Ex Parte Poltorak

Board of Patent Appeals and Interferences

Jul 7, 2010

10760738 (B.P.A.I. Jul. 7, 2010)

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.
10/760,738 01/20/2004 Alexander I. Poltorak AP 008 CIP1 1320
35070 7590 07/07/2010
ANATOLY S. WEISER
3525 DEL MAR HEIGHTS ROAD, #295
SAN DIEGO, CA 92130
EXAMINER
WASSUM, LUKE S
ART UNIT PAPER NUMBER
2167
MAIL DATE DELIVERY MODE
07/07/2010 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte ALEXANDER I. POLTORAK
____________________

Appeal 2009-002627
Application 10/760,738
Technology Center 2100
____________________

Before JOHN A. JEFFERY, LEE E. BARRETT, and THU A. DANG,
Administrative Patent Judges.

DANG, Administrative Patent Judge.

DECISION ON APPEAL1

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.

Appeal 2009-002627
Application 10/760,738

I. STATEMENT OF THE CASE
Appellant appeals from the Examiner’s final rejection of claims 1, 3-
17, 20, 22-36, 39, 41-54, and 57 under 35 U.S.C. § 134(a) (2002). Claims 2,
18, 19, 21, 37, 38, 40, 55, and 56 have been canceled. We have jurisdiction
under 35 U.S.C. § 6(b) (2002).
We reverse.

A. INVENTION
According to Appellant, the invention relates to computer-based
apparatus and computer-assisted methods for identifying potential patent
infringement (Spec. 1, ¶ [0002]).

B. ILLUSTRATIVE CLAIM
Claim 1 is exemplary and is reproduced below:
1. A method for identifying products potentially infringing
a patent, the method comprising:

determining frequencies of occurrence within the text of
the patent of each word of a plurality of words in a claim of the
patent to obtain a plurality of first frequencies;

determining frequencies of occurrence of said each word
in a neutral text unrelated to the patent and to technology of the
patent to obtain a plurality of second frequencies;

for said each word, calculating a ratio of the first
frequency associated with said each word to the second
frequency associated with said each word, thereby obtaining a
plurality of ratios, a ratio of the plurality of ratios per said each
word;

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Application 10/760,738

comparing each ratio of the plurality of ratios to a first
parameter to obtain a plurality of key terms, each key term of
the plurality of key terms comprising a word corresponding to a
ratio of the plurality of ratios that exceeds the first parameter;

formulating at least one query to search for data items
that include the key terms;

launching the at least one query;

receiving search results responsive to the at least one
query;

organizing the search results according to a criterion of
relevance to the patent, thereby obtaining organized search
results; and

outputting the organized search results.

C. REJECTIONS
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Snyder US 6,038,561 Mar. 14, 2000
Boru US 2002/0077853 A1 Jun. 20, 2002
Lee US 2002/0138475 A1 Sep. 26, 2002
Reader US 2003/0187832 A1 Oct. 2, 2003
Steiner US 2003/0065774 A1 Apr. 3, 2003

Claims 1, 4, 6-10, 12, 13, 15, 20, 23, 25-29, 31, 32, 34, 39, 43-47, 49,
50, 52, and 57 stand rejected under 35 U.S.C. § 103(a) as unpatentable over
the teachings of Snyder in view of Reader.
Claims 3, 16, 17, 22, 35, 36, 41, 53, and 54 stand rejected under 35
U.S.C. § 103(a) as unpatentable over the teachings of Snyder in view of
Reader and Boru.
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Claims 5, 24, and 42 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over the teachings of Snyder in view of Reader and Lee.
Claims 11, 14, 30, 33, 48, and 51 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over the teachings of Snyder in view of Reader and
Steiner.

II. ISSUE
Has the Examiner erred in finding that Snyder would have suggested
“determining frequencies of occurrence of said each word in a neutral text
unrelated to the patent and to technology of the patent to obtain a plurality of
second frequencies” (claim 1), as Appellant contends?

III. FINDINGS OF FACT
The following Findings of Fact (FF) are shown by a preponderance of
the evidence.
Snyder
1. Snyder discloses analyzing patent texts, such as patent claims,
abstracts and other portions of a patent document (Abstract), for
capturing concepts like patent infringement (col. 4, ll. 8-11).
2. The method includes the Term Frequency/Inverse Document
Frequency (TFIDF) techniques which determine the relative
prominence of a term compared to its occurrence throughout a
document body (col. 8, ll. 61-64).

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Application 10/760,738

VI. ANALYSIS
Claims 1, 4, 6-10, 12, 13, 15, 20, 23, 25-29, 31, 32, 34, 39, 43-47, 49, 50, 52,
and 57
Snyder discloses analyzing patent claims for capturing patent
infringement (FF 1), wherein a search routine determines the relative
prominence of a term compared to its occurrence throughout a document
body (FF 2). A skilled artisan would have understood Snyder to teach
identifying potential infringement of a patent by determining frequencies of
occurrence within the text of the patent of each word of a plurality of words
in a claim of the patent.
However, Appellant contends that, as the Examiner finds, “Snyder
discloses that the variable average_tf is the average term frequency across
the entire document corpus, which is the entire database of documents under
which search and analysis operations are conducted” (App. Br. 22). Thus,
according to Appellant, Snyder does not disclose “determining frequencies
of occurrence of said each word in a neutral text unrelated to the patent and
to technology of the patent to obtain a plurality of second frequencies” as
required by claim 1 because, “[i]n accordance with the express language of
claim 1 and the supporting disclose of the present application, the neutral
text must be a text unrelated to the patent and to technology of the patent”
(id.). That is, according to Appellant, Snyder’s search across the entire
document corpus is a search of a related text and not a “neutral text
unrelated to the patent and to technology of the patent” because “[a]
database of patents that includes the patent in question is related to the patent
because it contains the patent within it” (App. Br. 23).
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Appeal 2009-002627
Application 10/760,738

Though we agree with the Examiner’s finding that “[t]he Snyder et al.
reference discloses the use of TF-IDF analysis in identifying the most
significant terms and concepts for each patent” (Ans. 12) and that Snyder’s
“system calculates the term frequency within an individual patent document,
as well as the term frequency across the entire database of patents” (Ans.
16), we do not agree with the Examiner’s finding that, since “[t]he database
disclosed in the Synder et al. reference includes patent documents spanning
the entire breadth, width and length of human knowledge . . . . when taken as
a whole, this database qualifies as a ‘neutral text unrelated to the patent and
to the technology of the patent’” (Ans. 18).
Claim 1 requires that the second frequencies be obtained by
determining the word frequencies “in a neutral text unrelated to the patent
and to technology of the patent.” We construe the term “neutral text” to be
“unrelated to the patent and to technology of the patent” as specifically
defined in claim 1. In view of this claim construction and after reviewing
the record on appeal, we agree with Appellant that the passages cited by the
Examiner do not describe this claimed “neutral text unrelated to the patent
and to technology of the patent.” That is, we agree with Appellant that
Snyder’s search across the entire document corpus is a search of a related
text and not a “neutral text unrelated to the patent and to technology of the
patent” because “[a] database of patents that includes the patent in question
is related to the patent because it contains the patent within it” (App. Br. 23).
We also find that Reader does not cure these deficiencies of Snyder.
As such, we find that Appellant has shown that the Examiner erred in
rejecting representative claim 1 and claims 4, 6-10, 12, 13, 15, 20, 23, 25-29,
31, 32, 34, 39, 43-47, 49, 50, 52, and 57 standing therewith under 35 U.S.C.
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Application 10/760,738

§ 103(a) for the reasons as set forth above. We thus reverse the rejection of
claims 1, 4, 6-10, 12, 13, 15, 20, 23, 25-29, 31, 32, 34, 39, 43-47, 49, 50, 52,
and 57 as unpatentable over Snyder in view of Reader.
Claims 3, 16, 17, 22, 35, 36, 41, 53, and 54
We also find that Boru does not cure these deficiencies of Snyder and
Reader. As such, we will reverse the rejection of claims 3, 16, 17, 22, 35,
36, 41, 53, and 54 over Snyder in view of Reader and Boru.
Claims 5, 24, and 42
We also find that Lee does not cure these deficiencies of Snyder and
Reader. As such, we will reverse the rejection of claims 5, 24, and 42 over
Snyder in view of Reader and Lee.
Claims 11, 14, 30, 33, 48, and 51
We also find that Steiner does not cure these deficiencies of Snyder
and Reader. As such, we will reverse the rejection of claims 11, 14, 30, 33,
48, and 51 over Snyder in view of Reader and Steiner.

VI. CONCLUSION
Appellant has shown that the Examiner erred in finding claims 1, 4, 6-
10, 12, 13, 15, 20, 23, 25-29, 31, 32, 34, 39, 43-47, 49, 50, 52, and 57
unpatentable under 35 U.S.C. § 103(a) over the teachings of Snyder in view
of Reader.
Appellant has shown that the Examiner erred in finding claims 3, 16,
17, 22, 35, 36, 41, 53, and 54 unpatentable under 35 U.S.C. § 103(a) over
the teachings of Snyder in view of Reader and Boru.
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Appellant has shown that the Examiner erred in finding claims 5, 24,
and 42 unpatentable under 35 U.S.C. § 103(a) over the teachings of Snyder
in view of Reader and Lee.
Appellant has shown that the Examiner erred in finding claims 11, 14,
30, 33, 48, and 51 unpatentable under 35 U.S.C. § 103(a) over the teachings
of Snyder in view of Reader and Steiner.

VII. DECISION
We have not sustained the Examiner's rejection with respect to any
claim on appeal. Therefore, the Examiner’s decision rejecting claims 1, 3-
17, 20, 22-36, 39, 41-54, and 57 is reversed.

REVERSED

peb

ANATOLY S. WEISER
3525 DEL MAR HEIGHTS ROAD, #295
SAN DIEGO, CA 92130
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