Ex Parte Lundberg

Patent Trial and Appeal Board

Aug 24, 2017

13309200 (P.T.A.B. Aug. 24, 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.
13/309,200 12/01/2011 Steven W. Lundberg 3431.017US1 7054
21186 7590 08/28/2017
SCHWEGMAN LUNDBERG & WOESSNER, P.A.
P.O. BOX 2938
MINNEAPOLIS, MN 55402
EXAMINER
BROWN, SHEREE N
ART UNIT PAPER NUMBER
3649
NOTIFICATION DATE DELIVERY MODE
08/28/2017 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 2016-002121
Application 13/309,20c1
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, 2, 4—13, and 15—24. Claims 3 and 14 were
cancelled. We have jurisdiction under 35 U.S.C. § 6(b).
We reverse, pro forma, and enter a new ground of rejection.
CLAIMED SUBJECT MATTER
Appellant’s invention generates a seed set of search results that
includes patent claims associated with a search query. Abstract. In a
1 According to Appellant, the real party in interest is Black Hills IP
Holdings, LLC. App. Br. 2.
Appeal 2016-002121
Application 13/309,200
disclosed embodiment, the search is expanded automatically “based on
synonyms [or] forward or reverse citations.” Spec. 62.
Claim 1 is representative and reproduced below:
1. A computer implemented method implemented by one or
more processors, the method comprising:
maintaining a database of patent portfolios and a database
of patents, each patent stored in the database of patents
associated with one or more patent portfolios stored in the
database of patent portfolios;
receiving a search query associated with a first patent
portfolio;
searching the first portfolio as a function of the search
query;
generating a seed set of search results including one or
more patent claims associated with the search query, the patent
claims including terms from the search query;
automatically generating an expanded set of search results
including one or more patent claims associated with the patent
claims in the seed set of search results, the automatic generation
of expanded search results including retrieving patent claims
from patents or patent applications cited forward or against the
patent claims in the seed set of search results in addition to patent
claims textually related to the search query; and
mapping the one or more patent claims to a patent concept.
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:
Appeal No. Application No. Decided/Status
2009-005709 10/128,141 Decision mailed Mar. 23,2010
2009-006404 10/874,486 Decision mailed Aug. 2,2010
2011-009966 11/061,383 Decision mailed Jan. 31,2014
2
Appeal 2016-002121
Application 13/309,200
2012-004166 11/061,
2015-000321 13/309,
2015-003180 13/309,
2015-007422 13/309,
2016-000319 13/309,
2016-000912 13/309,
2016-001687 11/888,
2016-002680 13/310,
2016-002792 12/605,
2016-006797 13/310,
2016-007186 13/573,
2016-007415 13/464,
2016-007623 13/408,
2016-007787 13/310,
2016-008030 13/253,
2017-000280 13/408,
2017-000386 11/098,
2017-002337 14/010,
2017-003702 14/483,
2017-003815 14/094,
2017-004158 14/010,
2017-004159 14/010,
2017-004188 14/010,
2017-006390 13/409,
2017-006642 13/310,
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
Pending
Decision mailed Jan. 19, 2017
Pending
Pending
Pending
Decision mailed July 28, 2017
Decision mailed July 31, 2017
Pending
Decision mailed Aug. 3, 2017
Decision mailed Aug. 3, 2017
Pending
Pending
Pending
Pending
Pending
Pending
Pending
Pending
Pending
Pending
,312
,127
,039
,146
,080
,060
,632
,279
,030
,368
,803
,598
,877
,322
,936
,917
,761
,376
,903
,542
,391
,380
,400
,189
,452
3
Appeal 2016-002121
Application 13/309,200
REJECTION
Claims 1,2, 4—13, and 15—24 stand rejected under 35 U.S.C. § 102(b)
as being anticipated by Speier (US 2007/0288256 Al; Dec. 13, 2007). Final
Act. 3-11.
CONTENTIONS
The Examiner finds that Speier discloses every recited element of
independent claim 1 including, among other things, the retrieval of patent
claims from patents or patent applications cited forward or against patent
claims in a seed set of search results. Final Act. 5. According to the
Examiner, Speier’s retriever retrieves a result set of patent claim terms that
includes hyperlinks to intrinsic and extrinsic evidence associated with the
patent claim terms. Id. (citing Speier 109, 118). The Examiner finds
Speier’s extrinsic evidence includes “other patent publications (patent
applications) in which a claim term appears (cited against said searched
claim)).” Id. (emphasis added).
Appellant argues, among other things, that there is no indication
Speier’s extrinsic evidence is cited against a searched claim as asserted by
the Examiner. App. Br. 8—9.
ANALYSIS
During examination, claims are “given their broadest reasonable
interpretation consistent with the specification.” In re Am. Acad, of Sci.
Tech Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). “Construing claims
broadly during prosecution is not unfair to the applicant. . . because the
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Application 13/309,200
applicant has the opportunity to amend the claims to obtain more precise
claim coverage.” Id.
We begin by construing the key disputed limitation of claim 1. The
claim construction analysis begins with the words of the claim. See
Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996).
The key disputed limitation of claim 1 recites “retrieving patent claims from
patents or patent applications cited forward or against the patent claims in
the seed set of search results.”
Absent an express intent to impart a novel meaning to a claim term,
the words take on the ordinary and customary meanings attributed to them
by those of ordinary skill in the art. Brookhill-Wilk 1, LLC. v. Intuitive
Surgical, Inc., 334 F.3d 1294, 1298 (Fed. Cir. 2003) (internal citations
omitted). “The ordinary and customary meaning of a claim term may be
determined by reviewing a variety of sources. Some of these sources
include the claims themselves; dictionaries and treatises; and the written
description, the drawings, and the prosecution history.” Id.
Appellant’s invention relates to generating a seed set of search results
that includes one or more patent claims having a search query’s terms.
Abstract. Appellant’s Specification states that upon generating the seed set
of search results, an expanded set of search results is automatically
generated that includes the retrieval of patent claims from a patent or patent
application cited forward or against the patent claims in the seed set of
search results (Spec. 196)—the disputed key limitation recited in
independent claim 1, and similarly recited in the other independent claims
12, 23, and 24.
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Appeal 2016-002121
Application 13/309,200
Regarding the disputed key limitation, which recites “retrieving patent
claims from patents or patent applications cited forward or against the patent
claims in the seed set of search results,” it is unclear what exactly is cited
forward or against the patent claims in the seed set of search results. In
other words, it is unclear whether (1) the patents or patent applications
(which may or may not include claims2); or (2) the patent claims (from the
patents or patent applications) are cited forward or against the patent claims
in the seed set of search results. Accordingly, we find the disputed key
limitation indefinite because it is amenable to at least two plausible claim
constructions discussed above. Ex parte Miyazaki, 89 U.S.P.Q.2d 1207,
1211 (BPAI Nov. 19, 2008) (precedential) (holding that when a claim is
amenable to two or more plausible claim constructions, the claim is
unpatentable under 35 U.S.C. § 112, second paragraph, as indefinite).
Further, it is unclear what it means for patent claims from patents or
patent applications to be cited “forward” or “against” the patent claims in the
seed set of search results. Appellant’s Specification encompasses patent
applications during prosecution with a patent office. Spec. 13. Patent
prosecution involves many different reasons why patents or patent
applications would be cited in relation to other patents’ claims. “Each
individual associated with the filing and prosecution of a patent application
has a duty of candor and good faith in dealing with the Office, which
includes a duty to disclose to the Office all information known to that
individual to be material to patentability as defined in this section.”
2 For example, provisional patent applications need not include patent
claims.
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Application 13/309,200
37 C.F.R. § 1.56. “During the examination of an application or
reexamination of a patent, the examiner should cite appropriate prior art
which is nearest to the subject matter defined in the claims.” Manual of
Patent Examining Procedure (MPEP) § 707.05 (9th ed. Rev. 07.2015,
Nov. 2015).
Appellant’s Specification, other than repeating the disputed key
limitation in the independent claims (Spec. 196), however, provides no
guidance regarding how one would objectively determine that patent claims
from patents or patent applications are cited “forward” or “against.”
Notably, Appellant’s Specification does not define these terms, unlike other
terms whose clear and unambiguous definitions leave no doubt as to their
meaning. See, e.g. Spec. 119. Moreover, we find Appellant’s Specification
does not clarify the intended meaning of “forward” and “against.” See id. 11
36, 75. In particular, paragraph 36 of the Specification discloses storing data
“relating to cited references owned by or cited against (in ‘forward’ or
‘reverse’ manner)” either “a target entity (for example, a client of a firm)” or
“another entity (for example, a competitor of the client or other target
entity).” In essence, paragraph 36 of the Specification discloses that a
citation “against” may also be “forward” (or “reverse”). Thus, the
Specification does not support interpreting cited references owned by a
target entity as references “cited forward ... the patent claims.” Paragraph
75 of the Specification similarly discloses that the “cited references owned
by or cited against target or other entities” are mapped “to determine a ‘prior
art’ overlap,” and that “the overlap may relate to so-called ‘forward’
citations, or ‘reverse’ citations, or both.”
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Application 13/309,200
Dictionary definitions also fail to provide guidance regarding how one
would objectively determine which patent claims from patents or patent
applications are considered cited “forward” or “against” the patent claims in
the seed set of search results. The term “against” is defined as “as a basis for
disapproval of’ (Merriam-Webster’s Collegiate Dictionary 21 (10th
ed. 1999) (preposition def. Id)), and the term “forward” is defined as “to or
toward what is ahead or in front” (Id. 459 (adverb def.)). We find it unclear
which citations of patent claims from patents or patent applications would be
covered by such a construction of “forward” and “against.” Finally, on this
record, we find Appellant does not provide any insight of what characteristic
a citation of patent claims from patents or patent applications would be
considered “forward” or “against.” Rather, Appellant argues what Speier is
not rather than what the disputed key limitation is. See App. Br. 8—10;
Reply Br. 2.
Accordingly, we have reviewed Appellant’s Specification and find no
disclosure sufficient for us to determine the broadest reasonable
interpretation of “patent claims from patents or patent applications cited
forward or against the patent claims in the seed set of search results,” as
recited in independent claim 1, and as similarly recited in the other
independent claims 12, 23, and 24.
Even assuming that the meaning of patent claims from patents or
patent applications cited “forward” or “against” is sufficiently clear, which it
is not, it is unclear from the Specification what it means for patent claims
from patents or patent applications to be cited “forward or against the patent
claims''’ in a seed set of search results. Specifically, it is unclear what would
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Application 13/309,200
constitute a citation “forward or against the patent claims in the seed set of
search results,” which for convenience we will refer to generically as Patent
A. Specifically, each patent claim that is included in the seed set of search
results is presumably a part of a patent or patent application, which for
convenience we will refer to generically as Patent X. However, it is unclear
whether “patent claims from patents or patent applications cited forward or
against the patent claims” would exclude a citation relationship that exists
only between Patent A and a portion of the Patent X other than the claims in
Patent X.
“All words in a claim must be considered in judging the patentability
of the claim against the prior art. If no reasonably definite meaning can be
ascribed to certain terms in the claim, the subject matter does not become
obvious—the claim becomes indefinite.” In re Wilson, 424 F.2d 1382, 1385
(CCPA 1970). For the reasons discussed above, we are unable to discern
with reasonable clarity the scope of subject matter encompassed in the
independent claims. Therefore, we enter a new ground of rejection under
35 U.S.C § 112, second paragraph because claims 1, 2, 4—13, and 15—24 are
indefinite. See In re Packard, 751 F.3d 1307, 1309 (Fed. Cir. 2014)
(affirming Board’s conclusion, in context of ex parte appeal, that claims
were indefinite “on grounds that they ‘contain[] words or phrases whose
meaning is unclear’”); See Miyazaki, 89 U.S.P.Q.2d at 1211.
Before a proper review of the rejection can be performed, the subject
matter encompassed by the claims on appeal must be reasonably understood
without resort to speculation. See In re Steele, 305 F.2d 859, 862 (CCPA
1962) (A prior art rejection cannot be sustained if the hypothetical person of
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Application 13/309,200
ordinary skill in the art would have to make speculative assumptions
concerning the meaning of claim language.). Because we cannot discern the
proper construction of the claims for the reasons stated above, we do not
analyze the teachings of the asserted prior art because we cannot determine
the scope of claims 1,2, 4—13, and 15—24. We are therefore constrained to
reverse, pro forma, the prior art rejection of claims 1, 2, 4—13, and 15—24.
DECISION
We reverse, pro forma, the Examiner’s decision to reject claims 1, 2,
4—13, and 15-24.
We enter a new ground of rejection for claims 1, 2, 4—13, and 15—24
under 35U.S.C. §112,|2, as being indefinite.
This decision contains a new ground of rejection pursuant to
37 C.F.R. § 41.50(b). Section 41.50(b) provides “[a] new ground of
rejection pursuant to this paragraph shall not be considered final for judicial
review.” Section 41.50(b) also provides:
When the Board enters such a non-final decision, the 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 the appeal 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. The new ground of
rejection is binding upon the examiner unless an
amendment or new Evidence not previously of
Record is made which, in the opinion of the
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Application 13/309,200
examiner, overcomes the new ground of rejection
designated in the decision. Should the examiner
reject the claims, appellant may again appeal to the
Board pursuant to this subpart.
(2) Request rehearing. Request that the
proceeding be reheard under §41.52 by the Board
upon the same Record. The request for rehearing
must address any new ground of rejection and state
with particularity the points believed to have been
misapprehended or overlooked in entering the new
ground of rejection and also state all other grounds
upon which rehearing is sought.
Further guidance on responding to a new ground of rejection can be
found in the MPEP § 1214.01.
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(f).
REVERSED
37 C.F.R, §41.500?)
11