Ex Parte Lundberg et al

Patent Trial and Appeal Board

Aug 28, 2017

13310368 (P.T.A.B. Aug. 28, 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.
13/310,368 12/02/2011 Steven W. Lundberg 3431.020US1 4734
21186 7590 08/30/2017
SCHWEGMAN LUNDBERG & WOESSNER, P.A.
P.O. BOX 2938
MINNEAPOLIS, MN 55402
EXAMINER
THAI, HANH B
ART UNIT PAPER NUMBER
2163
NOTIFICATION DATE DELIVERY MODE
08/30/2017 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 and
LARS OLOF HUGO SVENS SON
Appeal 2016-006797
Application 13/310,36s1
Technology Center 2100
Before JOHN A. JEFFERY, BRUCE R. WINSOR, and
JUSTIN BUSCH, Administrative Patent Judges.
BUSCH, Administrative Patent Judge.
DECISION ON APPEAL
Appellants seek our review under 35 U.S.C. § 134 of the Examiner’s
final decision rejecting claims 1—22. We have jurisdiction under 35 U.S.C.
§ 6(b).
We affirm-in-part and enter a new ground of rejection.
1 According to Appellants, the real party in interest is Black Hills IP
Holdings, LLC. App. Br. 3.
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Application 13/310,368
CLAIMED SUBJECT MATTER
Appellants’ invention automatically extracts keywords from identified
claims in a patent portfolio and generate a search query including those
keywords. Abstract. In a disclosed embodiment, it is possible to “arrange
the order of importance between extracted keywords.” Spec. 169.
Claim 1 is representative and reproduced below:
1. A computer implemented 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 input identifying a set of keyword source claims
associated with a first patent portfolio;
automatically extracting a plurality of keywords from the
set of keyword source claims;
receiving or formulating a search query associated with
the first patent portfolio, the search query including the plurality
of keywords;
automatically ordering the plurality keywords included in
the formulated search query, keywords wherein the ordering is
based on comparing a first importance rank of a first keyword of
the plurality of keywords relative to a second importance rank of
a second keyword of the plurality of keywords;
searching the entire first portfolio as a function of the
search query;
generating search results, the search results including one
or more patent claims associated with the search query; and
mapping the one or more patent claims to a patent concept.
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Application 13/310,368
RELATED APPEALS
Appellants did not identify any related appeals. See App. Br. 4.
However, there are at least twenty-eight (28) related appeals, which are:
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
2016-007186 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
2017-000386 11/098,761
2017-002337 14/010,376
2017-003702 14/483,903
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
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
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Appeal 2016-006797
Application 13/310,368
2017-003815 14/094,542 Pending
2017-004158 14/010,391 Pending
2017-004159 14/010,380 Pending
2017-004188 14/010,400 Pending
2017-006390 13/409,189 Pending
2017-006642 13/310,452 Pending
THE REJECTIONS
The Examiner provisionally rejected claims 1—21 on the ground of
non-statutory obviousness-type double patenting over (1) claims 1—21 of
Application No. 13/310,322; and (2) claims 1—9 of Application Nos.
12/605,030; 13/309,200; 13/310,279; and 13/253,936. Final Act. 2-6.
The Examiner rejected claims 1—22 under 35 U.S.C. § 103(a) as
unpatentable over Lundberg et al. (US 2007/0198578 Al; Aug. 23, 2007),
Berg (US 2009/0063468 Al; Mar. 5, 2009), and Kim et al. (US 7,801,889
B2; Sept. 21, 2010). Final Act. 6—12.
THE DOUBLE PATENTING REJECTION
Because Appellants do not contest the Examiner’s provisional
rejection of claims 1—21 under non-statutory obviousness-type double
patenting (App. Br. 1—15; Reply Br. 2—3), we summarily sustain this
provisional rejection. See Manual of Patent Examining Procedure
(MPEP) § 1205.02 (9th ed. Rev. 07, Nov. 2015).
THE OBVIOUSNESS REJECTION
The Examiner finds that Lundberg, Berg, and Kim collectively teach
or suggest all recited elements of claim 1. Final Act. 7—9. The Examiner
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Application 13/310,368
cites Lundberg for teaching, among other things, retrieving or formulating a
search query that includes at least one keyword. Id. at 7. The Examiner
cites Berg for teaching ordering the formulated search query of keywords.
Id. 8. Lastly, the Examiner cites Kim for teaching ordering the keywords in
the formulated search query based on comparing a first keyword’s
importance rank to a second keyword’s importance rank. Id. at 8. In view
of these collective teachings, the Examiner concludes that claim 1 would
have been obvious. Id. at 8—9.
Appellants argue Kim does not teach or suggest ordering keywords in
a formulated search query based on comparing a first keyword’s importance
rank relative of a second keyword’s importance rank, as recited in claim 1.
App. Br. 9; Reply Br. 2. In particular, Appellants argue that the Examiner’s
reliance on Kim is misplaced because, among other things, Kim’s search
query illustrated in Figures 5A—5D includes a single search term “seven.”
App. Br. 11—12. According to Appellants, if Kim’s search query includes
the single search term “seven,” then Kim does not teach or suggest ordering
a plurality of keywords in a formulated search query, as claimed. Id. 13.
Appellants add Kim’s only instance of ordering a plurality of keywords
occurs upon displaying a plurality of keywords (search results) in an order of
popularity rank based on how many times each keyword has been previously
entered. Id. 13—14.
Issue
Under § 103, has the Examiner erred in rejecting claim 1 by finding
that Lundberg, Berg, and Kim collectively would have taught or suggested
ordering keywords in a formulated search query based on comparing a first
keyword’s importance rank relative of a second keyword’s importance rank?
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Analysis
We agree with Appellants in concluding the rejection’s proposed
combination of references is problematic.
Kim is generally directed to providing popularity ranks of keywords
by categories. Kim 2:36—37. For example, the keyword “seven” belongs to
a first keyword group. Id. 6:31—44; Figure 5A. The keyword “seven” also
belongs to a second keyword group having representative keywords “seven,”
“lexy,” and “leesooyoung” associated with a representative category
“singer.” Kim’s Figure 5D is reproduced below:
FIG 5d
Web search V seven Search
‘Seven’ profile
Nape: seven (Korea)
Bora: November 9,1984
Height: tSflcm Weight: 64kg
Fa'nife; Grattan, paresis, & sisters
Nieimams: seres eleven
Hobby: Only music
Strength: Singing, dancing, rapping
-His nibami-’navorisnsk:
•Sfee more details ipa.VJt
-mobile contents: ‘
latest news on1 seven’
seven syndrome’ bit Asia!
*Star talk with ‘seven1
seven & jmiuiin
Singer search word ranking
1 Parks inkye +1
1 Chattgnara -1
3 Rain a
4 Leehyori 0
5 Boa +i
6 Lexy -i
7 Seven +i
8 Sonu +5
9 Parkjunga -2
10 Senhoyoung 0
53 Seven +4
Reproduction of Kim’s Figure 5D
Figure 5D of Kim illustrates, upon a user searching the keyword
“seven” in a search query, a window is displayed that includes a
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predetermined number of the keyword groups whose popularity ranks high,
in this case within the top ten. Kim 7:21—29; 8:45—59; Figure 5C. As
illustrated in Figure 5D of Kim, the keyword “seven” belonging to (1) the
second keyword group possesses a ranking of seven; and (2) the first
keyword group possesses a ranking of fifty-three among the keyword
groups. Although the ordering of keyword “seven” is based on comparing
popularity ranks among the first and second keyword groups, the popularity
ranks among the first and second keyword groups are search results of one
keyword “seven” in the search query. Therefore, because Kim’s search
query possesses one keyword “seven” in the search query, we disagree with
the Examiner that Kim teaches or suggests ordering of a plurality of
keywords included in a search query and, consequently, cannot teach or
suggest ordering those keywords in the manner specifically recited.
Accordingly, we agree with Appellants (App. Br. 9; Reply Br. 2) that the
Examiner erred in finding that Kim teaches or suggests “automatically
ordering the plurality [of] keywords included in the formulated search query
. . . wherein the ordering is based on comparing a” first keyword’s
importance rank to a second keyword’s importance rank, as recited in claim
1. Because the Examiner’s rejection is premised on that finding, we are
persuaded that the Examiner erred in rejecting (1) independent claim 1, (2)
independent claims 11 and 21 which recite commensurate limitations, and
(3) dependent claims 2—10, 12—20, and 22 for similar reasons. Because this
issue is dispositive, we need not address Appellants’ other associated
arguments.
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NEW GROUND OF REJECTION
We enter a new ground of rejection of claim 22 under 35 U.S.C.
§ 112, second paragraph, pursuant to our authority under 37 C.F.R.
§ 41.50(b).
The patent statute requires that a claim “particularly point[] out and
distinctly claim[] the subject matter which the applicant regards as [the]
invention.” 35 U.S.C. § 112, second paragraph. The primary purpose of the
definiteness requirement is to ensure that the claims are written in such a
way that they give notice to the public of the extent of the legal protection
afforded by the patent, so that interested members of the public, e.g.,
competitors of the patent owner, can determine whether or not they infringe.
All Dental Prodx, LLC v. Advantage Dental Prods., Inc., 309 F.3d 11 A, 779—
80 (Fed. Cir. 2002). Every word or phrase used in a claim must have a clear
meaning. 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’”). As such, a claim is invalid for indefmiteness if a person of
ordinary skill in the art would not understand the scope of the claim, when
the claim is read in light of the specification. See Allen Eng’g Corp. v.
BartellIndus., Inc., 299 F.3d 1336, 1348 (Fed. Cir. 2002).
Claim 22 recites “mapping a plurality of patent claims to the patent
concept includes ranking the search results according to a previous order of
keywords or other criteria.” The phrase “other criteria” adds ambiguity to
the claim. When we consider this language in light of Appellants’
Specification, we are uncertain as to what additional elements included in
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the ranking is “other criteria.” Therefore, the phrase “other criteria” renders
claim 22 indefinite.
DECISION
For the above reasons, the Examiner’s decision to provisionally reject
claims 1—21 on the ground of non-statutory obviousness-type double
patenting is affirmed, but the Examiner’s decision to reject claims 1—22
under 35 U.S.C. § 103(a) is reversed.
We enter a new ground of rejection for claim 22 under 35 U.S.C.
§112, second paragraph 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
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.
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(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.
TIME TO RESPOND
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).
AFFIRMED-IN-PART
37 C.F.R, § 41.50(b)
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