Ex Parte Pulnikova

Patent Trial and Appeal Board

Mar 10, 2016

13076688 (P.T.A.B. Mar. 10, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/076,688 03/31/2011
68380 7590 03/10/2016
DR PULNIKOVA VALENTINA
WEIHERSTRASSE 9
VILLINGEN-SCHWENNINGEN, 78050
GERMANY
FIRST NAMED INVENTOR
Valentina Pulnikova
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.
Pulnikova 4212
EXAMINER
BURKE, JEFF A
ART UNIT PAPER NUMBER
2159
MAILDATE DELIVERY MODE
03/10/2016 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 VALENTINA PULNIKOV A 1
Appeal2014-006149
Application 13/076,688
Technology Center 2100
Before ST. JOHN COURTENAY III, JOHNNY A. KUMAR, and
CATHERINE SHIANG, Administrative Patent Judges.
KUMAR, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a) of the Final
Rejection of claims 2-5, 7, and 8.2 We have jurisdiction under 35 U.S.C.
§ 6(b ).
We AFFIRM the Examiner's rejection of these claims and enter a new
ground of rejection under 37 C.F.R. § 41.50(b).
1 The Real Party in Interest is the pro se Appellant, Valentina Pulnikova.
(App. Br. 1.) The Appeal Brief also erroneously names the Examiner as a
Real Party in Interest. A Real Party in Interest relates to an ownership
interest in the invention. (See MPEP § 308.)
2 Claims 1 and 6 were canceled.
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Application 13/076,688
INVENTION
The invention is directed to Internet searching. (See Spec. i-f 1.)
Claim 2 is illustrative and is reproduced below:
2. A method of operating of a retrieval system,
comprising at least the combination of:
- development of the Global Classification of Information
in the Internet, representing by itself a hierarchical tree with
names and corresponding codes of all divisions and subdivisions
of information, including characteristics of information specific
for the every division and subdivision, and storing in a database,
located on a physical media of storage of information of the
server of the retrieval system;
- registering of information provided by information
suppliers, comprising at least filling an application form,
comprising data of: URL address of his Web site, a name of a
required division of the Global Classification of Information in
the Internet, to which this Web site is related in opinion of the
information supplier, key words, a kind of information according
to Classification of Kinds of information, an author of
information, a country, where Web site is situated, a language of
information, a free or fee=based information, a free access to
information or needed registration procedure, characteristics of
information specific for selected division of the Global
Classification of Information in the Internet;
- writing of information provided by information suppliers
in the database of information about Web sites and storing said
data, where these data for every registered Web site at least
comprise: a URL address of this Web site, a code of division of
the Global Classification of Information in the Internet, to which
this Web site is related, key words concerning to main content of
Web site, a kind of information according to Classification of
Kinds of information, a author of information, a country, where
Web site is situated, a language of information, a free or fee-
based information, a free access to information or needed
registration procedure, a data characterizing an authenticity of
information, a volume of information, a date of registration or
update of information, characteristics of information specific for
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selected division of the Global Classification of Information in
the Internet;
- preparation of a request of a searcher of information
comprising at least a name of relevant division of the Global
Classification of Information in the Internet or key words relating
to a needed information;
- choice of the needed division of the Global Classification
of Information in the Internet by a searcher of information, in
case of using of key words for searching;
- searching for needed information in database of retrieval
system according to names and codes of said division of the
Global Classification of Information in the Internet;
- selecting a required data from retrieved information for
searchers of information according to predetermined algorithm
of selecting or according to the stepwise selecting;
- organization of an automatic collection of information by
means of the retrieval system;
- organization of an automatic control by means of the
Internet and the retrieval system;
- organization of automatic data exchange between
automatic systems by means of the Internet and the retrieval
system.
REFERENCES
Kim US 2003/0061243 Al Mar. 27, 2003
Zee US 2002/0178015 Al Nov. 28, 2002
Han US 2004/0167931 Al Aug.26,2004
Brock US 2008/0059461 Al Mar. 6, 2008
PROCEDURAL BACKGROUND
Appellant's amendment filed November 4, 2011, failed to properly
mark the deletions and insertions according to 37 C.F .R. § 1.121 ( c )(2),
which requires underlining added text and using strike-through for any
deleted text. (See MPEP § 714.) On observation, the changes to claim 2
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appear to be ( 1) deletion of text from the claim preamble; (2) addition of a
new first clause ("development of ... "); (3) addition of three clauses to the
end of claim 2 ("organization of ... ; organization of ... ; organization
of ... ").
We decline to remand the case to correct the record because two
office actions and a plurality of Appeal Briefs have already been filed based
on this set of claims. We consider the claims before us as the set of claims
presented in the Appeal Briefs Claims Appendix, which appears to match
the claims submitted on November 4, 2011, even though the claims were not
in technical compliance with 37 C.F.R. § 1.121(c)(2).
( 1) Appellant argues the Examiner has used the wrong claim
language for the preamble of claim 2. (See App. Br. 49; Cf Final Act. 3.) In
regard to the deleted text of the preamble of claim 2, we consider this
harmless error because the removal of claim language from the preamble
only serves to make the claim broader in scope.
(2) In regard to the addition of the new first clause to claim 2, the
Examiner has addressed the added claim language as amended. (See Final
Act. 3.)
(3) In regard to the three clauses appended to the end of claim 2,
the Examiner has addressed the added claim language as amended. (See
Final Act. 6-7.) 3
3 In reviewing the record, we remind Appellant of the duty to conduct all
business with the Office with decorum and courtesy. "Applicants and their
attorneys or agents are required to conduct their business with the United
States Patent and Trademark Office with decorum and courtesy ...
Complaints against examiners and other employees must be made in
correspondence separate from other papers." 37 C.F.R. § 1.3 ("Business to
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REJECTIONS
Claims 2-5, 7, and 8 are rejected under 35 U.S.C. § 112 as indefinite.
(Final Act. 2, 19.)
Claims 2--4 are rejected under 35 U.S.C. § 103(a) as unpatentable over
the combination of Kim and Zee. (Final Act. 3.)
Claim 5 is rejected under 35 U.S.C. § 103(a) as unpatentable over the
combination of Kim, Zee, and Brock. (Final Act. 11.)
Claims 7 and 8 are rejected under 35 U.S.C. § 103(a) as unpatentable
over the combination of Kim, Zee, and Han. (Final Act. 14.)
ISSUES
Did the Examiner err in rejecting claims 2-5, 7, and 8 as indefinite
under 35 U.S.C. § 112?
Did the Examiner err in rejecting claims 2--4 as obvious because Kim
and Zee fail to teach or suggest the argued limitations?
Did the Examiner err in rejecting claim 5 as obvious because Kim,
Zee, and Brock fail to teach or suggest the argued limitations?
be conducted with decorum and courtesy"). We do not find Appellant's
discourteous allegations (e.g., "continuation of the terror of the US PTO,
directed to liquidation of my intellectual property ... [and] I consider these
actions of the personnel of the US PTO as the continuation of the genocide of
the inventor." -Misc. incoming paper, received March 6, 2014) to be
appropriate, persuasive, or helpful in advancing Appellant's arguments.
Future correspondence of this discourteous nature may be referred to the
Deputy Commissioner for Patent Examination Policy for appropriate action.
See MPEP § 1002.02(b)
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Did the Examiner err in rejecting claims 7 and 8 as obvious because
Kim, Zee, and Han fail to teach or suggest the argued limitations?
ANALYSIS
At the outset, we consider Appellant's arguments only to the extent
that such arguments are directed to the claimed subject matter.
None of the arguments summarized in the Appeal Brief at pages 603-
626 (items numbered 1, 2, 5-9, 11-17, and 19-24) and Reply Brief pages
l(gl), 773, and 774 (items 1-5) is persuasive of Examiner error.
Regarding items 1 and 2 summarized in the Appeal Brief at pages
603-626, Appellant's arguments that the Examiner has plagiarized the
MPEP are not persuasive of Examiner error because the Examiner is
instructed to use the "Manual of Patent Examining Procedure" (MPEP) for
matters of patent examining practice and procedure.
The MPEP "contains instructions to examiners, as well as other
material in the nature of information and interpretation, and outlines the
current procedures which the examiners are required or authorized to follow
in appropriate cases in the normal examination of a patent application."
MPEP "Forward."
Regarding items 5, 6, 11, and 23 summarized in the Appeal Brief at
pages 603---626, Appellant's arguments regarding the Examiner's other
office actions are not considered because the Examiner's first office action is
not on appeal. The Final Rejection dated 11 June 2013 is the office action
on appeal.
Regarding items 7, 8, and 11-16 summarized in the Appeal Brief at
pages 603---626, Appellant's arguments that the Examiner has failed to
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consider previous arguments is moot because Appellant has appealed the
Examiner's rejection to this Board.
Regarding items 9, 1 7, and 19 summarized in the Appeal Brief at
pages 603---626, Appellant's arguments that the Examiner uses "the
falsification of evidences" are not persuasive of Examiner error because the
Examiner has cited prior art references Kim, Zee, Han, and Brock
respectively. These references are real publications and are relied on by the
Examiner as evidence of record. The Examiner uses the claim language
from the claim in the office action to indicate which claim limitation is being
discussed. Citations to the prior art reference are contained in parenthesis.
This formatting style does not indicate that the claim language itself is in the
cited section of the reference but merely indicates the Examiner has found
the sections of the references indicated by parenthesis contain teachings
which are encompassed by the broadest reasonable interpretation of the
preceding claim language.
Regarding items 20 and 21 summarized in the Appeal Brief at pages
603-626, Appellant's arguments fails to particularly point out any claim
language which Examiner has allegedly misinterpreted.
Regarding items 22 summarized in the Appeal Brief at pages 603-
626, Appellant's arguments that the Examiner has presented contradictory
assertions by finding a prior art rejection of claim 3 while simultaneously
asserting a rejection under 35 U.S.C. § 112 second paragraph is unpersuasive
of Examiner error. MPEP §2173.06 guides:
when the examiner determines that a claim term or phrase
renders the claim indefinite, the examiner should make a
rejection based on indefiniteness under 35 U.S.C. 112(b) or pre-
AIA 35 U.S.C. 112, second paragraph, as well as a rejection(s)
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in view of the prior art under 35 U.S.C. 102 or 103 that renders
the prior art applicable based on the examiner's interpretation of
the claim.
(citing In re Packard, 751F.3d1307, 1312 (Fed. Cir. 2014)).
Therefore, we address Appellant's arguments that are directed toward
specific claimed subject matter below.
35 U.S.C. § 112 Indefiniteness
The Examiner concludes claims 2-5, 7, and 8 are indefinite under 35
U.S.C. § 112 second paragraph. (Final Act. 2, 19.) The Appellant argues
the Examiner fails to specify which claims are rejected under§ 112. (App.
Br. 47.) We disagree. The Final Action, page 2, identifies all claims by the
term "The claims." Furthermore, Final Action page 19 clearly includes a
numerical listing of "claims 2-5 and 7-8 under 35 U.S.C. 112." (See Final
Act. 19.)
The Examiner finds claim 2 fails to use conjunctive or disjunctive
relations (and/or) between claim elements. (Ans. 2; Final Act. 19.) We
agree with the Examiner. Within the claim limitation "registration of ... "
there is a comma-separated listing which fails to specify the relationship
between elements of the list, because neither "and" nor "or" is used after the
second to last comma-separated element of the list. The same is true for the
clause beginning "writing of .... "
Also, claim 2 overall comprises a listing of semicolon-separated
method steps, each preceded by a hyphen-styled bullet point ("development
of ... ""registering of ... ""writing of ... ""preparation of ... ""choice of
... ""searching for ... ""selecting a ... ""organization of ... "
"organization of ... ""organization of ... "). However, there is neither an
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"and" nor "or" indicating whether this listing requires all steps or merely one
of those listed.
Appellant may easily remedy the lack of relationship between listed
claim elements by amending the claim to add the word "and" after the last
semicolon and in the appropriate place at the end of the comma-separated
lists.
Dependent claims 3-5, 7, and 8 depend from independent claim 2 and
therefore, by their dependency, include the same issues discussed above.
Accordingly, for the above reasons, we sustain the Examiner's
rejection of claims 2-5, 7, and 8 under 35 U.S.C. § 112.
Claim Interpretation
In sixty-four instances throughout the Appeal Brief and Reply Brief
Appellant quotes MPEP §§ 2111.01 and 2173.01 stating "applicants are their
own lexicographers" and "can define in the claims what they regard as their
invention essentially in whatever terms they choose so long as any special
meaning assigned to a term is clearly set forth in the specification." (See
e.g., App. Br. 46, 79; Reply Br. 10, 53, 69, etc.)
However, Appellant never points to specific language in the claims or
specification that sets forth a special definition for any contested claim term.
An applicant is entitled to be his or her own lexicographer and may rebut the
presumption that claim terms are to be given their ordinary and customary
meaning by clearly setting forth a definition of the term that is different from
its ordinary and customary meaning(s) in the specification at the time of
filing. See In re Paulsen, 30 F.3d 1475, 1480, 31USPQ2d1671, 1674 (Fed.
Cir. 1994). Because the claim terms have not been given a special
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lexicographic definition, the claims are interpreted according to their
broadest reasonable interpretation at the time of the invention. See In re Am.
Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004).
Claims 2-5
In an Appeal Brief spanning over six-hundred pages, Appellant argues
that Kim fails to mention each and every limitation of claim 2. (See App.
Br. 48-240.) The Examiner accordingly responds specifically pointing out
where each limitation is taught in the references. (See Ans. 3-38.) We
agree with Examiner and adopt the Examiner's analysis from pages 3, 4, and
6-38 of the Examiner's Answer as our own with the following exception:
Claim 2 recites "registering of information ... comprising at least
filling an application form, comprising data of: URL address of his Web
site." The Examiner finds the filename taught by Kim paragraphs 49 and 51
is a Uniform Resource Locator (URL) because it is capable of retrieving the
document which it represents. (Ans. 5.) Appellant argues the filename is
not the URL address of a Web site. (App. Br. 81-83 (citing definitions of
URL from www.webster-dictionary.org and www.com.12uter-dictionary-
online.org).) We agree with Appellant. Although a filename may
reasonably be considered a uniform method of locating (or pointing to) a
resource, it is unreasonable to consider a filename, without more, to be a
URL that designates the IP address of a website, in accordance with the plain
meaning of "URL" as would have been understood by a person of ordinary
skill in the art.
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Accordingly, we cannot sustain the Examiner's rejection of claims 2-
4 under 35 U.S.C. § 103(a) as unpatentable over the combination of Kim and
Zee.
In regard to claim 5, the Examiner does not rely upon Brock to cure
the above noted deficiency of Kim and Zee. Accordingly, we cannot sustain
the Examiner's rejection of claim 5 under 35 U.S.C. § 103(a) as
unpatentable over the combination of Kim, Zee, and Brock.
Claims 7 and 8
Han cures the above noted deficiency with respect the URL claim
limitation. We agree with the Examiner that Han paragraph 67 teaches
registering websites by providing the URL. (See Final Act. 16.)
Specifically, Han paragraph 67 recites "a URL that represents the website."
Accordingly, we sustain the Examiner's rejection of claims 7 and 8
under 35 U.S.C. § 103(a) as unpatentable over the combination of Kim, Zee
and Han.
New Ground of Rejection under 35 U.S.C. § 103
We enter the following new ground of rejection pursuant to our
authority under 37 C.F.R. § 41.50(b). Claims 2--4 are rejected under
35 U.S.C. § 103(a) as being unpatentable over Kim, Zee, and Han.
As discussed above, we agree with Appellant that Kim and Zee does
not teach "URL address of a Web site" as recited in claim 2; however, Han
cures this deficiency. Han's paragraph 67 teaches registering websites by
providing the URL. (See also Final Act. 16.) Specifically, Han's paragraph
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67 recites "a URL that represents the website." Furthermore, we agree with
the Examiner and adopt as our own the analysis that:
Kim, Zee and Han are analogous art because they are in
the same field of endeavor, content mining. It would have been
obvious to one of ordinary skill in the art, at the time of the
invention, to modify the method of Kim, as modified by Zee, to
include the functionality of Han to allow content to be
automatically mined. The suggestion/motivation to combine is
to provide an efficient mechanism to gather content. Therefore
it would have been obvious to combine [Kim, Zee, and Han] to
obtain the instant invention.
(Final Act. 17 .)
For the remaining claim limitations, we adopt the Examiner's analysis
as found in the Final Action pages 3-14 and the Examiner's Answer pages
3, 4, and 6-14.
Similarly, we enter the following new ground of rejection pursuant to
our authority under 37 C.F.R. § 41.50(b). Claim 5 is rejected under
35 U.S.C. § 103(a) as being unpatentable over Kim, Zee, Brock, and Han.
The addition of Han as a reference is under the same analysis as for claims
2--4 above.
CONCLUSION
The Examiner did not err in concluding that claims 2-5, 7, and 8 are
indefinite under 35 U.S.C. § 112, second paragraph.
The Examiner erred in finding that the combination Kim and Zee
would have taught or suggested the "URL address of a Web site" as recited
in claim 2.
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The Examiner did not err in finding the combination of Kim, Zee, and
Han would have taught or suggested the argued limitations of claims 7 and
8.
DECISION
The Examiner's decision to reject claims 2-5, 7, and 8 under
35 U.S.C. § 112 as indefinite is affirmed.
The Examiner's decision to reject claims 2--4 under 35 U.S.C.
§ 103(a) as unpatentable over the combination of Kim and Zee is reversed.
The Examiner's decision to reject claim 5 under 35 U.S.C. § 103(a) as
unpatentable over the combination of Kim, Zee, and Brock is reversed.
The Examiner's decision to reject claims 7 and 8 is affirmed.
Because we have affirmed at least one ground of rejection with
respect to each claim on appeal, the Examiner's decision is affirmed. See 3 7
C.F.R. § 41.50(a)(l).
We enter a new ground of rejection for claims 2--4 under 35 U.S.C.
§ 103 as unpatentable over the combination of Kim, Zee, and Han.
We enter a new ground of rejection for claim 5 under 35 U.S.C. § 103
as unpatentable over the combination of Kim, Zee, Brock, and Han.
TIME PERIOD
This decision contains new grounds of rejection pursuant to 37 C.F.R.
§ 41.50(b). 37 C.F.R. § 41.50(b) provides "[a] new ground of rejection
pursuant to this paragraph shall not be considered final for judicial review."
37 C.F.R. § 41.50(b) also provides that Appellants, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
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the following two options with respect to the new ground of rejection to
avoid termination of the appeal as to the rejected claims:
( 1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new evidence relating
to the claims so rejected, or both, and have the matter
reconsidered by the examiner, in which event the proceeding
will be remanded to the examiner. ...
(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same record ....
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
37 C.F.R. § 41.50(B)
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