Ex Parte Narasimhaswamy Melkote et al

Patent Trial and Appeal Board

Sep 28, 2016

12950066 (P.T.A.B. Sep. 28, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/950,066 11/19/2010
28395 7590 09/30/2016
BROOKS KUSHMAN P,CJFG1L
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.
ANAQ0103PUS1 7013
EXAMINER
MOONEYHAM, JANICE A
ART UNIT PAPER NUMBER
3689
NOTIFICATION DATE DELIVERY MODE
09/30/2016 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 and
KELLY ANNE SLANK
Appeal2014-008648
Application 12/950,0661
Technology Center 3600
Before HUBERT C. LORIN, BRUCE T. WIEDER, and
TARA L. HUTCHINGS, Administrative Patent Judges.
LORIN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Anuradha N arasimhaswamy Melkote et al. (Appellants) seek our
review under 35 U.S.C. § 134 of the final rejection of claims 2-20. We have
jurisdiction under 35 U.S.C. § 6(b).
SUMMARY OF DECISION
We AFFIRM.
1 The Appellants identify Anaqua, Inc. as the real party in interest. App. Br.
1.
Appeal2014-008648
Application 12/950,066
THE INVENTION
Claim 2, reproduced below, is illustrative of the subject matter on
appeal.
2. A method of forming an invention disclosure comprising:
at one or more computers,
receiving a pre-patent application invention disclosure
into a disclosure system,
storing the pre-patent application invention disclosure in
a database,
obtaining from each of a plurality of inventors an
approval of a same version of the pre-patent application
invention disclosure,
locking the pre-patent application invention disclosure to
prevent modification in response to receiving the approvals, and
associating with the pre-patent application invention
disclosure an approval log indicating that each of the inventors
has reviewed and approved the same version of the pre-patent
application invention disclosure.
THE REJECTIONS
The Examiner relies upon the following as evidence of
unpatentability:
Dziewit
Lee
Regarding claim 3:
us 4,981,370
US 7,016,851 Bl
Jan. 1, 1991
Mar. 21, 2006
Examiner takes Official Notice that it is old and well
known in the art of intellectual property to assign a patent
application number (i.e. docket number) for patent application
that are submitted to the patent offices. For example, the
USPTO, EPO, and JPO assign patent application numbers for
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Application 12/950,066
patent applications that are submitted to their corresponding
offices.
(Final Act. 11)
Regarding claims 11 and 12:
Examiner takes Office Notice that it is old and well known
in the intellectual property art to notify the inventors of events
regarding the prosecution/examination of a patent application
such as an Office Action being mailed or the date in which an
application went abandoned (i.e. a date closed). For example,
the United States Patent and Trademark Office notifying the
inventors of various events such as a petition filing decision, the
mailing of an Office Action, or notification of the date in which
an application went abandoned.
(Id. at 13)
Regarding claims 14 and 20:
Examiner takes Official Notice that it is old and well
known in the art of intellectual property to assign a patent
application number (i.e. docket number) for patent application
that are submitted to the patent offices. For example, the
USPTO, EPO, and JPO assign patent application numbers for
patent applications that are submitted to their corresponding
offices.
(Id. at 14 and 15-16, respectively) [Collectively, Official Notice]
Regarding claim 8:
MPEP discloses the method of examining patent applications
with the concept of receiving a classification code associated
with the pre-patent application invention disclosure into the
disclosure system (Section 903.08; 903.08(a); 903.08(b);
903. 08( e ), discloses receiving a classification regarding a patent
application (i.e. disclosure information) wherein a class and
subclass (i.e. classification code) is assigned to the patent
application).
(Final Act. 16-17)
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Application 12/950,066
And, regarding claims 9 and 10:
MPEP discloses the method of exammmg patent
applications with the concept of in response to receiving the
classification code, assigning a docket attorney/patent evaluator
to the pre-patent application invention disclosure (Section
903.08; 903.08(a); 903.08(b); 903.08(e), discloses assigning an
examiner to the patent application in response to patent
application being classified. Examiner asserts the type of person
being assigned to the disclosure information holds little, if any,
patentable weight to the method claim. Examiner asserts the type
of person being assigned to the disclosure information fails to
explicitly or implicitly alter the method step of assigning a person
to the disclosure information. Examiner asserts the method step
of assigning a person to the disclosure information would be
performed the same regardless of the type of person.).
(Id. at 17) [Collectively, MPEP]
The following rejections are before us for review:
1. Claims 2-20 are rejected under 35 U.S.C. § 112(a) as failing to
comply with the written description requirement.
2. Claims 2, 13, and 19 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Lee and Dziewit.
3. Claims 3-7, 11, 12, 14-18, and 20 are rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Lee, Dziewit, and Official Notice.
4. Claims 8-10 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Lee, Dziewit, and MPEP.
ISSUES
Did the Examiner err in rejecting claims 2-20 under 35 U.S.C.
§ 112(a) as failing to comply with the written description requirement?
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Application 12/950,066
Did the Examiner err in rejecting 2, 13, and 19 under 35 U.S.C.
§ 103(a) as being unpatentable over Lee and Dziewit; claims 3-7, 11, 12,
14--18, and 20 under 35 U.S.C. § 103(a) as being unpatentable over Lee,
Dziewit, and Official Notice; and, claims 8-10 under 35 U.S.C. § 103(a) as
being unpatentable over Lee, Dziewit, and MPEP?
FINDINGS OF FACT
We rely on the Examiner's factual findings stated in the Answer.
Additional findings of fact may appear in the Analysis below.
ANALYSIS
The rejection of claims 2-20 under 35 U.S. C. §l l 2(a) as failing to comply
with the written description requirement.
The Appellants argued claims 2-20 as a group. See App. Br. 3. We
select claim 2 as the representative claim for this group, and the remaining
claims 3-20 stand or fall with claim 1. 37 C.F.R. § 41.37(c)(l)(iv).
The Appellants do not appear to dispute the Examiner's finding that
the claim phrase "pre-patent application invention disclosure" was not
described in the application at the time of filing. See Final Act. 3.
The Appellants argue instead that said phrase would have been
obvious given that "'[t]ypically, invention disclosures are searched prior to
preparing a patent application therefrom.' Application, p. 3, 11. 8-10
(emphasis added)." App. Br. 3. The Appellants point out that "invention
disclosures are formed or created prior to corresponding patent
applications." Id. at 3.
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The argument is unpersuasive. "[T]he specification must contain an
equivalent description of the claimed subject matter." Lockwood v. Am.
Airlines, Inc., 107 F.3d 1565, 1572 (Fed. Cir. 1997). The Specification does
not define "invention disclosures" in such a way that one of ordinary skill
would interpret them to be equivalent to "pre-patent application invention
disclosures." The Specification does not define "invention disclosures" as
being documents which are searched prior to preparing a patent application
or formed/created prior to patent applications. The evidence does not
support finding the originally-filed "invention disclosures" to be equivalent
to the later-claimed "pre-patent application invention disclosures." In effect,
the Appellants argue that the claim phrase "pre-patent application invention
disclosure" would have been obvious given "invention disclosures."
However, "[ o ]ne shows that one is "in possession" of the invention by
describing the invention, with all its claimed limitations, not that which
makes it obvious." Id.
Accordingly, the rejection is sustained.
The rejection of claims 2, 13, and 19 under 35 U.S. C. § 103 (a) as being
unpatentable over Lee and Dziewit.
The Appellants argued claims 2, 13, and 19 as a group. See App. Br.
3-5. We select claim 2 as the representative claim for this group, and the
remaining claims 13 and 19 stand or fall with claim 1. 37 C.F.R.
§ 41.37(c)(l)(iv).
Claim 2 presents steps involving using a conventional "disclosure
system" and a "database." They are used to perform "receiving" and
"storing" certain information, respectively; that is, but for the type of
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Application 12/950,066
information received and stored, the claimed "disclosure system" and
"database" are employed consistent with their known functions.
Claim 2 also includes "obtaining," "locking," and associating" steps,
but these steps are not connected to any device. They are reasonably
broadly construed to cover mental steps.
The Appellants argue that the Examiner has not established a prima
facie case of obviousness. App. Br. 3. We disagree.
Setting aside the Appellants' arguments that the claimed subject
matter overcomes problems associated with "on-line invention disclosure
submission systems" (id.) which are not commensurate in scope with what is
claimed (which is much broader than argued), we agree with the Examiner's
assessment that "[a]ny differences related merely to the meaning and
information conveyed through labels (i.e. the type of invention disclosure)
which does not explicitly alter or impact the steps of the method does not
patentably distinguish the claimed invention from the prior art in terms of
patentability." Final Act. 5 (reproduced in App. Br. 3.)
There is insufficient evidence that using the "disclosure system" and
"database" as claimed is functionally affected by the information being a
"pre-patent application invention disclosure." One of ordinary skill in the
art would not expect "pre-patent application invention disclosure"
information to impact their performance in practicing their common
functions of "receiving" and "storing" information, respectively. It is
reasonable to characterize the information related to a "pre-patent
application invention disclosure" as printed matter. In other words, they
amount to nonfunctional descriptive material. "[N]on-functional descriptive
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material, being useful and intelligible only to the human mind, is given no
patentable weight." Ex parte Graf, Appeal 2012-003941, 2013 WL
3873066, at *4 (PTAB July 23, 2013) (non-precedential), aff'd, In re Graf,
585 F. App'x. 1012 (Fed. Cir. 2014) (non-precedential); cf In re DiStefano,
No. 2015-1453 (Fed. Cir. 2015); as explained in In re Xiao, 462 F. App'x.
947, 950-52 (Fed. Cir. 2011) (non-precedential):
[T]he Board did not create a new "mental distinctions" rule in
denying patentable weight . . . . On the contrary, the Board
simply expressed the above-described functional relationship
standard in an alternative formulation---consistent with our
precedents-when it concluded that any given position label's
function . . . is a distinction "discemable only to the human
mind." Board Decision at 6; see In re Lowry, 32 F.3d 1579, 1583
(Fed. Cir. 1994) (describing printed matter as "useful and
intelligible only to the human mind") (quoting In re Bernhart,
417 F.2d 1395, 1399 (CCPA 1969)).
"The rationale behind this line of cases is preventing the indefinite patenting
of known products by the simple inclusion of novel, yet functionally
unrelated limitations." King Pharms., Inc. v. Eon Labs, Inc., 616 F.3d 1267,
1279 (Fed. Cir. 2010). Given that printed matter is not given patentable
weight, the "pre-patent application invention disclosure" claim limitations
- as a distinction between the Appellants' method and that of references -
are not patentably consequential.
Also, as to the argued-over "obtaining," "locking," and "associating"
steps in claim 2, we again point out that they are not required to be
performed via a device. As claimed, they add to the remaining claimed
subject matter nothing more than steps which could be performed in the
human mind. This sort of distinction over the prior art, notwithstanding they
relate to ensuring approved versions of a "pre-patent application invention
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Application 12/950,066
disclosure," is one that is "useful and intelligible only to the human mind."
Lowry, 32 F.3d at 1583 (citing In re Bernhart, 417 F.2d 1395, 1399 (Fed.
Cir. 1969) ). Such a distinction carries no patentable weight. As already
noted, "[t]he rationale behind this line of cases is preventing the indefinite
patenting of known products by the simple inclusion of novel, yet
functionally unrelated limitations." King Pharms., Inc., 616 F.3d at 1279.
For the foregoing reasons, the Appellants' arguments are unpersuasive
as to error in the rejection. Accordingly, the rejection is sustained.
The rejection of claims 3-7, 11, 12, 14-18, and 20 under 35 U.S.C. § 103(a)
as being unpatentable over Lee, Dziewit, and Official Notice.
The rejection of claims 8-10 under 35 U.S. C. §103 (a) as being unpatentable
over Lee, Dziewit, and MPEP.
These rejection have not been challenged in any substantive way. See
App. Br. 5. Accordingly, they are affirmed.
CONCLUSIONS
The rejection of claims 2-20 under 35 U.S.C. § 112(a) as failing to
comply with the written description requirement is affirmed.
The rejection of claims 2, 13, and 19 under 35 U.S.C. § 103(a) as
being unpatentable over Lee and Dziewit is affirmed.
The rejection of claims 3-7, 11, 12, 14--18, and 20 under 35 U.S.C.
§ 103(a) as being unpatentable over Lee, Dziewit, and Official Notice is
affirmed.
The rejection of claims 8-10 under 35 U.S.C. § 103(a) as being
unpatentable over Lee, Dziewit, and MPEP is affirmed.
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DECISION
The decision of the Examiner to reject claims 2-20 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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