Ex Parte Snider

Patent Trial and Appeal Board

Jun 29, 2016

12711503 (P.T.A.B. Jun. 29, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
121711,503 02/24/2010
23628 7590 07/01/2016
WOLF GREENFIELD & SACKS, P.C.
600 ATLANTIC A VENUE
BOSTON, MA 02210-2206
FIRST NAMED INVENTOR
James H. Snider
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.
S 173 8. 70000USOO 1882
EXAMINER
HUTTON, NAN
ART UNIT PAPER NUMBER
2154
NOTIFICATION DATE DELIVERY MODE
07/01/2016 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):
Patents_eOfficeAction@WolfGreenfield.com
WGS_eOfficeAction@WolfGreenfield.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Exparte JAMES H. SNIDER
Appeal2015-002125
Application 12/711,503
Technology Center 2100
Before ERIC B. CHEN, KEVIN C. TROCK, and ADAM J. PYONIN,
Administrative Patent Judges.
CHEN, Administrative Patent Judge.
DECISION ON APPEAL
Appeal2015-002125
Application 12/711,503
This is an appeal under 35 U.S.C. § 134(a) from the final rejection of
claims 1-26, all the claims pending in the application. We have jurisdiction
under 35 U.S.C. § 6(b). We affirm.
STATEMENT OF THE CASE
Appellant's invention relates to computer-implemented automated
conflict of interest reporting using a bias ontology. (Abstract.)
Claim 1 is exemplary, with disputed limitation in italics:
1. A method of identifying one or more conflicts of interest
between a principal and an agent, the method comprising:
receiving a notification that the agent has performed a covered
action on behalf of the principal, wherein the covered action is
associated with the agent in a bias ontology describing a machine-
readable format for specifying components of an agency claim,
wherein the agency claim includes one or more covered interests and
one or more covered actions for the agent, and wherein each covered
interest and each covered action in the agency claim is associated with
at least one machine-readable tag identifying an individual or group of
individuals to which the covered interest or covered action refers,
wherein the machine-readable tags in the bias ontology enable the
determination of linkages between covered actions and covered
interests to facilitate the identification of potential conflicts of interest
for the agent, wherein the notification includes at least one machine-
readable tag identifying at least one beneficiary of the covered action;
searching, in response to receiving the notification, a plurality
of network-connected information sources to identify at least one
covered interest for the agent, wherein at least one of the plurality of
network-connected information sources includes data associated with
metadata consistent with the bias ontology, wherein the at least one
covered interest reflects a monetary, in kind, or nepotistic relationship
between the agent and the at least one beneficiary of the covered
action, and wherein the searching is performed based, at least in part,
on the at least one machine readable tag included in the notification;
and
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Application 12/711,503
associating, with at least one processor, the at least one covered
interest with the covered action in response to identifying the at least
one covered interest for the agent.
Claims 1-21, 23, 25, and 26 stand rejected under 35 U.S.C. § 103(a)
as unpatentable over Frayman (US 2011/0093453 Al; Apr. 21, 2011) and
Aleman-Meza (Boanerges Aleman-Meza et al., Semantic Analytics on Social
Networks: Experiences in Addressing the Problem of Conflict of Interest
Detection, 15 PROC. INT'L WORLD WIDE WEB CONF. 407-16 (2006)).
Claim 22 stands rejected under 35 U.S.C. § 103(a) as unpatentable
over Frayman, Aleman-Meza, and Sanderlin (US 2006/0184457 Al;
Aug. 17, 2006).
Claim 24 stands rejected under 35 U.S.C. § 103(a) as unpatentable
over Frayman, Aleman-Meza, and Sweeney (US 2005/0004837 Al; Jan. 6,
2005). 1
ANALYSIS
Claims 1-13 and 25
First, we are unpersuaded by Appellant's arguments (Br. 10) that the
combination of Frayman and Aleman-Meza would not have rendered
obvious independent claim 1, which includes the limitation "receiving a
notification that the agent has performed a covered action on behalf of the
principal."
1 Appellant does not present any arguments with respect to the rejections of
dependent claims 22 and 24 under 35 U.S.C. §103(a). Thus, any such
arguments are deemed to be waived.
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Application 12/711,503
The Examiner found that the risk evaluation module of Frayman,
which generates conflicts check reports, corresponds to the limitation
"receiving a notification that the agent has performed a covered action on
behalf of the principal." (Ans. 4--5; see also Final Act. 3--4.) In particular,
the Examiner found that "[i]n Frayman, the law firm is the agent; the new
client is the principal; and the new client engagement/representation activity
is the covered action" (Ans. 4 (emphases omitted)) and "[w]hen the law firm
(the agent) engaging/representing (performs the covered action) of the new
client (principal), the system receives the search request (notification) and
performs the conflict of interest search" (id. 4--5). We agree with the
Examiner.
Frayman relates to "identifying, assessing and clearing conflicts of
interest" (i-f 2), for example, "before an attorney (or a law firm) can engage
and represent a potential new client ... the attorney (or law firm) must
ensure that the new client representation does not, and will not, present a
conflict of interest" with an existing client (i-f 3). Frayman explains that "risk
evaluation module 60 receives and processes requests to generate conflicts
check reports that display, among other things, current client representations
that may conflict with a potential new client representation." (i-f 35.)
Because Frayman explains that before a law firm (i.e., the claimed "agent")
can engage and represent (i.e., the claimed "covered action") a new client
(i.e., the claimed "principal"), a risk evaluation module generates conflicts
checks with current clients, Frayman teaches the limitation "receiving a
notification that the agent has performed a covered action on behalf of the
principal."
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Application 12/711,503
Appellant argues "[t]he Office Action concedes that Frayman does not
teach receiving such a notification, but asserts that Aleman-Meza teaches
this type of notification because the system of Aleman-Meza allegedly
'detects that reviewers (agent) are assigned to review (covered action) the
papers of authors (principal)."' (Br. 10.) Contrary to Appellant's
arguments, the Examiner cited Frayman, rather than Aleman-Meza, for
teaching the limitation "receiving a notification that the agent has performed
a covered action on behalf of the principal." (Ans. 4--5.)
Thus, we agree with the Examiner that the combination of Frayman
and Aleman-Meza would have rendered obvious independent claim 1, which
includes the limitation "receiving a notification that the agent has performed
a covered action on behalf of the principal."
Second, we are unpersuaded by Appellant's arguments (Br. 11-12)
that the combination of Frayman and Aleman-Meza would not have
rendered obvious independent claim 1, which includes the limitation "for
specifying components of an agency claim, wherein the agency claim
includes one or more covered interests and one or more covered actions for
the agent."
The Examiner found that the Semantic Web application of Aleman-
Meza, which detects Conflict of Interest (COI) relationships, corresponds to
the limitation "for specifying components of an agency claim, wherein the
agency claim includes one or more covered interests and one or more
covered actions for the agent." (Ans. 6-7; see also Final Act. 5.) In
particular, the Examiner found that "[i]n Aleman-Meza, the reviewer is the
agent; the author is the principal; and the reviewing process is the covered
action" and
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Aleman-Meza discloses that the system uses ontology to identify
the entities (reviewers, authors and other people who has
relationship with them in the social network); the system also
uses ontology to identify links between entities
(linkage/relationships between the reviewer and authors and
other people who has relationship with them in the social
network).
(Ans. 6 (emphases omitted).) We agree with the Examiner.
Aleman-Meza relates to "a Semantic Web application that detects
Conflict of Interest (COI) relationships among potential reviewers and
authors of scientific papers" such that this "application discovers various
'semantic associations' between the reviewers and authors in a populated
ontology to determine a degree of Conflict of Interest." (Abstract.)
Aleman-Meza explains that "Conflict of Interest (COI) is typically known as
a situation that may bias a decision" that "can be caused by a variety of
factors such as family ties, business or friendship ties and access to
confidential information" and "[d]etecting COI is necessary in many
situations, such as contract allocation, IPO (Initial Public Offerings) or
company acquisitions, corporate law and peer-review of scientific research
papers or proposals." (§ 1, para. 1 (footnote omitted).) Because Aleman-
Meza provides a Semantic Web application in which a conflict of interest
between an author (i.e., the claimed "principal") and reviewer (i.e., the
claimed "agent"), in which the reviewer peer-reviews scientific research
papers or proposals (i.e., the claimed "agency claim"), Aleman-Meza
teaches the limitation "for specifying components of an agency claim,
wherein the agency claim includes one or more covered interests and one or
more covered actions for the agent."
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Appellant argues that "[t]he ontology used in the system of Aleman-
Meza to combine friend-of-a-friend information from a social network and
database (DBLP) information is shown in Figure 2 of Aleman-Meza" and
the ontology of Aleman-Meza does not include any components
of an agency claim, covered interests, or covered actions for an
agent, and the Office Action fails to identify which parts of
Aleman-Meza's ontology the Office is considering to be
components of an agency claim, covered interests, or covered
actions for an agent.
(Br. 12.) Contrary to Appellant's arguments, Aleman-Meza explains that its
Semantic Web application is for the purpose of detecting Conflict of Interest
(COI) relationships. Furthermore, the Examiner has identified the features
of Aleman-Meza that correspond to the claimed "agency claim," "covered
interest," and "covered action" (Ans. 6), whereas Appellant has not provided
any persuasive arguments or evidence as to why the Examiner's findings are
improper.
Thus, we agree with the Examiner that the combination of Frayman
and Aleman-Meza would have rendered obvious independent claim 1, which
includes the limitation "for specifying components of an agency claim,
wherein the agency claim includes one or more covered interests and one or
more covered actions for the agent."
Last, we are unpersuaded by Appellant's arguments (Br. 8-9) that the
Examiner improperly combined Frayman and Aleman-Meza.
The Examiner acknowledged that Frayman does not disclose all the
limitations of independent claim 1 and therefore, relied on Aleman-Meza for
a Semantic Web application in which a conflict of interest between an author
and reviewer. (Final Act. 5---6.) The Examiner concluded that "it would
have been obvious ... to modify the teachings of Frayman with the
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teachings of Aleman-Meza" (id. at 6) because "Aleman-Meza improves the
COI detection system and method in Frayman by integrating different
semantic and semi-structured social networks" (Ans. 3). We agree with the
Examiner.
As discussed previously, Frayman explains that "risk evaluation
module 60 receives and processes requests to generate conflicts check
reports that display, among other things, current client representations that
may conflict with a potential new client representation." (i-f 35.)
Also discussed previously, Aleman-Meza explains that "a Semantic
Web application that detects Conflict of Interest (COI) relationships among
potential reviewers and authors of scientific papers." (Abstract.) Aleman-
Meza further explains that "[i]n some cases, it can be difficult to detect COI
because of the lack of available information," but "in many other cases,
there exists implicit and/or explicit information in the form of social
networks, such as those on the Web." (§ 1, para. 2.)
A person of ordinary skill in the art would have recognized that
incorporating the Semantic Web application of Aleman-Meza, for detecting
Conflict of Interest (COI) relationships, with the risk evaluation module of
Frayman for generating conflicts check reports would improve Frayman by
providing the advantage of increasing the available information from social
networks. See KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007) ("[I]f
a technique has been used to improve one device, and a person of ordinary
skill in the art would recognize that it would improve similar devices in the
same way, using the technique is obvious unless its actual application is
beyond his or her skill."). Therefore, we agree with the Examiner (Final
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Act. 6) that modifying Frayman with the Semantic Web application of
Aleman-Meza would have been obvious.
Appellant argues that "[ t ]he combination of Frayman and Aleman-
Meza is improper because one of ordinary skill in the art would not have
combined Frayman and Aleman-Meza" and "the Office Action provides
nothing more than conclusory statements regarding why one of ordinary
skill in the art could have made the proposed modification, and why the
results would have been predictable." (Br. 8.) Contrary to Appellant's
arguments, as discussed previously, the combination of Frayman and
Aleman-Meza is based on the improvement of a similar device in the same
way as in the prior art.
Therefore, the Examiner has properly combined of Frayman and
Aleman-Meza to reject independent claim 1 under 35 U.S.C. § 103(a).
Accordingly, we sustain the rejection of independent claim 1 under 35
U.S.C. § 103(a). Claims 2-13 depend from claim 1, and Appellant has not
presented any substantive arguments with respect to these claims.
Therefore, we sustain the rejection of claims 2-13 under 35 U.S.C. § 103(a),
for the same reasons discussed with respect to independent claim 1.
Independent claim 25 recites limitations similar to those discussed
with respect to independent claim 1, and Appellant has not presented any
substantive arguments with respect to this claim. We sustain the rejection of
claim 25 for the same reasons discussed with respect to claim 1.
Claims 14-21, 23, and 26
With respect to independent claims 14 and 26, Appellant merely
reiterates arguments previously presented with respect to Frayman and
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Aleman-Meza. (Br. 12-13.) We sustain the rejection of independent
claims 14 and 26, as well as dependent claims 15-21 and 23, for the same
reasons discussed with respect to rejection of claims 1 and 25 under 35
U.S.C. § 103(a) as unpatentable over Frayman and Aleman-Meza.
DECISION
The Examiner's decision rejecting claims 1-26 is affirmed.
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
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