12544738 (P.T.A.B. Dec. 17, 2018)

Ex Parte Stading et al

Patent Trial and Appeal BoardDec 17, 2018

12544738 (P.T.A.B. Dec. 17, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 12/544,738 08/20/2009 102662 7590 12/19/2018 Cesari & Reed, L.L.P. 1114 Lost Creek Boulevard Suite 430 Austin, TX 78746 FIRST NAMED INVENTOR Tyron Stading 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. 3025.009usl 9925 EXAMINER MORRIS, JOHN J ART UNIT PAPER NUMBER 2157 NOTIFICATION DATE DELIVERY MODE 12/19/2018 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): usptomail@cesari-reed.com eofficeaction@appcoll.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Exparte TYRON STADING, ROJI JOHN, and SHU-WAI CHOW Appeal2018-002073 Application 12/544,738 Technology Center 2100 Before DENISE M. POTHIER, JOHNNY A. KUMAR, and STEVEN M. AMUNDSON, Administrative Patent Judges. AMUNDSON, Administrative Patent Judge. DECISION ON APPEAL Appellants 1 seek our review under 35 U.S.C. Â§ 134(a) from a final rejection of claims 1-7 and 9-23, which are all the pending claims. We have jurisdiction under 35 U.S.C. Â§ 6(b ). We affirm. 1 Appellants identify the real party in interest as Innography, Inc. App. Br. 1. Appeal2018-002073 Application 12/544,738 STATEMENT OF THE CASE The Invention According to the Specification, the invention "relates generally to a system and methods of relating trademarks and patent documents." Spec. ,r 1. 2 The Specification explains that "instructions ... executed by at least one processor, cause a computing system to perform operations including automatically defining one or more associations between a trademark record and a patent document and storing the one or more associations as mappings between trademarks and patent documents." Id. Abstract. Exemplary Claim Independent claim 1 exemplifies the claims at issue and reads as follows: 1. A memory device embodying instructions that, when executed by at least one processor, cause a computing system to perform operations comprising: automatically classifying a plurality of trademarks and a plurality of patent documents into a plurality of pre-determined classifications using a learner module, the plurality of predetermined classifications comprising international patent classifications; automatically identifying one or more associations between a trademark record and a patent document based in part on the plurality of pre-determined classifications; 2 This decision uses the following abbreviations: "Spec." for the Specification, filed August 20, 2009; "Final Act." for the Final Office Action, mailed December 14, 2016; "App. Br." for the Appeal Brief, filed June 14, 2017; "Ans." for the Examiner's Answer, mailed October 18, 2017; and "Reply Br." for the Reply Brief, filed December 18, 2017. 2 Appeal2018-002073 Application 12/544,738 selectively adjusting a weight of the one or more associations based on ancillary data extracted from at least one of a web page and a document, the ancillary data including information corresponding to at least one of the trademark record and the patent document; and storing the one or more associations as mappings between trademarks and patent documents for subsequent correlation to a set of search results. App. Br. 10 (Claims App.). The Prior Art Supporting the Rejection on Appeal As evidence ofunpatentability, the Examiner relies on the following prior art: Budzyn Barney US 2004/0230568 Al US 2007 /0073748 Al The Rejection on Appeal Nov. 18, 2004 Mar. 29, 2007 Claims 1-7 and 9-23 stand rejected under 35 U.S.C. Â§ I03(a) as unpatentable over Budzyn and Barney. Final Act. 4--23. 3 ANALYSIS We have reviewed the rejections in light of Appellants' arguments that the Examiner erred. For the reasons explained below, we concur with the Examiner's conclusions concerning unpatentability underÂ§ I03(a). We adopt the Examiner's findings and reasoning in the Final Office Action (Final Act. 2-23) and Answer (Ans. 2-24). We add the following to address and emphasize specific findings and arguments. 3 The rejection under 35 U.S.C. Â§ 101 has been withdrawn. Ans. 21. 3 Appeal2018-002073 Application 12/544,738 TheÂ§ 103(a) Rejection of Independent Claims 1, 7, and 15 "SELECTIVELY ADWSTING A WEIGHT ... BASED ON ANCILLARY DATA" Appellants argue that the Examiner erred in rejecting independent claims 1, 7, and 15 because Barney does not teach or suggest the following limitation in claim 1 and similar limitations in claims 7 and 15: "selectively adjusting a weight of the one or more associations based on ancillary data extracted from at least one of a web page and a document, the ancillary data including information corresponding to at least one of the trademark record and the patent document." See App. Br. 6-8; Reply Br. 4---6. Appellants concede that Barney discloses that (1) overlapping citations (forward and backward) "provide relational citation analysis to group or otherwise cluster related patents," (2) "citation counts can be weighted, scored, or normalized," and (3) "other techniques can be used to determine relatedness for the purpose of clustering or otherwise grouping patents." App. Br. 7 (citing Barney ,r,r 135-155); see Reply Br. 4. But Appellants contend that Barney categorizes documents "based on term frequency or other analysis of text contained in the two related documents" and "not based on ancillary data as recited in" the claims. App. Br. 7; see Reply Br. 4--5. Appellants also contend that Barney's weighting depends on the "contents of the documents themselves" and not "on ancillary data as recited in" the claims. App. Br. 8; see Reply Br. 5---6. Further, Appellants assert that the claimed "ancillary data" differs from ( 1) the plurality of trademarks or trademark records and (2) the plurality of patent or other documents specified in the claims. Reply Br. 5---6. Appellants' arguments do not persuade us of Examiner error because the Examiner relies on the combined disclosures in Budzyn and Barney as 4 Appeal2018-002073 Application 12/544,738 teaching or suggesting the disputed weight-adjusting limitations in the independent claims. See Final Act. 4--7, 10-13, 16-19; Ans. 2---6, 8-11, 14--17. Specifically, the Examiner finds that Budzyn discloses automatically classifying trademarks and patent documents and automatically identifying associations between trademark records and patent documents. See Final Act. 4--5, 7, 10-11, 16-17; see also Budzyn ,r,r 8-9, 15, 18-28, 35--43, Abstract, Figs. 1--4. Further, the Examiner finds that Barney discloses "a relevancy weighting of the association between a patent document, including international documents, and a non-patent document." See Final Act. 7; see also Barney ,r,r 4, 11-12, 23, 65---66, 132, 135-156, 173, 211-212, 223. The Examiner cites Barney's paragraph 148 as teaching or suggesting weighting according to the disputed weight-adjusting limitations. Final Act. 3, 7, 12-13, 19; Ans. 22-24. Paragraph 148 describes a "preferred technique for measuring contextual relatedness ... between one or more patent documents and/or other documents" by "count[ing] the number of common or overlapping words in the title, abstract, claims and/or description, and weighting each word substantially inversely to its determined frequency within a statistically relevant sample of similar documents." Barney ,r 148. In the Answer, the Examiner reasons that the "determined frequency" within the "statistically relevant sample of similar documents" corresponds to the claimed "ancillary data" because the "determined frequency" is data "extracted" or "derived" from "documents external to the analyzed documents" and "used to adjust the weight" of the relatedness between the analyzed documents. Ans. 22-24. In the Reply Brief, Appellants do not address the Examiner's reasoning regarding Barney's paragraph 148. Reply Br. 1-7. 5 Appeal2018-002073 Application 12/544,738 In addition, Budzyn discloses obtaining data from Internet-based databases to evaluate the relatedness between trademark records and patent documents. Budzyn ,r,r 2, 9, 30, 32-33, 36. For instance, Budzyn discusses corporate and financial databases, such as Dun & Bradstreet, litigation databases, such as PACER, and copyright databases. Id. ,r,r 30, 32-33, 36. Budzyn also discloses obtaining product information from company websites. Id. ,r,r 34, 47, Fig. 5. Similarly, the Specification explains that ancillary data for weighting purposes may comprise "litigation data, corporate data, enterprise revenue data, financial information, data from web sites, [and] text of whitepapers," including information about "litigation involving a particular trademark, corporate earnings data identifying products or trademarks, and other information." Spec. ,r 132; see id. ,r 134 ( describing ancillary data retrieved from PACER). Thus, the combined disclosures in Budzyn and Barney teach or suggest the disputed weight-adjusting limitations in the independent claims. See Final Act. 4--7, 10-13, 16-19; Ans. 2---6, 8-11, 14--17, 22-24; Budzyn ,r,r 2, 9, 30, 32-34, 36, 47, Fig. 5; Barney ,r,r 12, 62---66, 148, 173, 223. APPELLANTS' NEW ARGUMENTS IN THE REPLY BRIEF In the Reply Brief, Appellants argue for the first time that Budzyn and Barney do not "disclose or otherwise render obvious" claim 1 's "automatically classifying" and "automatically identifying" limitations and that "one skilled in the art would not be motivated to modify" Budzyn's teachings with Barney's teachings. Reply Br. 1--4. Appellants' new arguments about claim 1 are not responsive to an argument in the Answer. See Ans. 2-24. For example, when making their new arguments, Appellants cite page 4 in the Answer. Reply Br. 2-3. But pages 2-21 in the Answer 6 Appeal2018-002073 Application 12/544,738 contain theÂ§ 103(a) rejection copied from pages 4--23 in the Final Office Action. Compare Ans. 2-21, with Final Act. 4--23. Appellants make no attempt to explain how their new arguments address a statement in the Answer's Response to Argument section. See Reply Br. 1--4; see also Ans. 22-24. Appellants have not shown good cause for us to consider their new arguments. See Reply Br. 1-7. Hence, we decline to consider them. See 37 C.F.R. Â§ 41.41(b)(2); see also Ex parte Borden, 93 USPQ2d 1473, 1475 (BP AI 2010) (informative) ( discussing procedural difficulties with belated arguments). "Considering an argument advanced for the first time in a reply brief ... is not only unfair to an appellee, but also entails the risk of an improvident or ill-advised opinion on the legal issues tendered." McBride v. Merrell Dow & Pharm., Inc., 800 F.2d 1208, 1211 (D.C. Cir. 1986). SUMMARY FOR THE INDEPENDENT CLAIMS For the reasons discussed above, Appellants' arguments have not persuaded us that the Examiner erred in rejecting the independent claims underÂ§ 103(a). Hence, we sustain theÂ§ 103(a) rejection of the independent claims. TheÂ§ 103(a) Rejection of Dependent Claims 2-6, 9-14, and 16-23 Claims 2---6 depend directly or indirectly from claim 1; claims 9-14 depend directly or indirectly from claim 7; and claims 16-23 depend directly or indirectly from claim 15. Appellants do not argue patentability separately for the dependent claims. App. Br. 6-9; Reply Br. 1-7. Thus, we sustain theÂ§ 103(a) rejection of the dependent claims for the same reasons as the independent claims. See 37 C.F.R. Â§ 4I.37(c)(l)(iv). 7 Appeal2018-002073 Application 12/544,738 DECISION We affirm the Examiner's decision to reject claims 1-7 and 9-23. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. Â§ 1.136(a)(l)(iv). See 37 C.F.R. Â§ 41.50(Â±). AFFIRMED 8