11438720 (P.T.A.B. Mar. 17, 2015)

Ex Parte Rundle et al

Patent Trial and Appeal BoardMar 17, 2015

11438720 (P.T.A.B. Mar. 17, 2015)

UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte ALFRED T. RUNDLE and LENNART A. SAAF ____________ Appeal 2012-003629 Application 11/438,720 Technology Center 2600 ____________ Before JAMES T. MOORE, JOHN A. JEFFERY, and DENISE M. POTHIER, Administrative Patent Judges. Opinion for the Board filed by Administrative Patent Judge DENISE M. POTHIER. Opinion Concurring filed by Administrative Patent Judge JAMES T. MOORE. POTHIER, Administrative Patent Judge. DECISION ON REQUEST FOR REHEARING Pursuant to 37 C.F.R. § 41.52, Appellants have submitted a timely Request for Rehearing dated February 17, 2015 (hereafter the “Request”), requesting rehearing of the December 17, 2014 opinion (hereafter the “Opinion” or “Op.”) affirming the Examiner’s rejection of claims 1–15. Op. 1. We have reconsidered our opinion in light of Appellants’ Request. We decline to change our prior decision that claims 1–15 fail to comply with Appeal 2012-003629 Application 11/438,720 2 the enablement requirement set forth in 35 U.S.C. § 112, first paragraph for the following reasons. Appellants assert that the Board’s conclusion that (1) the 37 C.F.R. § 1.132 declaration of Kathleen Chapman (“the Chapman declaration”) does not have persuasive weight, and (2) the claims are broader than the Examiner or Appellants described, is not supported by substantial evidence. See Request 1–5. Notably, the Federal Circuit reviews factfinding made in Board decisions for substantial evidence. See In re Gartside, 203 F.3d 1305, 1313 (Fed. Cir. 2000). On the other hand, a preponderance of evidence must be shown before the Office to support a rejection of the claims in a patent application. See Ethicon, Inc. v. Quigg, 849 F.2d 1422, 1427 (Fed. Cir. 1988). As discussed below and in the Opinion, the record reflects that a preponderance of the evidence has been demonstrated to support the rejection of claims 1–15 under 35 U.S.C. § 112, first paragraph as failing to comply with the enablement requirement. Additionally, 37 C.F.R. § 41.52(a)(1) states “[t]he request for rehearing must state with particularity the points believed to have been misapprehended or overlooked by the Board.” We thus consider the Request to address any points Appellants believe to have been misapprehended or overlooked. Regarding the Chapman declaration, Appellants contend that the Board erred in finding declaration does not have persuasive weight. Request 3–4. In particular, Appellants state: [O]ne familiar with the art would know that the study of meteorology in 1974 included knowledge of the theory of rotating fluids and of computer applications to prediction of the general circulation (see, for example, the graduate courses in Appeal 2012-003629 Application 11/438,720 3 meteorology and geophysical fluid dynamics at Yale University or MIT in 1970). A view of Greenspan, The Theory of Rotating Fluids will quickly dispel the notion that that such a study does not include a deep knowledge of applied mathematics. Request 3.1 We do not disagree with Appellants that the study of meteorology involves knowledge of rotating fluids and related computer applications. Additionally, we agree that studying rotating fluid theory involves using complex mathematics. However, as noted in the Opinion, Appellants agree that an ordinarily skilled artisan “is one with a Master’s degree in or higher in electrical engineering, computer science, or mathematics.” Op. 17 (citing App. Br. 5, 10). A Master’s degree in meteorology is not one of the stated degrees of one skilled in the art. See Chapman Decl. ¶ 1. Additionally, similar to a person with a Master’s in meteorology, a person who receives a Master’s degree in mechanical or chemical engineering also has knowledge of rotating fluid, such as fluid dynamics, and of applied mathematics. Even so, we find most people having Master’s degrees in these other fields (e.g., mechanical and chemical engineering) would not consider their degree covers the same coursework to be equivalent to a Master’s degree in electrical engineering, computer science, or mathematics. Next, Appellants state that the Board overlooked that “Digital Equipment [Corporation (DEC)] relied on Ms. Chapman to lead the editorial group for the ANSI standard for Common LISP. One skilled in the art 1 It has not been pointed out to us where the list of “graduate courses in meteorology and geophysical fluid dynamics . . . at Yale University or MIT in 1970” or “Greenspan, the Theory of Rotating Fluid,” referred to in the Request has been made part of the record. Appeal 2012-003629 Application 11/438,720 4 would know that Common LISP is a computer language for artificial intelligence develop[ed] at Symbolics and MIT.” Request 3. We acknowledge that Ms. Chapman has some experience with artificial intelligence (AI), and that Common LISP may be used in AI applications. See Op. 12 (discussing the Chapman Decl. ¶ 1; see also App. Br. 10 (noting Ms. Chapman’s “18 years experience as a software engineer, participat[ing] in the COMMON LISP ANSI standard (which was the language used in AI development) and contribut[ing] to AI development at DEC”). Even so, the Chapman declaration does not state with specificity how much of her tenure at DEC (i.e., 1983–1994) was spent on AI topics. For example, paragraph 1(e) states that Ms. Chapman was a consultant on projects involving “requirements analysis,” “operating system modification,” “taught object- oriented programming,” and “led [a] maintenance team for a networked data dictionary.” There is no persuasive evidence on this record, however, establishing the relationship, if any, between these immediately-above projects and AI. On the other hand, Ms. Chapman discusses related knowledge she has in the computer industry. See Chapman Decl. ¶ 1. For example, Ms. Chapman led a group related to standards for a computer language that may be used in AI (e.g., COMMON LISP). Ms. Chapman further describes her experiences, amounting to over fifteen years working as computer programmer, software creator, and other computer industry experience. See id. These experiences at DEC and other industry institutions also demonstrate that she has a working knowledge in the field of computer science and relevant computer industry experience. After reconsidering the totality of the evidence before us in light of Appellants’ request, we find that Appeal 2012-003629 Application 11/438,720 5 Ms. Chapman’s education and computer industry experience collectively renders her expertise reasonably commensurate with a person having a Master’s degree in computer science. As such, we modify the Opinion solely to the extent that we now consider Ms. Chapman to qualify as one of ordinary skill in the art based on this evidence. Even so, the Opinion notes other issues with the Chapman declaration. Namely, Ms. Chapman is a patent attorney for the assignee and has prepared patent applications in the past for one of the inventors, Alfred T. Rundle. See Op. 12 (citing Chapman Decl. ¶ 2). Appellants fail to address or dispute these findings. This shows that Ms. Chapman may not be a disinterested party and, therefore, lessens the declaration’s probative value. Also, the Chapman declaration states “the specification provides enough detail so that a person of ordinary skill in the art could program a computer to perform the claimed generating rules without undue experimentation.” Chapman Decl. ¶ 4. However, this is merely a conclusion and is not probative. The declaration attempts to support this statement when discussing paragraph 33 of the Specification, which states rules can be generated by using neural networks and genetic algorithm. Chapman Decl. ¶ 4(b). Even after considering the known concepts referred to in paragraph 33, the Opinion explains that “insufficient information has been provided to ordinarily skilled artisans for all embodiments encompassed by the scope of claim 1.” Op. 19. Namely, the Opinion discusses several factors that weigh against demonstrating an ordinarily skilled artisan would know how to make and use the full scope of the invention, including the “generating rules” step for the general “computer implemented method to arbitrate between results to be Appeal 2012-003629 Application 11/438,720 6 arbitrated” embodiments covered by the claims beyond the zip code example. See, e.g., Op. 5–15. As explained, even using known concepts (e.g., neural networks), one skilled in the art would not have known what to use as the inputs of the results to be arbitrated and information derived from the results to be arbitrated to perform the recited “generating rules” step of the claims. See, e.g., id. (discussing an ordinarily skilled artisan would need to know at a minimum the inputs, outputs and training set to perform the claimed “generating rules” step using a neural network technique and further stating the disclosure does not address sufficiently what information derived from the results to be arbitrated to use in the “generating rules” step). Also, the declaration describes a textbook by Winston.2 Chapman Decl. ¶ 4(c). Ms. Chapman describes techniques for generating rules (i.e., “using attach and switch” and “other examples . . . based on . . . analogy-oriented reason that results . . . from relating a known scenario with an ‘exercise’ scenario”) discussed in the book. See id. However, the discussed techniques do not address what inputs of the results to be arbitrated and what information derived from the results to be arbitrated are to be used in the recited “generating rules” step, such that one skilled in the art would have known how to make and use the full scope of the invention without undue experimentation. For these reasons, we do not find the Chapman declaration has sufficient probative value. Appellants also argue that the Board erred in construing the claims as broad, and the Examiner and the Appellants indicate the claims are narrow. 2 Patrick Henry Winston, Artificial Intelligence 415–38 (2d ed. 1984). Appeal 2012-003629 Application 11/438,720 7 Request 5.3 We disagree with this characterization. We stated “the breadth of the claims is broader than described by either the Examiner or Appellants.” Op. 18–19. Additionally, the Opinion acknowledges “there are many limitations in claim 1 narrowing its scope” and that Appellants described “the claims are not excessively broad.” Op. 18. Even so, the Opinion further states that the disputed “‘generating rules’ step is not specific, other than requiring the rules use as inputs the results to be arbitrated and some type of ‘information’ derived from the results to be arbitrated.” Id. As such, we further disagree with Appellants’ assertion that “[t]he Board did not construe the claims” (Request 5), at least concerning the specifically-discussed “generating rule” step and the “many limitations in claim 1 narrowing its scope.” Id. Appellants further contend that the Board departed from construing the claims under the broadest reasonable construction standard in light of the Specification as the disclosure would have been interpreted by an ordinarily skilled artisan. Request 5. Namely, Appellants assert the Board disregarded the Chapman declaration and “the numerous references in the Evidence Appendix.” Id. Appellants have not stated with particularity what references or portions of the references were overlooked or misapprehended by the Board. See id. Nevertheless, the Opinion considered the Chapman declaration, but as explained above and in the Opinion, we found the declaration lacked sufficient probative value. See Op. 12, 17. Appellants also assert that the claim construction of the preamble a “computer implemented method to arbitrate between results” in the Opinion 3 Page 5 of the Request has both page number 4 and 5. We presume page number 4 is a typographical error. Appeal 2012-003629 Application 11/438,720 8 “is contrary to what one skilled in the art would interpret in light of the specification.” Request 5. Specifically, Appellants assert that the claims are fully enabled “for the zip code example[] and that is sufficient to enable the full scope of the claimed invention.” Id. In essence, Appellants urge the claims be narrowly construed to the sole zip code embodiment. See id. We disagree. As noted in the Opinion, the disclosure states “‘the invention need not be limited to delivery systems for addressed pieces and could be applied to any system where arbitration of results between several procedures is required.’ Spec. ¶ 8 (italics added).” Op. 9. We thus considered how one skilled in the art would have construed claim 1 in light of the entire disclosure, and found that one skilled in the art would have considered the claims contemplate more than the zip code example, but rather are “directed to an invention of arbitrated results generally.” Id. Furthermore, we stated “[w]hen an ordinarily skilled artisan tries to determine what inputs (including characteristics of results), outputs, and training sets to use when generating rules using neural network techniques for a general computer- implemented method to arbitrate results, the above issues [addressing whether experimentation is undue] are exacerbated.” Id. Appellants have provided inadequate evidence countering these findings to demonstrate that we misapprehended the law regarding the broadest reasonable construction standard. We have considered the arguments raised by Appellants in the Request. We grant the Request to the extent that we have reconsidered our decision of December 17, 2014. We further grant the Request to the extent that we acknowledge that Ms. Chapman is a person of ordinary skill in the Appeal 2012-003629 Application 11/438,720 9 art, given her education and industry experience provides her with the expertise reasonably commensurate with a person having a Master’s degree in computer science. We deny the request with respect to making any other changes to the Opinion. REHEARING GRANTED-IN-PART UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte ALFRED T. RUNDLE and LENNART A. SAAF ____________ Appeal 2012-003629 Application 11/438,720 Technology Center 2600 ____________ Before JAMES T. MOORE, JOHN A. JEFFERY, and DENISE M. POTHIER, Administrative Patent Judges. MOORE, Administrative Patent Judge, concurring. I respectfully concur in the result. Appellants raise arguments in the request for rehearing which are not appropriate for a request for rehearing. I would dismiss the request as it does not comply with 37 C.F.R. § 41.52, insofar as the request raises new issues and introduces new evidence. msc