Ex Parte Melkote et al

Patent Trial and Appeal Board

Jun 27, 2016

13679419 (P.T.A.B. Jun. 27, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/679,419 11/16/2012
28395 7590 06/29/2016
BROOKS KUSHMAN P.C./FG1L
1000 TOWN CENTER
22NDFLOOR
SOUTHFIELD, MI 48075-1238
FIRST NAMED INVENTOR
Anuradha Narasimhaswamy Melkote
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.
ANAQ0102PUS1 1067
EXAMINER
LE,CHAUD
ART UNIT PAPER NUMBER
2493
NOTIFICATION DATE DELIVERY MODE
06/29/2016 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):
docketing@brookskushman.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ANURADHA NARASIMHASW AMY MELKOTE, DAMIAN
PORCARI, and KELLY ANNE SLANK
Appeal2015-002139
Application 13/679,419
Technology Center 2400
Before JEAN R. HOMERE, CARLA M. KRIVAK, and ERIC B. CHEN,
Administrative Patent Judges.
CHEN, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) from the final rejection of
claims 1-5, 8-11, and 16-23. Claims 6, 7, and 12-15 have been cancelled.
(Final Act. 2.) We have jurisdiction under 35 U.S.C. § 6(b). We affirm.
STATEMENT OF THE CASE
Appellants' invention relates to an on-line invention disclosure
system. (Abstract.)
Claim 1 is exemplary:
1. A method of forming an online invention disclosure
compnsmg:
Appeal2015-002139
Application 13/679,419
by at least one processor,
forming an invention disclosure online by entering a plurality of
selected information including identification information for a
plurality of inventors;
as the plurality of selected information is entered, storing the
information in a central storage location;
prompting approval of a same version of the disclosure by all of
the inventors; and
locking the disclosure to create a locked disclosure to prevent
further editing of the disclosure after all of the inventors approve the
same version of the disclosure.
Claims 1-5, 8-11, and 16-23 stand rejected under 35 U.S.C. § 103(a)
as unpatentable over Lemble (US 5,315,504; May 24, 1994) and Takano et
al. (US 6,434,580 Bl; Aug. 13, 2002).
ANALYSIS
We are unpersuaded by Appellants' arguments (App. Br. 3--4) that the
Examiner improperly combined Lemble and Takano.
The Examiner acknowledges that Lemble does not disclose an
"invention" or "inventors," as recited in claim 1 (Final Act. 4--5) and
therefore, relies on the server computer of Takano for transmitting patent
application documents between a client computer used by an inventor and
another client computer used by a patent attorney (id. at 5). The Examiner
concludes that
it would have been obvious . . . to implement the invention of
Lemble into an invention disclosure environment, by combining
the electronic filing document approval system of Lemble with
the features of filing an invention disclosure by inventors and
patent attorneys as taught by Takano for the purpose of
conveniently preparing a patent application via a transmission
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Appeal2015-002139
Application 13/679,419
and reception of application data between the inventor and other
patent application-filing users.
(Id. (emphases omitted); see also Ans. 2-3.) We agree with the Examiner.
Lemble relates to approving "contents of electronically generated and
mailed documents." (Col. 1, 11. 5---6.) Lemble explains that when a system
user forwards a document for proper approval, "the approval path is
dynamically computed using the contents of specific data fields within the
document, and predefined approval rules" (col. 5, 11. 21-25) such that
"[o]nly an authorizer may accept (concur) or reject a document" (col. 5,
11. 29-31 ). Lemble further explains that "the document as well as any
information (e.g. functions) required for approval are not forwarded from
one approver to the next" (col. 5, 11. 44--47) and "after being processed by
the last approver, the document is forwarded automatically to a finalizing
[virtual] machine" (col. 5, 11. 33-35).
Takano relates "to a system for preparing patent specifications."
(Col. 1, 11. 8-9.) Takano explains that
An object of the present invention is to provide a system capable
of preparing data for patent application documents by the
transmission and reception of draft data via a server computer
between a client computer used by an inventor preparing the draft
data for a specification . . . and another client computer used by
patent-application-filing persons including a patent attorney
revising the draft data.
(Col. 2, 11. 1-10.)
A person of ordinary skill in the art would have recognized that
incorporating the system of Takano, which includes a server computer for
transmitting a patent specification between an inventor computer and a
patent attorney computer, with the document system of Lemble would
improve Lemble by providing it with the ability to efficiently transfer patent
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Application 13/679,419
application documents. See KSR Int? Co. v. Telejlex Inc., 550 U.S. 398, 417
(2007) ("[I]f a technique has been used to improve one device, and a person
of ordinary skill in the art would recognize that it would improve similar
devices in the same way, using the technique is obvious unless its actual
application is beyond [his or her] skill."). Thus, we agree with the Examiner
(Final Act. 5) that modifying Lemble to incorporate the system of Takano
would have been obvious.
First, Appellants argue that "Takano does not appreciate the problem
recognized by the inventors of the instant application" and "[b ]y way of
example, the inventors of the instant application have recognized that
previous on-line invention disclosure submission systems permitted X to
alter and submit (or finalize) an invention disclosure listing X and Y as
inventors without requiring Y's approval of the alteration." (App. Br. 3.)
Thus, Appellants argue, "one would expect references such as Takano ... to
also have incorporated the teachings of Lemble if indeed it would have been
obvious to do so." (Id. at 4.) Other than making a conclusory statement,
Appellants has not provided any persuasive arguments or evidence that the
omission of Lemble from Takano establishes nonobviousness or that the
Examiner failed to recognize the nature of the problem to be solved.
Arguments of counsel cannot take the place of factually supported objective
evidence. See, e.g., In re Huang, 100 F.3d 135, 139--40 (Fed. Cir. 1996).
Second, Appellants argue that "(1) modifying Takano with Lemble
does not affect how convenient Takano would be from a user's perspective
and (2) nothing in the examiner's assertions addresses whether one of
ordinary skill would have recognized that the teachings of Lemble would
supposedly improve the convenience of Takano." (App. Br. 4.) Contrary to
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Application 13/679,419
Appellants' arguments, the combination of Takano with Lemble is based on
the improvement of a similar device in the same way as in the prior art.
Moreover, Takano explains that "transmission and reception of draft data via
a server computer between a client computer used by an inventor ... and
another client computer used by patent-application-filing persons including a
patent" is a convenience. (See col. 2, 11. 1-10.)
Therefore, the Examiner has properly combined Lemble and Takano
in rejecting independent claim 1 under 35 U.S.C. § 103(a).
Accordingly, we sustain the rejection of independent claim 1 under 35
U.S.C. § 103(a). Claims 2-5 and 8-11 depend from claim 1, and Appellants
have not presented any substantive arguments with respect to these claims.
Therefore, we sustain the rejection of claims 2-5 and 8-11 under 35 U.S.C.
§ 103(a), for the same reasons discussed with respect to independent
claim 1.
Independent claims 16 and 20 recite limitations similar to those
discussed with respect to independent claim 1, and are argued for the same
reasons as claim 1. (App. Br. 5). Thus, we sustain the rejection of claims 16
and 20, as well as depend claims 17-19 and 21-23, dependent therefrom, for
the same reasons discussed with respect to claim 1.
DECISION
The Examiner's decision rejecting claims 1-5, 8-11, and 16-23 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).
AFFIRMED
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