Ex Parte Milton

Patent Trial and Appeal Board

Sep 27, 2016

13403024 (P.T.A.B. Sep. 27, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/403,024 02/23/2012
59582 7590 09/27/2016
DICKINSON WRIGHT PLLC
2600 WEST BIG BEA VER ROAD
SUITE 300
TROY, MI 48084-3312
FIRST NAMED INVENTOR
Harold W. Milton JR.
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.
35322-00020 2910
EXAMINER
RUHL, DENNIS WILLIAM
ART UNIT PAPER NUMBER
3689
MAILDATE DELIVERY MODE
09/27/2016 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte HAROLD W. MIL TON, JR.
Appeal2014-003454
Application 13/403,024
Technology Center 3600
Before ST. JOHN COURTENAY III, CAROLYN D. THOMAS, and
JEFFREYS. SMITH, Administrative Patent Judges.
THOMAS, Administrative Patent Judge.
DECISION ON APPEAL
Appellant seeks our review under 35 U.S.C. § 134(a) of the
Examiner's Final Rejection of claim 8, the only pending claim in the present
application. Claims 1-7 are canceled. See App. Br. 3. We have jurisdiction
over the appeal under 35 U.S.C. § 6(b ).
We AFFIRM.
The present invention relates generally to preparing patent
applications for multiple patent owners in a network of independent patent
agents. See Abstract.
Appeal2014-003454
Application 13/403,024
Claim 8 is illustrative:
8. A method for an inventor and patent agent to
collaborate in preparing a patent application comprising;
embedding a template setting forth sections of a
patent application in a patent computer program including a prior
art section designated Field of the Invention and Description of
the Prior Art and a summary section designated SUMMARY OF
THE INVENTION and a description section designated
DETAILED DESCRIPTION OF THE ENABLING
EMBODIMENT and a claims section designated CLAIMS,
embedding code in the computer program for
recognizing the coded phrase "characterized by" and any portion
thereof for identifying and moving limitations in subparagraphs
of the independent broad claim into different sections of the
template,
drafting a set of claims in the CLAIMS section of
the template including a first broad claim reciting at least one
supporting limitation recited in a subparagraph after the coded
phrase "characterized by" and at least one concluding limitation
recited in subparagraphs before the coded phrase "characterized
by" and successive claims dependent on the first broad claim
with each dependent claim reciting an additional limitation and
an independent picture claim containing in subparagraphs all of
the same verbiage used in the first broad and dependent claims,
embedding a code in the computer program for
automatically reconciling the preamble of the picture claim with
the Field of the Invention,
operating the patent computer program to copy all
of the sub-paragraphs of the picture claim and paste the sub
paragraphs of the picture claim into respective paragraphs of the
description section DETAILED DESCRIPTION OF THE
ENABLING EMBODIMENT of the template,
operating the patent computer program to recognize
the coded phrase "characterized by" and to copy the at least one
supporting limitation recited before the coded phrase of the first
broad claim and paste the at least one supporting limitation into
the section Description of the Prior Art of the template,
operating the patent computer program to recognize
the coded phrase "characterized by" and copy the at least one
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Application 13/403,024
concmamg imutation recnea after the coaea phrase
"characterized by" of the first broad claim and paste the at least
one concluding limitation into the summary section SUMMARY
OF THE INVENTION of the template,
operating a data processing center and establishing
a link over the internet between an inventor and an patent agent
both independent of the processing center,
storing and controlling the patent computer program
with the data processing center,
receiving at the processing center via the internet a
request for a set of claims from an inventor,
receiving at the processing center via the internet an
invention disclosure including the results of any patentability
search from the inventor,
assigning and storing an inventor identification to
and with successive inventors,
maintaining an inventor data base on a computer by
the processing center including a list of inventors with the
associated inventor identification,
receiving at the processing center a payment via the
internet from the inventor and acceptance of a contract between
the inventor and the processing center in which the processing
center agrees to provide a set of claims and access to a version of
the patent computer program for use by the inventor for final
editing of the application,
accessing a patent office classification system
dividing technology by numbers into classes and sub-classes of
technology and indicating the subject matter to be found in and
excluded from a class and sub-class,
assigning each invention disclosure received from
an inventor an initial subject matter classification number and
storing the initial subject matter classification number with the
inventor identification in a computer at the processing center,
maintaining a conflict data base on a computer by
the processing center including the initial subject matter
classification number associated with each inventor
identification,
maintaining a patent agent data base on a computer
by the processing center including a patent agent identification
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Application 13/403,024
and an association identification for each patent agent to identify
patent agents associated in and with the same business
association,
inserting a subject matter classification number with
each patent agent identification in the patent agent data base for
each set of claims prepared by that patent agent for the
processing center,
inserting a subject matter classification number with
each association identification in the patent agent data base for
each set of claims prepared by every patent agent identification
in the same association of patent agents,
selecting a patent agent from the patent agent data
base for processing the inventor disclosure and preparing the set
of claims,
conducting a conflict check for that selected patent
agent by scanning the patent agent identification and association
identification in the patent agent data base for a match between
the initial subject matter classification number of the invention
disclosure and all of the patent agent subject matter classification
numbers assigned to the patent agent and the patent agent's
association to avoid a subject matter conflict between inventors,
sending from the processing center the invention
disclosure to the selected patent agent having no subject matter
conflict with a request for a set of claims,
accepting a contract between the processing center
and the selected patent agent to prepare a set of claims based
upon the invention disclosure,
receiving from the selected patent agent the set of claims
including the first broad claim reciting the at least one concluding
limitation recited after the coded phrase "characterized by" and
the at least one supporting limitation recited before the coded
phrase "characterized by" and the successive claims dependent
on the first broad claim and the independent picture claim
containing all of the same verbiage used in the first broad and
dependent claims and partial sections of the patent application
including the Description of the Prior Art section of the template
reciting the at least one supporting limitation and the
SUMMARY OF THE INVENTION section of the template
reciting the at least one concluding limitation and the
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Application 13/403,024
DETAILED DESCRIPTION Ul:' l ttb ENABLING
EMBODIMENT section of the template reciting the independent
picture claim containing all of the same verbiage used in the
broad and dependent claims and a patent agent subject matter
classification number,
reconciling the initial subject matter classification
number associated with each inventor identification to agree with
the patent agent subject matter classification number from the
patent agent,
providing the inventor an inventor-computer word
processmg program,
sending via the internet from the processing center
the set of claims and partial sections of the patent application in
and with the inventor-computer word processing program,
operating the inventor-computer word processing
program by the inventor to apply a reference numeral to an
element and automatically associate that reference numeral with
all occurrences of the element in the description section and
format the entire application to predetermined requirements and
complete and draft the advantages and abstract sections,
embedding a computer coded connection between
the inventor-computer word processing program and the set of
claims and partial sections sent to the inventor for preventing use
of the inventor-computer word processing program with
documents other than the sent set of claims and partial sections
of the patent application, and
the embedding a computer coded connection being
further defined as disabling the use of the inventor-computer
word processing program in response to the set of claims being
changed more than a predetermined percentage.
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Application 13/403,024
• .,. .,. , .,. , .,. ro .,. .,. • • , • 1
Appeuam appeals me rouowmg reJecuons:,
RI. Claim 8 is rejected under 35 U.S.C. § l 12(a) or 35 U.S.C. § 112
(pre-AIA), first paragraph, as failing to comply with the written description
requirement (Final Act. 2-5);
R2. Claim 8 is rejected under 35 U.S.C. § l 12(b) or 35 U.S.C. § 112
(pre-AIA), second paragraph, as being indefinite for failing to particularly
point out and distinctly claim the subject matter which the inventor regards
as the invention (id. at 5---6); and
R3. Claim 8 is rejected under 35 U.S.C. § 103(a) as being
unpatentable over Grainger (US 2002/0059076 Al, May 16, 202), Cauchon
(US 2002/0095378 Al, July 18, 2002), Allen (US 2007/0136321 Al, June
14, 2007), Evans (US 7,496,767 B2, Feb. 24, 2009), Lim (US 2007/0156670
Al, July 5, 2007), and Linda Haller, Practice Point: Patent attorneys and
conflict of interest, J. Intell. Prop. Law & Practice, 407-14 (2009) (see id. at
41---62).
ANALYSIS
Rejection under 35 U.S.C. § 112(a) or§ 112 (pre-AJA), first paragraph
Issue 1: Did the Examiner err in finding that the claims fail to comply
with the written description requirement?
The Examiner finds "[i]t is not shown by [Appellant] that he was
actually in possession of an invention that can operate as claimed. There is
no guidance from applicant at all on how the [Appellant] ... is embedding a
1 The Examiner withdraws the rejection of claim 8 under§ 112, first
paragraph that deals with (1) the recitation to "only" in the claims and (2)
the recitation to the inventor drafting the advantages section and Abstract
section (see Ans. 2).
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computer code that can disable the program ... This is not considered to be
sufficient to show possession of an invention as claimed" (Final Act. 2)
(emphasis added).
In response, Appellant contends that "one of ordinary skill in the art
would have at his disposal any number of well-known computer
programming processes and methods to implement the general steps" (App.
Br. 6). Appellant further directs our attention to various extrinsic U.S.
Patents and U.S. Publications that illustrate known computer programming
processes that are obviously available (id.). Although Appellant describes
various general usage software components, such as program modules,
Appellant fails to direct our attention to any guidance in Appellant's own
Specification, in the form of examples or structures, which describe how
these components would be connected and used to actually perform the
claimed functions.
Importantly, Appellant cannot rely upon documents extrinsic to the
original Specification as evidence to show possession. Appellant improperly
relies upon what one of ordinary skill in the art would purportedly have at
their disposal, i.e., knowledge found outside of the Specification. However,
Appellant must rely upon the supporting descriptions in his Specification, as
originally filed. Knowledge found outside of Appellant's original
Specification is insufficient to demonstrate possession of the claimed subject
matter.
Specifically, our reviewing court guides that the written description
"must clearly allow persons of ordinary skill in the art to recognize that [the
inventor] invented what is claimed." Ariad Pharm., Inc. Eli Lilly & Co., 598
F.3d 1336,1351 (Fed. Cir. 1020) (en bane) (citation and quotations omitted).
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The test is whether the disclosure "conveys to those skilled in the art that the
inventor had possession of the claimed subject matter as of the filing date."
Id. "[A]ctual 'possession' or reduction to practice outside of the
specification is not enough. Rather, . . . it is the specification itself that
must demonstrate possession." Id. at 1352; see also PowerOasis, Inc. v. T-
Mobile USA, Inc., 522 F.3d 1299, 1306--07 (Fed. Cir. 2008) (explaining that
§ 112, i-f 1 "requires that the written description actually or inherently
disclose the claim element"). "[I]t is not a question of whether one skilled in
the art might be able to construct the patentee's device from the teachings of
the disclosure . . . Rather, it is a question whether the application
necessarily discloses that particular device ... A description which renders
obvious the invention for which an earlier filing date is sought is not
sufficient." Lockwoodv. American Airlines, Inc., 107 F.3d 1565, 1572 (Fed.
Cir. 1997) (quoting Jepson v. Coleman, 314 F.2d 533, 536 (CCPA 1963))
(emphasis added).
This reasoning is applicable here. Because Appellant fails to direct
our attention to any disclosure in his Specification that demonstrates
possession, we find Appellant's contentions are insufficient to rebut the
Examiner's findings due to a lack of evidence.
Therefore, on this record, we are not persuaded the Examiner erred.
Accordingly, we sustain the rejection of claim 8 under 35 U.S.C. § 112(a) or
§ 112 (pre-AIA), first paragraph.
Rejection under 35U.S.C.§112(b) or§ 112 (pre-AJA), second paragraph
Issue 2: Did the Examiner err in finding that the claims are
indefinite?
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Application 13/403,024
Appellant contends that "Claim 8 was amended in an effort to
overcome the Examiner's rejection" and reference paragraph 27 of the
Specification to show therefor (App. Br. 9).
The Examiner finds that "paragraph 027 provides support for what is
claimed, but the claim language itself does not have proper antecedent basis"
(Ans. 8). We agree with the Examiner.
We find that Appellant's proffered amendment to claim 8 does not
overcome the rejection because the phrase "the advantages and abstract
sections" lacks any antecedent basis. This rejection is appropriate so as to
remove unnecessary ambiguity during prosecution. See },);; parte Miyazaki,
89 USPQ2d 1207, 1212 (BP AI 2008) (precedential) (during prosecution, the
threshold standard of ambiguity for indefiniteness is lower than it might be
during litigation of an issued patent). Accordingly, we affirm the rejection
of claim 8.
Rejection under 35 U.S.C. § 103(a)
Issue 3: Did the Examiner err in finding that the combined prior art
teach or suggest the various limitations, as set forth in claim 8?
Appellant contends that "[a]t best [the inventor adding additional
disclosure] results in suggestions for the patent preparer to incorporate into
the application under professional skill, which adds additional expense ... "
(App. Br. 10). In response, the Examiner notes that "[t]his argument is .. .
not commensurate with the scope of the claims . . . . Nothing is claimed
about maintaining professional integrity and quality while saving those extra
expenses" (Ans. 9-10). We agree with the Examiner.
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Although Appellant contends that the prior art teachings would add
additional expense, we agree with the Examiner that claim 8 does not recite
anything about "additional expense" or minimizing cost (see claim 8).
We emphasize that the claims measure the invention. See SRI Int 'l v.
Matsushita Elec. Corp. of Am., 775 F.2d 1107, 1121 (Fed. Cir. 1985) (en
bane). During prosecution before the US PTO, claims are to be given their
broadest reasonable interpretation, and the scope of a claim cannot be
narrowed by reading disclosed limitations into the claim. See In re Morris,
127 F.3d 1048, 1054 (Fed. Cir. 1997); In re Zletz, 893 F.2d 319, 321 (Fed.
Cir. 1989); In re Prater, 415 F.2d 1393, 1404---05 (CCPA 1969). Here, the
scope of claim 8 does not require maintaining professional integrity and
quality while saving those extra expenses, as suggested by Appellant.
Appellant further contends:
The steps in the claims are much more specific than a mere
review by the inventor; the steps require the inventor to edit but
limit the amount of editing to preserve professional integrity ...
disabling the word processing program in response to the set of
claims from the patent agent being changed more than a
predetermined percentage ....
(App. Br. 11). Appellant also contends that "the 'draft patent applications'
of Grainger fall far short of disclosing each of the requisite elements ...
Grainger is simply silent with regard to the exact content of the 'draft patent
applications"' (App. Br. 12) and "the Examiner relies solely on Grainger to
disclose these limitations" (id. at 13).
In response, the Examiner "reminds the [A ]ppellant that Grainger has
been modified in view of Allen . . . . Appellant is mis-characterizing the
rejection of record by arguing Grainger alone" (Ans. 13-14) and that
"Grainger is not solely relied upon for teaching of the claimed 'specific form
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or layout' because this is taught by Allen" (id. at 16). We agree with the
Examiner.
We refer to, rely on, and adopt the Examiner's findings and
conclusions set forth in the Answer. Our discussions here will be limited to
the following points of emphasis.
As highlighted by the Examiner, and we agree, Appellant's "argument
appears to be a general allegation that is not addressing the prior art
combination as the [E]xaminer has set forth" (see Ans. 9) because the
Examiner is using both Grainger and Evans to teach and/or suggest the
argued limitations (see Final Act. 17-20 and 41---62; see also Ans. 10-17).
Thus, Appellant's arguments do not take into account what the
collective teachings of the prior art would have suggested to one of ordinary
skill in the art and is therefore ineffective to rebut the Examiner's prima
facie case of obviousness. See In re Keller, 642 F.2d 413, 425 (CCPA 1981)
The test for obviousness is not whether the features of a
secondary reference may be bodily incorporated into the
structure of the primary reference; nor is it that the claimed
invention must be expressly suggested in any one or all of the
references. Rather, the test is what the combined teachings of
the references would have suggested to those of ordinary skill in
the art.
(Citations omitted). This reasoning is applicable here.
For example, Grainger discloses the "circulation of draft patent
applications to inventors and managers for review and comment" (ii 148),
and that "the invention disclosure may be locked down such that it cannot be
edited after it has been finalized and witnessed" (ii 153). Evans discloses a
document protection method that allows documents to be locked so as not to
be accessed by unauthorized persons (see 1 :38--48; 5:7-27). Allen discloses
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a method of preparing a patent application by running a software macro (see
Abstract).
Appellant's contentions fail to address what the combined teachings
of the references would have suggested to those of ordinary skill in the art,
and is, thus, ineffective to rebut the Examiner's prima facie case of
obviousness.
In view of the above discussion, since Appellant has not demonstrated
that the Examiner erred in finding the argued limitations in the collective
disclosure of at least Grainger, Allen, and Evans, the Examiner's 35 U.S.C.
§ 103(a) rejection of independent claim 8 is sustained.
DECISION
We affirm the Examiner's 35 U.S.C. § 112(a) or 35 U.S.C. § 112 (pre-
AIA), first paragraph, rejection RI.
We affirm the Examiner's 35 U.S.C. § 112(b) or 35 U.S.C. § 112
(pre-AIA), second paragraph, rejection R2.
We affirm the Examiner's§ 103(a) rejection R3.
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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