Ex Parte Schindler

Patent Trial and Appeal Board

Dec 29, 2016

13777416 (P.T.A.B. Dec. 29, 2016)

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.
13/777,416 02/26/2013 Sigram SCHINDLER 070285.000013 6134
20230 7590 01/03/2017
Vorys, Sater, Seymour and Pease LLP
1909 K St., NW
9th Floor
WASHINGTON, DC 20006-1152
EXAMINER
SMITH, PAULINHO E
ART UNIT PAPER NUMBER
2129
NOTIFICATION DATE DELIVERY MODE
01/03/2017 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):
patlaw @ vorys. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte SIGRAM SCHINDLER
Appeal 2016-003159
Application 13/777,416
Technology Center 2100
Before ROBERT E. NAPPI, CATHERINE SHIANG, and ALEX S. YAP,
Administrative Patent Judges.
YAP, Administrative Patent Judge.
DECISION ON APPEAL
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s
final rejection of claims 1-30, which are all the claims pending in this
application. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
1 According to Appellant, the real party in interest is Sigram Schindler
Beteiligungsgesellschaft mbH. (App. Br. 1.)
Appeal 2016-003159
Application 13/777,416
STATEMENT OF THE CASE
Introduction
Appellant’s invention relates to an Innovative Expert System that “for
a given innovation/invention the claimed Data Structure DS - structurally
being the same for any innovation/invention - meet two kinds of functional
requirements.” (Feb. 26, 2013 Specification (“Spec.”), Abstract.) Claim 1 is
illustrative, and is reproduced (with minor formatting changes) below:
1. A computer-implemented method for generating for a
“Problem of TT.O and RS, PTRCT” a data structure “PTRCT-DS”
for use by a computer expert system, the computer expert system
executing the method having a processor for generating and a
memory for storing PTRCT-DS, the method comprising:
receiving a document. 0 and therein a claim with marked-up
items (“doc.O-MUIs”) of information disclosing a technical
teaching TT.O, receiving a reference set RS of document.i with
doc.i-MUIs disclosing technical teachings TT.i, i=l,2,3, .. , and
writing all documenti, i=0,l ,2, ... , and their MUIs into the
PTrct-DS, any doc.i-MUl being called a subject matter item;
receiving a context document, document. CT, comprising an
authority's directives with doc.CT-MUIs of their wordings, and
writing document.CT and its MUIs into the PTRCT-DS, any
doc.CT-MUl being called a legal item;
and creating further subject matter and legal items by
executing this method, comprising:
(a) identifying doc.0-items of said claim of TT.O in the
following steps 1-3 as being
1) one element of the claim and generating a set
comprising exactly this claim element, and writing said set into
the PTRCT-DS;
2) a property of said claim element and generating a set
comprising this property, and writing said set into the PTRCT-DS;
3) one or more creative binary independent concepts - such
that a conjunction of mirror predicates of the one or more
creative binary independent concepts describes said property -
and generating for each of said one or more creative binary
2
Appeal 2016-003159
Application 13/777,416
independent concepts a set comprising only the each of said one
or more creative binary independent concepts, and writing said
one or more sets into the PTRCT-DS;
(b) generating for any set generated in (a) a set of doc.O-MUIs
disclosing this set's element, and writing said set of doc.O-MUIs
into the PTRCT-DS;
(c) generating for any set generated in (b) a set of I.CTs
justifying the element of this set by the user, and writing said set
of I.CTs into the PTRCT-DS;
repeating following steps (d)-(f) for any doc.i, i>0, and in said
doc.i for any doc.0-item supposed to be peer to a doc.O item as
identified in (a) 1 or (a)3;
(d) generating a set comprising for TT.i as doc.i-item
either a claim element of TT.i peer to the claim element in
step (a) 1 - if this peer claim element is not existent in doc.i,
replacing by a dummy peer claim element or a binary
independent concept of TT.i peer to the binary independent
concept in step (a)3 - if this peer binary independent concept of
TT.i is not existent or not equal to its peer binary independent
concept in TT.O, replacing by a dummy peer concept and writing
said set into the PTRCT-DS;
(e) generating for any set generated in (d) a set of doc.i-MUIs
disclosing in doc.i the item determined in (d), and writing said
set into the PTRCT-DS;
(f) generating for any set generated in (e) a set of I.CTs
justifying elements in this set by the user, and writing said set
into the PTRCT-DS;
(g) generating a set of anticipation combinations (AC)
combinable over sets of (d), and writing this set of ACs into the
PTRCT-DS;
(h) generating, for any AC generated in (g), a set of shortest
sequences of QI-CCs such that AC/mod(QCC) ants TT.O, and
writing said set into the PTRCT-DS;
(i) generating, for any sequence of Q1 -CCs generated in (h),
a set of I.CTs justifying this sequence by the user, and writing
said set into the PTRCT-DS;
(j) generating, for sets generated in (a)-(i), a set of one or
more concatenations by natural language fragments of said sets
representing a given test T- whereby the test T is defined to be a
3
Appeal 2016-003159
Application 13/777,416
set of argument chains showing that this test T holds for TT.O
over RS and level of knowledge according to doc.CT, whereby
any argument chain is limited to comprising sets from (a)-(i) as
links, which are glued together by natural language fragments -
and writing said set of concatenations into the PTRCT-DS;
(k) generating, for any set generated in (a)-(j), a real-time-
access set facilitating a real-time dialog, and writing said set into
the PTRCT-DS.
Prior Art and Rejections on Appeal
The following table lists the prior art relied upon by the Examiner in
rejecting the claims on appeal:
Szygenda et al.
(“Szygenda”) US 2008/0086507 Al
Charlesworth et al.
(“Charlesworth”) US 2002/0052870 Al
Manual of Patent Examining Procedure, 8th ed., Rev. 1
(“MPEP”)
Buckley et al., SMART High Precision: TREC 7, In E.
Voorhees & D. Harman (Eds.), (p. 285-298). (NIST
Special Publication 500-242.) (“Buckley”)
Apr. 10, 2008
May 2, 2002
Aug. 2001
1998
Claims 1-30 stand rejected under 35 U.S.C. § 112, first paragraph, as
failing to comply with the written description requirement. {See Final Office
Action (mailed Sept. 26, 2014) (“Final Act.”) 3-5.)
Claims 1-30 stand rejected under 35 U.S.C. § 112, first paragraph, as
failing to comply with the enablement requirement. {See Final Act. 2-3.)
Claims 1-30 stand rejected under 35 U.S.C. § 112, second paragraph,
as failing to comply with the definiteness requirement. {See Final Act. 5-7.)
Claims 1-30 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Szygenda in view of MPEP. {See Final Act. 7-19.)
4
Appeal 2016-003159
Application 13/777,416
Claims 2—4, 12-14, and 22-30 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Szygenda, in view of MPEP, and further
in view of Buckley. (See Final Act. 20-35.)
Claim 21 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Szygenda, in view of MPEP, and further in view of
Charlesworth. (See Final Act. 35-36.)
ANALYSIS
We have reviewed the Examiner’s rejections in light of Appellant’s
arguments that the Examiner has erred. We are not persuaded that the
Examiner erred in rejecting claims 1-30 for failing to comply with the
enablement and definiteness requirements of 35 U.S.C. § 112. We are
persuaded that the Examiner erred in rejecting claims 1-30 for failing to
comply with the written requirement of 35 U.S.C. § 112. We also do not
sustain the Examiner’s rejections under 35 U.S.C. § 103 because we find the
claims indefinite.
Written Description
The Examiner finds that claims 1-30 do not comply with the written
description requirement because these claims “are replete with examples
terms and steps that fail to comply with the written description requirement.”
(Final Act. 4.) According to the Examiner,
claim(s) contains subject matter which was not described in the
specification in such a way as to reasonably convey to one skilled
in the relevant art that the inventor or a joint inventor, or for pre-
AIA the inventor(s), at the time the application was filed, had
possession of the claimed invention.
(Final Act. 3—4.)
5
Appeal 2016-003159
Application 13/777,416
To satisfy the written description requirement, “the [original]
specification must describe an invention understandable to that skilled
artisan and show that the inventor actually invented the invention claimed.”
Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010)
(en banc). The claimed invention need not be recited in haec verba in the
original Specification to satisfy the written description requirement. Id. at
1352. “[T]he written description requirement is satisfied by the patentee’s
disclosure of ‘such descriptive means as words, structures, figures, diagrams,
formulas, etc., that fully set forth the claimed invention.”’ Enzo Biochem,
Inc. v. Gen-Probe Inc., 323 F.3d 956, 969 (Fed. Cir. 2002) (quoting
Lockwood v. Am. Airlines, Inc., 107 F.3d 1565, 1572 (Fed. Cir. 1997)). We
agree with Appellant that because the pending claim are very similar to the
original claims, which are considered to be part of the original Specification
(App. Br. 10), the pending claims are therefore supported by the original
disclosure.
Accordingly, we do not sustain the Examiner’s rejection of claims 1-
30 as failing to comply with the written description requirement under 35
U.S.C. § 112, first paragraph.
Enablement
The Examiner finds that claims 1-30 do not comply with the
enablement requirement because these claims “contain[] subject matter[,]
which was not described in the [Specification in such a way as to enable
one skilled in the art to which it pertains, or with which it is most nearly
connected, to make and/or use the invention.” (Final Act. 2-3.) Appellant
contends that “the Examiner has not considered any factor[s listed in In re
Wands, 858 F.2d 731, 737 (Fed. Cir. 1988),] in reaching the conclusion that
6
Appeal 2016-003159
Application 13/777,416
the disclosure does not satisfy the enablement requirement.” (App. Br. 8-9;
Reply Br. 2^1.) According to Appellant, the factors to be considered:
include, but are not limited to:
1. the breadth of the claims,
2. the nature of the invention,
3. the state of the prior art,
4. the level of one of ordinary skill,
5. the level of predictability in the art,
6. the amount of direction provided by the inventor,
7. the existence of working examples, and
8. the quantity of experimentation needed to make or use the
invention based on the content of the disclosure.
(Id. at 9.)
Appellant has not persuaded us that the Examiner erred. We adopt the
Examiner’s findings in the Answer (Ans. 3-5) and Final Action (Final Act.
2-3) and we add the following primarily for emphasis. It is well-established
law that the test for compliance with the enablement requirement in the first
paragraph of 35 U.S.C. § 112 is whether the disclosure, as filed, is
sufficiently complete to enable one of ordinary skill in the art to make and
use the claimed invention without undue experimentation. In re Wands, 858
F.2d at 737 (setting forth eight factors to be considered to evaluate whether a
disclosure would require undue experimentation). As an initial matter, we
note that an Examiner is not required to provide a discussion as to every
Wands factor. Here, while the Examiner has not couched the rejection under
one or more of the Wands factors, it is clear from the Examiner’s discussion
that the Examiner considered some of these Wands factors. For example,
the Examiner finds that “[tjhere is no direction in the [Specification given
7
Appeal 2016-003159
Application 13/777,416
to how a user or person would go about accomplishing the steps of a-k as
well as how a computer would automatically accomplish these same steps.”
(Ans. 4.) This shows that the Examiner has considered factors 6 (the amount
of direction provided by the inventor) and 7 (the existence of working
examples) of the Wands factors. Appellant, however, contends that one of
ordinary skill in the art, which according to Appellant is “a Ph. D in
Artificial Intelligence, semantic research or equivalents with significant
experience and/or equivalent experience,” would “be able to practice the
invention without undue experimentation upon reading the [Specification as
a whole with the various terms fully described as referred to in the terms
index filed of record.” (App. Br. 9-10.) Appellant’s assertion in this regard,
does not address the specific findings by the Examiner, and is mere attorney
argument, a conclusory statement, which is unsupported by factual evidence.
Thus, this argument is entitled to little probative value. In re Lovin, 652
F.3d 1349, 1357 (Fed. Cir. 2011); In re Geisler, 116 F.3d 1465, 1470 (Fed.
Cir. 1997); In re De Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984).
Accordingly, we sustain the Examiner’s rejection of claims 1-30 as
failing to comply with the enablement requirement under 35 U.S.C. § 112,
first paragraph.
Indefiniteness
The Examiner finds that claims 1-30 do not comply with 35 U.S.C.
§112, second paragraph because it is unclear what some of the claims
encompass. (Final Act. 5-7.) According to the Examiner:
claims 1-30 [are] replete with acronyms, symbols, notation,
formulas and relations that render the claims indefinite because
it is unclear what the terms mean and encompass. In claims 1-
30 there are multiple examples of this such as: “PRTCT”,
8
Appeal 2016-003159
Application 13/777,416
“document.0”, “mark-up items”, “document.i” “document.O-
MUI's”, ’’document-i-MUI's”, “TT.O”, “TT.i”, “subject matter
item”, “context document”, “authority’s directives”, “legal
item”, “element”, “a property”, “one or more creative
binary independent concepts”, “doc.i”, “I.CT”, “doc.0-item”,
“TT.i peer”, “Q 1-CC”, “AC/mode(Q-CC)”, “a set of one or
more concatenations”, “a real-time-access set”, “AD-TT.O-
concept”, “predicate”, “AD-X.O.n, l