11729479 (P.T.A.B. Aug. 25, 2014)

Ex Parte Milton et al

Patent Trial and Appeal BoardAug 25, 2014

11729479 (P.T.A.B. Aug. 25, 2014)

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. 11/729,479 03/29/2007 Harold W. Milton JR. 35322-00008 5653 59582 7590 08/26/2014 DICKINSON WRIGHT PLLC 2600 WEST BIG BEAVER ROAD SUITE 300 TROY, MI 48084-3312 EXAMINER LONG, FONYA M ART UNIT PAPER NUMBER 3689 MAIL DATE DELIVERY MODE 08/26/2014 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. MILTON JR., and JACOB ALLEN ____________ Appeal 2012-003024 Application 11/729,479 Technology Center 3600 ____________ Before ST. JOHN COURTENAY III, CAROLYN D. THOMAS, and JEFFREY S. SMITH, Administrative Patent Judges. THOMAS, Administrative Patent Judge. DECISION ON APPEAL Appellants seek our review under 35 U.S.C. § 134(a) of the Examiner finally rejecting claims 1–22, all the claims pending in the application. We have jurisdiction over the appeal under 35 U.S.C. § 6(b). We AFFIRM. The present invention relates generally to a method for preparing a patent application by inserting key explanations/disclaimers into an omnibus form paragraph in response to keys being found in the claims. See Abstract. Appeal 2012-003024 Application 11/729,479 2 Claim 1 is illustrative: 1. A method of preparing a patent application including a CLAIMS section presenting at least one claim having a claim style with a computer program comprising the steps of; presenting an omnibus form paragraph preceding the CLAIMS section, storing a key identifying the claim style, storing a key explanation corresponding to the key describing the claim style identified by the key, and characterized by, scanning at least one claim to detect the presence of the key, and identifying the claim style of at least one claim in response to detecting the presence of the key, and automatically editing the omnibus form paragraph by inserting in the omnibus form paragraph the key explanation corresponding to the claim style identified by the key in response to identifying the claim style of at least one claim. Appellants appeal the following rejections: R1. Claims 1–22 are rejected under 35 U.S.C. § 112, first paragraph, as failing to comply with the written description requirement; and R2. Claims 1–22 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Petruzzi (US 6,049,811, Apr. 11, 2000) and Berstis (US 6,708,311 B1, Mar. 16, 2004). ANALYSIS Rejection under 35 U.S.C. § 112, first paragraph Issue 1: Did the Examiner err in finding that the recited “claim style” is not describe in the written description? Appeal 2012-003024 Application 11/729,479 3 Appellants contend “those having ordinary skill in the art are aware of different claim drafting styles . . . method claims, apparatus claims, Jepson claims . . .” (App. Br. 4). The Examiner finds that “the written description simply discloses the concept of claim style. However, . . . [t]he written description fails to disclose what is included or excluded from being considered to be ‘claim style’” (Ans. 7). We agree with the Examiner. In order to satisfy the written description requirement, “the [original] specification must describe an invention understandable to that skilled artisan and show that inventor actually invented the invention claimed.” Ariad Pharms., Inc. v. Eli Lilly and Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010)(en banc). “[T]he test for sufficiency is whether the disclosure of the application relied upon reasonably conveys to those skilled in the art that the inventor had possession of the claimed subject matter as of the filing date.” Id. (citations omitted). Our reviewing court guides it 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. Lockwood v. American Airlines, Inc., 107 F.3d 1565, 1572 (Fed. Cir. 1997) (quoting Jepson v. Coleman, 314 F.2d 533, 536 (CCPA 1963)). See also Ariad at 1352. (“[W]e have repeatedly stated that actual ‘possession’ or reduction to practice outside of the specification is not enough. Rather, . . . it is the specification itself that must demonstrate possession.”). Here, Appellants merely direct our attention to what those having ordinary skill in the art would be aware of, rather than what is expressly Appeal 2012-003024 Application 11/729,479 4 disclosed in their Specification. A rejection under 35 U.S.C. § 112, first paragraph looks to the original Specification for support, not what was known by one of ordinary skill in the art. We fail to find, and Appellants have failed to point out, any written description explaining the claimed “claim style.” Instead, the portions of the Specification pointed out by Appellants (see App. Br. 4) merely discloses “providing alternatives in drafting the claims and automatically varying the omnibus paragraph in response to the style” (Spec. ¶ 7). However, we find that such a disclosure falls short of showing possession of the “claim style” so that it is understandable to the skilled artisan. Thus, based on the record before us, we are not persuaded of Examiner error regarding the 35 U.S.C. § 112, first paragraph rejection. Accordingly, we sustain the Examiner’s rejection of claims 1–22 under 35 U.S.C. § 112, first paragraph (written description). Rejection under 35 U.S.C. § 103(a) Issue 2: Did the Examiner err in finding that the combined teachings of Petruzzi and Berstis, particularly Berstis, teaches and/or suggests a key identifying a style of the claim? Appellants contend that Petruzzi “fails to teach any method for identifying the style of claims being drafted or automatically editing the specification of an application in response to identifying the claim styles being used” (App. Br. 5). Appellants further contend: Because the glossary terms in the Berstis ‘311 patent fail to identify anything about the underlying document, let alone identifying a claim style, the Berstis ‘311 patent does not disclose the steps of storing a Appeal 2012-003024 Application 11/729,479 5 key identifying the claim style or identifying the claim style in response to detecting the presence of the key. (id.). Because the limitation at issue lacks adequate written description (see R1 above), a question arises as to how much patentable weight, if any, should be given to the limitation at issue, i.e., a claim style. Assuming arguendo the limitation at issue might be given patentable weight by our reviewing court, we are persuaded by Appellants’ contentions. The sections of Berstis cited by the Examiner (Ans. 8–9) disclose that Berstis scans a document and locates terms contained therein (see Abstract), the terms located/stored in Berstis are misspelled or unidentifiable words found by a spell checking tool (id.; see also col. 1, ll. 56–59). However, the Examiner has not established that such misspelled/unidentifiable terms in Berstis identify a claim style. While the Examiner has offered a definition of claim style (see Ans. 27), i.e., the way in which something is said, done, expressed, or performed, the Examiner has not explained how Berstis’ misspelled/unidentifiable terms encompass the proffered definition. Although Berstis allows the user to enter the definition of the new term (see col. 16, ll. 1–5), the Examiner also has not shown that the entered definitions relate to a claim style. Furthermore, Appellants’ invention stores a key and defines the key as at least one of “‘characterized by,’” “‘said,’” and reference numerals (Spec. ¶ 10). We note that the Examiner has not shown that any of the aforementioned keys would be found by Berstis’ spell checking tool because such aforementioned keys would not be recognized as misspelled or unidentifiable terms. Appeal 2012-003024 Application 11/729,479 6 Without more of an explanation from the Examiner to correlate the above-noted teachings of Berstis to the claimed “storing a key identifying the claim style,” it is unclear how the cited portions of Berstis correspond to the above-noted limitation, as recited in claim 1. At best, Berstis stores unidentifiable terms and the definition of the terms themselves (see col. 16, ll. 1–5). In view of the above discussion, we are of the opinion that the proposed combination of references set forth by the Examiner does not support the obviousness rejection. We, accordingly, do not sustain the rejection of independent claims 1, 9, 10, and 22, or the rejection of claims 2– 8 and 11–21 which are dependent thereon. DECISION1 We affirm the Examiner’s § 112, first paragraph rejection, and we reverse the Examiner’s § 103(a) rejection. Because we affirm at least one ground of rejection with respect to each claim on appeal, the Examiner’s decision is affirmed. See 37 C.F.R. 41.40(a)(1). No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED gvw 1 In the event of further prosecution, we leave it to the Examiner to consider whether the claims rejected under R1 should also be rejected under 35 U.S.C. § 112, second paragraph, as being indefinite.