Ex Parte Peters et al

Patent Trial and Appeal Board

Jul 14, 2017

14523250 (P.T.A.B. Jul. 14, 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.
14/523,250 10/24/2014 Edwin W. Peters CAM920130003US2_8150-0483 1598
52021 7590 07/18/2017
Cuenot, Forsythe & Kim, LLC
20283 State Road 7
Ste. 300
Boca Raton, EL 33498
EXAMINER
HO, BINH VAN
ART UNIT PAPER NUMBER
2152
NOTIFICATION DATE DELIVERY MODE
07/18/2017 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):
ibmptomail@iplawpro.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte EDWIN W. PETERS, SHERRY L. PLATEK,
NITTY T. PULIKAN, BALAJI RANGANATHAN, LIVIU RODEAN,
BALASUBRAMANIAN SIVASUBRAMANIAN,
and ERIC WOODS
Appeal 2016-008464 1
Application 14/523,250
Technology Center 2100
Before ST. JOHN COURTENAY III, ERIC S. FRAHM, and
CATHERINE SHIANG, Administrative Patent Judges.
COURTENAY, Administrative Patent Judge.
DECISION ON REQUEST FOR REHEARING
Appellants filed a Request for Rehearing (“Request”) under 37 C.F.R.
§ 41.52(a)(1) for reconsideration of our Decision on Appeal, mailed April
28, 2017 (“Decision”). Our Decision (10) affirmed: (1) the Examiner’s
decision rejecting claims 1 and 3-7 on the provisional ground of
nonstatutory obviousness-type double patenting, and (2), the Examiner’s
1 This appeal is related to the following PTAB appeals: 2016-008341 (App.
No. 13/838,731), 2016-004945 (App. No. 14/216,682), and 2016-004920
(App. No. 13/839,038).
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Application 14/523,250
decision rejecting claims 1 and 3-7 under 35 U.S.C § 103(a).
In the Request, Appellants advance three principal arguments:
1. The Board erred by addressing the provisional ground of
nonstatutory obviousness-type double patenting (OTDP) (Request 3).
2. Regarding rejection B of claim 1 under § 103, the “Board
either misapprehended and/or overlooked Appellants’ arguments that
Kaiser fails to teach the limitations for which the Examiner relied
exclusively upon Kaiser to teach.” (Request 6).
3. Regarding rejection B of claim 5 under § 103, the Board
either misapprehended and/or overlooked Appellants’ arguments in
the Reply Brief as being untimely. (Request 7-8).
We have reconsidered our Decision, in light of Appellants’ arguments
in the Request, and are not persuaded that we misapprehended or overlooked
any points in rendering our Decision. We decline to change or modify our
prior Decision for the reasons discussed infra.
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Argument One — regarding provisional OTDP rejection A 2
Appellants urge: (1) the Board’s “approach is inconsistent with the
Board’s precedential decision of Ex Parte Moncla et aL 95 USPQ2d 1884,
1885 (BPAI 2010) (precedential)” and, (2) “only until the ‘731 Application
has issued as a patent does the issue (and rejection) become ripe. Therefore,
the Board erred by addressing this rejection.” (Request 3).
Regarding provisional rejection A of claims 1 and 3-7, Appellants
expressly state in footnote 1 of the Appeal Brief (2-3):
The claims are subject to a provisional obviousness-type double
patenting rejection based upon related Patent Application No.
13/838,731. This rejection is not the subject of the present
appeal. Appellants will make a determination as to the filing
of a Terminal Disclaimer upon indication of allowable subject
matter.
(emphasis added).
However, Appellants may not elect to appeal a subset of the rejections
on appeal, or a subset of the claims under rejection. Under our procedural
2 Obviousness-type double patenting (OTDP) is a “judicially created
doctrine grounded in public policy (a policy reflected in the patent statute)”
that “prevents] the extension of the term of a patent, even where an express
statutory basis for the rejection is missing, by prohibiting the issuance of the
claims in a second patent not patentably distinct from the claims of the first
patent.” In reLongi, 759 F.2d 887, 892 (Fed. Cir. 1985). A provisional
nonstatutory obviousness-type double patenting rejection is appropriate
where the conflicting claims are not identical, but at least some examined
application independent claims are not patentably distinct from the reference
claims because the claims on appeal are either anticipated by, or would have
been obvious over, the reference claims. See, e.g., In re Berg, 140 F.3d
1428 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046 (Fed. Cir. 1993); and
In reLongi, 759 F.2d 887 (Fed. Cir. 1985).
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rule 37 C.F.R. § 41.31(c), “An appeal, when taken, is presumed to be taken
from the rejection of all claims under rejection unless cancelled by an
amendment filed by the applicant and entered by the Office.”
Because Appellants have not substantively addressed provisional
OTDP rejection A on the merits, arguments not made are waived, as we
expressly indicated in our Decision (3): “To the extent Appellants have not
advanced separate, substantive arguments for particular rejected claims or
other issues, such arguments are waived. See 37 C.F.R. § 41.37(c)(l)(iv).”
Cf. Ex parte Moncla, 95 USPQ2d 1884, 1885 (BPAI 2010) (precedential)
(holding that when all other rejections on appeal have been reversed and the
only remaining rejection is a provisional non-statutory double patenting
rejection, it was premature for the original Board panel to address the
Examiner’s provisional rejection of the claims.).
Thus, Moncla, as cited by Appellants in the Request (3), is only
applicable when all other rejections on appeal have been reversed and the
sole remaining rejection is a provisional OTDP rejection over all the claims.
In that narrow, limited case, Moncla provides procedural policy guidance to
PTAB judges that to affirm the Examiner’s decision solely over a
provisional OTDP rejection is premature.3
Such is not the case presented here. Therefore, Moncla is inapplicable
in this appeal. To the extent that other Board panels have adopted a broader
interpretation of Moncla as a reason not to reach provisional OTDP
rejections on appeal, this is an issue of inconsistency between different
3 Cf. 37 C.F.R. § 41.50(a)(1) (“[t]he affirmance of the rejection of a claim
on any of the grounds specified constitutes a general affirmance of the
decision of the examiner on that claim.”)
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PTAB panels that is not within the jurisdiction of this panel to resolve.
For these reasons, we find Appellants’ contentions regarding
provisional OTDP rejection A are not persuasive.
Argument Two regarding Kaiser under §103 Rejection B of claim 1
We next address Appellants’ second contention: that the Board either
misapprehended and/or overlooked Appellants’ arguments that Kaiser fails
to teach the limitations for which the Examiner relied exclusively upon
Kaiser to teach. (Request 6). In support, Appellants urge, inter alia:
As argued in the paragraph spanning pages 8 and 9 of the
Appeal Brief, Kaiser makes no mention of “received user
notes” or “identify[ing] one or more common key elements
in the analyses thereof.” Accordingly, the teachings of Kaiser
fail to correspond to the claimed (i) what is being cross-
referenced and (ii) the result of the cross-referencing. Instead,
while Kaiser teaches “cross-referencing,” Kaiser cross-
references sounds (i.e., phonemes) [footnote omitted] and the
result of this cross-referencing is to identify multimodal
redundancy and/or recognize new words, [footnote omitted]
Put simply, what Kaiser cross-references is different and the
result of this cross-referencing is different than that being
claimed.
(Request 6) (emphasis in bold added, underline in original).
Appellants urge that “Kaiser makes no mention of ‘received user
notes’ or ‘identify[ing] one or more common key elements in the analyses
thereof” {id.). However, except for the “common” aspect (claim 1), we
note the Examiner relies on Kansal (not Kaiser) for teaching or suggesting
these claim limitations. {See Final Act. 4-5). The Examiner looks to
Kaiser for teaching “cross-referencing the analysis of the text of each
meeting content stream to identify one or more common key elements in the
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analysis thereof, (paragraph [0074]-[0076]).” (Final Act. 5) (emphasis
added).
Kaiser’s paragraph 76 expressly describes: “To detect multimodal
redundancy and/or recognize new words, the system 500 aligns the
handwritten words to nearby spoken words. Closely matching alignments
may then trigger the system to detect instances of multimodal redundancy.”
(emphasis added).
As set forth in our Decision (6), we find Kaiser’s teaching (]f 76) of
“aligning] the handwritten words to nearby spoken words” (and also
“Closely matching alignments ... to detect instances of multimodal
redundancy” (id.)) at least suggests the claimed “cross referencing” (i.e.,
matching) of data (e.g., analysis of the text) to identify common (i.e.,
redundant) data elements.
We conclude, under a broad but reasonable interpretation consistent
with the Specification, the “key elements” recited in claim 1 can encompass
virtually any type of data. Cf. Spec. ^ 36: “A ‘key element’ is a concept,
topic, keyword, key phrase or noteworthy point that meets a predetermined
threshold of significance.”
Nonobviousness cannot be established by attacking the references
individually when the rejection is predicated upon a combination of prior art
disclosures. In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986). The
test for obviousness is not whether the claimed invention is expressly
suggested in any one or all of the references, but whether the claimed subject
matter would have been obvious to those of ordinary skill in the art in light
of the combined teachings of those references. In re Keller, 642 F.2d 413,
425 (CCPA 1981).
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Applying this reasoning here, we find Appellants’ arguments (Request
6) unpersuasive, because they are directed to Kaiser individually, and not to
the combined teachings and suggestions of Kansal and Kaiser, as relied
upon by the Examiner as evidence to support the obviousness rejection.
(Final Act. 4-5). Therefore, on this record, we are not persuaded the
Examiner erred.
Appellants further urge (Request 7,11. 1—4) that we have overlooked
Appellants’ additional arguments on pages 9 and 10 of the Appeal Brief.
Although Appellants have reproduced the Examiner’s motivation statement
in the Appeal Brief (9), we nevertheless find Appellants’ arguments (App.
Br. 9-10) fail address the Examiner’s specific findings regarding paragraph
6 of Kaiser, which supports the proffered rationale for the combination. See
Final Action (5).
Appellants (App. Br. 9-10) instead focus on discussing Kaiser (]f 50),
and ignore Kaiser (]f 6), as relied on by the Examiner. Final Action (5).
Because Appellants have not addressed the Examiner’s specific findings
(id.), on this record, Appellants have not persuaded us the Examiner erred.
Accordingly, we incorporate by reference our broader claim
construction and analysis of rejection B of claim 1, as set forth in our
Decision (4-7), as additionally discussed above. For these reasons, we find
Appellants’ contentions regarding rejection B under § 103 of claim 1 are not
persuasive.
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Argument Three regarding §103 Rejection B of claim 5
Appellants note that “[o]n page 8 of the Decision on Appeal, the
Board dismisses Appellants’ arguments as not being a ‘substantive
argument.’” Request (7). Appellants urge, inter alia, that despite previously
raising the issue with the Examiner (after the first office action),
at the time of the Appeal, the only analysis Appellants had to
work with was the Examiner’s naked citation of paragraph
[0025]. The level of detail by Appellants can identified [sic]
Examiner error is limited by the level of detail of the
Examiner’s analysis, [footnote omitted] In this instance, since
the Examiner’s citation of paragraph [0025] was the only
analysis presented by the Examiner, Appellants can only argue,
without resulting to speculation, that paragraph [0025] fails to
teach the limitations at issue.
Request (7).
Appellants further contend the “Examiner’s analysis in the paragraph
spanning pages 8 and 9 of the Examiner’s Answer was newly-presented.
Accordingly, Appellants’ response in the Reply Brief [(6-8)] to these newly-
presented arguments is proper.” (Request 8).
Dependent claim 5 recites: “The method of claim 1, further
including:
linking the key element in the consolidated system notes to a relevant
portion of the user notes from which the key element was extracted.”
After reviewing the record, we disagree with Appellants’ assertion in
the Reply Brief (7,11.10-11) that “the Examiner’s analysis as to claim 5
consisted solely of reproducing the language of claim 5 and citing paragraph
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[0025] of Kansal.” (Emphasis added). We reproduce the Examiner’s
rejection of claim 5, as set forth in the Final Action (6):
(Claim 5)
The combination of Kansal and Kaiser discloses
substantially all of the elements of claim 1, and Kansal
further discloses further including:
linking the key element in the consolidated system notes
to a relevant portion of the user notes from which the key
element was extracted, (paragraph [0025]).
(Emphasis added).
Thus, the Examiner found in the rejection that “[t]he combination of
Kansal and Kaiser discloses substantially all of the elements of claim 1”
(id.), thereby incorporating the rejection of independent claim 1, from which
claim 5 depends. (Emphasis added). In the Answer (8), the Examiner
reproduces paragraph 25 of Kansal, and further explains the basis for the
rejection:
The Examiner respectfully disagreed with the Applicant’s
argument above, Kansai [sic] teaches users can access data
identifying a meeting data, time, or title, for example, but also
looking up data using associations such as a related project,
activities, or the like. The process component 120 can also
generate or convert data in a variety of forms to aid data
distribution as well as comprehension. For instance, the process
component 120 can generate or extract summaries or items of
interest (e.g., action items, conclusions . . .). Additionally or
alternatively, the process component 110 can index the captured
meeting data as well as processed meeting data utilizing the
data content and/or associated metadata to facilitate expeditious
location of data", (association —► link; paragraph [0025]).
(Ans. 8-9).
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Appellants respond in the Reply Brief (7-8), and address Kansal
(125):
The underlined portions of the above-reproduced passage
(i.e., paragraph [0025]) are the only instances of the term
"association" within paragraph [0025]. To be clear, claim 5
recites "linking the key element in the consolidated system
notes to a relevant portion of the user notes from which the key
element was extracted." However, paragraph [0025] does not
refer to the claimed "consolidated system notes." Additionally,
the "association" described in paragraph [0025] does not
involve the claimed "key element." Also absent from paragraph
[0025] is a teaching of the claimed "relevant portion of the user
notes from which the key element was extracted." In short,
paragraph [0025] is silent as to almost all of the claimed
limitations recited in claim 5.
We reproduce Kansal fl[ 25) below:
[0025] The process component 120 processes collected data to
facilitate access to and/or dissemination of meeting
information, among other things. In one instance, process
component 120 can contextualize data. In other words, data
can be associated or tagged with contextual information or
metadata to aid location thereof. The usefulness of information
recorded at a meeting is increased if users can access data
identifying a meeting data, time, or title, for example, but also
looking up data using associations such as a related project,
activities, or the like. The process component 120 can also
generate or convert data in a variety of forms to aid data
distribution as well as comprehension. For instance, the process
component 120 can generate or extract summaries or
items of interest (e.g., action items, conclusions . . .).
Additionally or alternatively, the process component 110 can
index the captured meeting data as well as processed meeting
data utilizing the data content and/or associated metadata to
facilitate expeditious location of data.
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First, we note that a literal replication of claim terms is not required in
a reference.4 In reviewing the evidence, we find the contested
“consolidated system notes” are at least suggested by Kansal’s description of
“collected data to facilitate access to and/or dissemination of meeting
information” and also by the “extracted] summaries or items of interest
(e.g., action items, conclusions . . .)” fl[ 25) (emphasis added).
Second, regarding Appellants’ assertion that “the ‘association’
described in paragraph [0025] does not involve the claimed ‘key element’”
Reply Brief (7), we note the Examiner mapped the key elements to Kansal
(Tfl[ 25, 43, 44), as set forth in the rejection of independent claim 1, from
which claim 5 depends. See Final Act. 5, as reproduced below:
[Kansal teaches:]
analyzing received user notes to identify one or more key
elements therein, ("the process component 120 can generate or
extract summaries or items of interest (e.g., action
items, conclusions . . .). Additionally or alternatively, the
process component 110 can index the captured meeting data as
well as processed meeting data utilizing the data content and/or
associated metadata to facilitate expeditious location of data",
paragraph [0025], [0043]-[0044]);
(Final Act. 5(emphasis omitted)).
Given the aforementioned evidence relied upon by the Examiner, we
find the contested limitations of claim 5 are at least suggested by the
proffered combination of Kansal and Kaiser. Our reviewing court guides:
4 Cf. In re Bond, 910 F.2d 831, 832 (Fed. Cir. 1990) (anticipation “is not an
‘ipsissimis verbis’ test” (citation omitted)). “An anticipatory reference . . .
need not duplicate word for word what is in the claims.” Standard Havens
Prods, v. Gencor Indus., 953 F.2d 1360, 1369 (Fed. Cir. 1991).
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‘“the question under [35 U.S.C. § 103] is not merely what the references
expressly teach but what they would have suggested to one of ordinary skill
in the art at the time the invention was made.’” Merck & Co. v. Biocraft
Laboratories, Inc., 874 F.2d 804, 807 (Fed. Cir. 1989), cert, denied, 493
U.S. 975 (1989); see also MPEP § 2123.
This reasoning is applicable here. Moreover, we find Appellants’
arguments regarding the rejection of claim 5 in the Reply Brief (6-8)
essentially follow the same pattern of argument of the Appeal Brief (10-12),
as noted in our Decision (8).5
CONCLUSION
We have considered all of the arguments raised by Appellants in the
Request, but Appellants have not persuaded us that we misapprehended or
overlooked any points in rendering our Decision.
5 See Decision 8 (“Because Appellants merely recite the language of claim 5
and assert it is not (literally) taught, without any substantive argument
traversing the Examiner’s rejection, we find Appellants’ argument for
claim 5 is unavailing. See In re Lovin, 652 F.3d 1349, 1357 (Fed. Cir. 2011)
‘[W]e hold that the Board reasonably interpreted Rule 41.37 to require more
substantive arguments in an appeal brief than a mere recitation of the claim
elements and a naked assertion that the corresponding elements were not
found in the prior art.’”).
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DECISION
We have granted Appellants’ request to the extent that we have
reconsidered our Decision, but we deny the Request with respect to making
any changes therein.
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 also 37 C.F.R.
§ 41.52(b).
REQUEST FOR REHEARING DENIED
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