, discloses embedding the response date into a
downloaded document. Ans. 2-3.
We agree with Appellant. The Examiner fails to explain how
Grainger' s OCR conversion from an optical representation to an encoded
text version and storage thereof into a database discloses embedding the at
least one response date into the downloaded document. Therefore, in the
absence a persuasive line of technical reasoning explaining why Grainger
discloses the disputed limitation, we find Appellant's contention persuasive
of Examiner error.
For the reasons discussed supra, we do not sustain the rejection of
independent claim 1under35 U.S.C. § 102(b) over Grainger and, for the
same reasons, we do not sustain the rejections of independent claims 9, 1 7,
which include substantially the same limitation, and of dependent claims 2-
4, 6-8, and 10-16. Because we are persuaded of error with regard to the
issue discussed supra, which is dispositive as to the rejection of all claims,
we do not reach the additional issues raised by Appellant.
NEW GROUNDS OF REJECTION
The following new ground of rejection is entered pursuant to 37
C.F.R. § 41.50(b). Independent claims 1, 9, and 17 are rejected under 35
U.S.C. § 102(b) as anticipated by Grainger or under 35 U.S.C. § 103 as
obvious over Grainger.
Regarding claim 1, Grainger discloses:
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a method for managing patent matters (method of managing
documents related to a patent application; Abstract, Figure 1-2 and
paragraphs 0004-0018 & 0025-003 6), the method comprising:
scraping patent data from an external patent database (database 106
stores all information pertaining to the patent developers' intellectual
property portfolios, including patent application documents and responses to
office actions, and the system makes patent data available, for example,
through HTML links to documents stored in database 106; Figure 1,
paragraphs 0042---0043, 0052; the external patent database is outside the
infrastructure of Web server 101 and patents are extracted from the database
106), the data including event dates for at least one patent matter (electronic
notification of due dates and calendar of due dates for all the cases tracked
by the system; paragraphs 0031, 0047, 0052, 0083-0087);
providing a docket engine (docketing engine; paragraph 0084) for
docketing the scraped event dates (electronic notification of due dates and
calendar of due dates for all the cases tracked by the system; paragraphs
0031, 0047, 0052, 0083-0087) and, based on the scraped dates, calculating
response due dates for the at least one patent matter (series of reminders and
due dates are created for the task, reminders and due dates may be calculated
based on a variety of dates of the document; paragraph 0087);
downloading at least one document from the external patent database
(Web page 210, system makes patent data available, for example, through
HTML links to documents stored in database 106; paragraphs 0052, 0114,
Figure 4B; the Web page is a type of document (i.e., HTML document)
which draws its content from the database 106); and
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assocrntmg at least one response due date with the at least one
downloaded document (each ofWeb Pages 210, 214, 216 and 218, individual
alerts are shown with respect to the case reference number, title, due date;
paragraphs 0114---0115, Figure 4B);
and embedding the at least one response date into the downloaded
document (in each of Web Pages 210, 214, 216 and 218, individual alerts are
shown with respect to the case reference number, title, due date; Figure 4B
and Figure 4C, paragraphs 0114---0115; the Web page comprises the
document and the due date is incorporated into the document by the display
of the due date within the Web page) wherein the downloaded document
contains at least the one response due date in a text-readable version of the
downloaded document (in each of Web Pages 210, 214, 216 and 218,
individual alerts are shown with respect to the case reference number, title,
due date; Figure 4B and Figure 4C, paragraphs 0114---0115; the Web page
includes text, including the due date, as seen within Figure 4B.).
Regarding claim 9, Grainger discloses:
a system for managing patent matters (data processing system of
facilitating managing patent applications; paragraph 0024) comprising:
one or more processors (computer system, web server; paragraph
0041);
an input module configured to scrape patent data including event dates
of at least one patent matter (electronic notification of due dates and
calendar of due dates for all the cases tracked by the system; paragraph
0031, 0047, 0052, 0083-0087) from an external patent database (database
106 stores all information pertaining to the patent developers' intellectual
property portfolios, including patent application documents and responses to
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office actions, and the system makes patent data available, for example,
through HTML links to documents stored in database 106; Figure 1,
paragraphs 0042---0043, 0052; external patent database is outside the
infrastructure of Web server 101 and patent documents are extracted from
the database 106), wherein the input module includes software operable on
the one or more processors (server engine 102; paragraph 0041);
a docket engine (docketing engine; paragraph 0084) configured to
docket the scraped event dates (electronic notification of due dates, calendar
of due dates for all the cases tracked by the system; paragraphs 0031, 004 7,
0052, 0083-0087) to calculate response due dates for the at least one patent
matter based on the scraped dates (series of reminders and due dates are
created for the task, reminders and due dates may be calculated based on a
variety of dates of the document; paragraph 0087), wherein the docket
engine includes software operable on the one or more processors (docketing
engine; paragraph 0084 );
a search engine configured to identify and download at least one
document from the external patent database (Web page 210, system makes
patent data available, for example, through HTML links to documents stored
in database 106; paragraphs 0114, 0052, Figure 4B; the Web page is a type
of document (i.e., HTML document) which draws its content from the
database 106), wherein the search engine includes software operable on the
one or more processors (server engine 102; paragraph 0041); and
a mapping module configured to associate at least one response due
date with the at least one downloaded document (each of Web Pages 210,
214, 216 and 218, individual alerts are shown with respect to the case
reference number, title, due date; paragraphs 0114---0115, Figure 4B) and
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embed the at least one response date into the downloaded document (each of
Web Pages 210, 214, 216 and 218, individual alerts are shown with respect
to the case reference number, title, due date; Figure 4B and Figure 4C,
paragraphs 0114---0115; the Web page is a type of document (i.e., HTML
document) and the due date is physically incorporated into the document due
to the display of the due date within the Web page), wherein the mapping
module includes software operable on the one or more processors (server
engine 102; paragraph 0041) and the downloaded document contains at least
the one response due date in a text-readable version of the
downloaded document (each of Web Pages 210, 214, 216 and 218,
individual alerts are shown with respect to the case reference number, title,
due date; Figure 4B and Figure 4C, paragraphs 0114---0115; the Web page
comprises text, including the due date, as seen within Figure 4B.).
Regarding claim 17, Grainger discloses:
a patent management system (data processing system of facilitating
managing patent applications; paragraph 0024) comprising:
a network (IP data processing system 100 is a distributed network
system; Figure 2, paragraph 0044);
at least one patent database (database 106; Figure 2, numeral 106,
paragraphs 0042---0043, 0052), accessible on the network (IP data processing
system 100 is a distributed network system; Figure 2, paragraph 0044), and
storing data including event dates for at least one patent matter stored in the
database (database 106 stores all information pertaining to the patent
developers' intellectual property portfolios including patent application
documents, responses to office actions and system makes patent data
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available, for example, through HT~vfL links to documents stored in database
106; Figure 1, paragraphs 0042---0043, 0052); and
a server, operatively connected to the network (server engine; Figure
2, Server Engine 102, paragraph 0041 ), wherein the server includes:
a processor (computer systems; paragraph 0041 );
a memory (database 106, computer-readable memory; paragraphs
0041---0042);
software operable on the processor (server engine; paragraph 0102)
to:
scrape patent data from the patent database (database 106 stores all
information pertaining to the patent developers' intellectual property
portfolios including patent application documents, responses to office
actions, and system makes patent data available, for example, through
HTML links to documents stored in database 106; Figure 1, paragraphs
0042---0043, 0052; the external patent database is outside the infrastructure of
Web server 101 and patent documents are extracted from the database 106),
the data including event dates of at least one patent matter (electronic
notification of due dates, calendar of due dates for all the cases tracked by
the system; paragraphs 0031, 004 7, 0052, 0083-0087);
docket the scraped event dates and, based on the scraped dates
(electronic notification of due dates, calendar of due dates for all the cases
tracked by the system; paragraphs 0031, 0047, 0052, 0083-0087), calculate
response due dates for the at least one patent matter (series of reminders and
due dates are created for the task, reminders and due dates may be calculated
based on a variety of dates of the document; paragraph 0087);
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download at least one document from the external patent database
(Web page 210, system makes patent data available, for example, through
HTML links to documents stored in database 106; paragraphs 0114, 0052,
Figure 4B; the Web page is a type of document (i.e., HTML document)
which draws its content from the database 106); and
associate at least one response due date with the at least one
downloaded document (each of Web Pages 210, 214, 216 and 218,
individual alerts are shown with respect to the case reference number, title,
due date; paragraphs 0114---0115, Figure 4B), and embed the at least one
response date into the downloaded document (each of Web Pages 210, 214,
216 and 218, individual alerts are shown with respect to the case reference
number, title, due date; Figure 4B and Figure 4C, paragraphs 0114---0115; the
Web page is a type of document (i.e., HTML document) and the due date is
physically incorporated into the document due to the display of the due date
within the Web page), wherein the downloaded document contains at least
the one response due date in a text-readable version of the downloaded
document (each of Web Pages 210, 214, 216 and 218, individual alerts are
shown with respect to the case reference number, title, due date; Figure 4B
and Figure 4C, paragraphs 0114---0115; the Web page comprises text,
including the due date, as seen within Figure 4B.).
Thus, Grainger teaches, or at a minimum, suggests, Appellant's
invention claimed in claims 1, 9, and 1 7,
The Patent Trial and Appeal Board is a review body, rather than a
place of initial examination. We have made new rejections of independent
claims 1, 9, and 17 under 35 U.S.C. §§ 102(b) or 103, pursuant to 37 C.F.R.
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§ 41.50(b). However, we have not reviewed dependent claims 2--4, 6-8, IO-
12, and 14--16 to the extent necessary to determine whether these claims are
unpatentable over Grainger and/or other prior art. We leave it to the
Examiner to ascertain the appropriateness of any further rejections based on
Grainger, or other references. Our decision not to enter a new ground of
rejection for all claims should not be considered as an indication regarding
the appropriateness of further rejection or allowance of the non-rejected
claims. See MPEP § 1213.03.
DECISION
The Examiner's decision to reject claims 1--4, 6-12, and 14--17 is
reversed.
We newly reject claims 1, 9, and 17 under 35 U.S.C. §§ 102(b) or 103
as unpatentable over Grainger.
3 7 C.F.R. § 41. 50(b) provides that Appellant, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new ground of rejection to
avoid termination of proceedings (37 C.F.R. § 1.197 (b)) as to the rejected
claims:
(1) Reopen prosecution. Submit an appropriate amendment of the
claims so rejected or new Evidence relating to the claims so rejected,
or both, and have the matter reconsidered by the examiner, in which
event the prosecution will be remanded to the examiner ....
(2) Request rehearing. Request that the proceeding be reheard under
§ 41.52 by the Board upon the same Record ....
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 41.50(±).
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REVERSED
37 C.F.R. § 41.50(b)
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