Ex Parte Tran

Board of Patent Appeals and Interferences

Feb 12, 2010

10938784 (B.P.A.I. Feb. 12, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte BAO Q. TRAN
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Appeal 2009-000474
Application 10/938,784
Technology Center 2100
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Decided: February 16, 2010
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Before JAMES T. MOORE, Vice Chief Administrative Patent Judge,
HOWARD B. BLANKENSHIP, and THU A. DANG, Administrative Patent
Judges.

BLANKENSHIP, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
This is an appeal under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 1-21, which are all the claims in the application. We
have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
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Invention
Appellant’s invention relates to checking a document by identifying
all nouns and noun phrases in a portion of the document, and checking that
the first occurrence of each noun or noun phrase has proper antecedent basis.
Abstract.

Representative Claims
1. A method for checking a document, comprising:
identifying all nouns and noun phrases in a portion of the
document;
determining a claim element by locating a start word;
locating one or more contiguous non-noun words after the start
word;
locating one or more contiguous noun words after the
contiguous non-noun words; and
checking that the first occurrence of each noun or noun phrases
has proper antecedent basis and displaying any antecedent basis error.

20. An intellectual property (IP) application generation software,
comprising code to:
search for prior art, each prior art having one or more sections,
the search engine storing prior art data in a data structure;
parse the data structure to separate the prior art data into its
respective sections;
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receive data for a new IP application, the user interface having
an example coupled to the parser to receive display;
identify all nouns and noun phrases in a portion of the
document; and
check that the first occurrence of each noun or noun phrases has
proper antecedent basis and display any antecedent basis error.

Prior Art
Newman 5,774,883 Jun. 30, 1998
Tran 2001/0049707 A1 Dec. 6, 2001
Grune 2003/0004936 A1 Jan. 2, 2003

Examiner’s Rejections
Claims 11-16 and 18-21 stand rejected under 35 U.S.C. § 101 as being
directed to non-statutory subject matter.1
Claims 1-21 stand rejected under 35 U.S.C. § 112, first paragraph, as
failing to comply with the written description requirement.
Claims 1-7 and 11-16 stand rejected under 35 U.S.C. § 102(b) as
being anticipated by Newman.
Claims 8, 17, 20, and 21 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Newman and Grune.
Claims 9, 10, 18, and 19 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Newman and Tran.

1 The Examiner expressly withdraws the § 101 rejection applied against
claims 1-7, 9, and 10 under § 101. Ans. 2.
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PRINCIPLES OF LAW -- STATUTORY SUBJECT MATTER
“The four categories [of § 101] together describe the exclusive reach
of patentable subject matter. If a claim covers material not found in any of
the four statutory categories, that claim falls outside the plainly expressed
scope of § 101 even if the subject matter is otherwise new and useful.” In re
Nuijten, 500 F.3d 1346, 1354 (Fed. Cir. 2007).

ANALYSIS -- § 101 REJECTION
Because Appellant does not argue any claim in particular in response
to the § 101 rejection, we will decide the appeal with respect to this ground
of rejection on the basis of claim 20. See 37 C.F.R. § 41.37(c)(1)(vii).
The Examiner considers claims 11-16 and 18-21 to be directed to
software per se, and thus not patentable under § 101. Appellant counters
that the claims have a practical application because there is a physical
transformation of data input into a concrete, useful and tangible result. App.
Br. 5. According to Appellant, the claims include a display operation. Id. at
5-6. Thus, Appellant seems to contend that a “display operation” is a
physical transformation of data sufficient to render claims statutory.
Instant claim 20 recites an IP application generation “software
comprising code to” perform a series of steps. The “software” or the “code”
as claimed is not limited to reside in a tangible, computer-readable memory
(e.g., a disk or electronic memory element). We therefore agree with the
Examiner’s interpretation of claim 20 being directed to software per se.2 See

2 We need not, and do not, determine in this appeal whether limiting the
software or code recited in claim 20 to a computer program embodied in a
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Manual of Patent Examining Procedure § 2106.01, heading I (8th ed., Rev.
7, Jul. 2008) (“USPTO personnel should treat a claim for a computer
program, without the computer-readable medium needed to realize the
computer program’s functionality, as nonstatutory functional descriptive
material.”).
The “software” of claim 20 comprises “code” to, inter alia, “display
any antecedent basis error.” The claim does not require displaying anything,
because the claim recites, at best, “code” that, if someday reduced to a
tangible form and entered into a computer memory, would cause the
computer to display “any antecedent basis error.” Even if the claim were to
require an actual transformation of data within a computer for output to a
display, simply displaying “antecedent basis error” (e.g., highlighting text)
on an electronic display is not the type of data transformation that has been
held sufficient to make otherwise non-statutory subject matter pass muster
under § 101. See In re Bilski, 545 F.3d 943, 962-63 (Fed. Cir. 2008) (en
banc) (discussing In re Abele, 684 F.2d 902, 908-09 (CCPA 1982)).
Because claim 20 is directed to software per se, which is not within
any § 101 statutory class, we are not persuaded of error in the Examiner’s
rejection. We thus sustain the Examiner’s rejection of claims 11-16 and 18-
21 under 35 U.S.C. § 101 as being directed to non-statutory subject matter.

PRINCIPLES OF LAW -- WRITTEN DESCRIPTION
To comply with the “written description” requirement of 35 U.S.C.
§ 112, first paragraph, an applicant must convey with reasonable clarity to

tangible, computer-readable memory would result in a claim directed to
statutory subject matter.
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those skilled in the art that, as of the filing date sought, he or she was in
possession of the invention. The invention is, for purposes of the “written
description” inquiry, whatever is now claimed. Vas-Cath, Inc. v. Mahurkar,
935 F.2d 1555, 1563-64 (Fed. Cir. 1991).

ANALYSIS -- § 112, FIRST PARAGRAPH REJECTION
The Examiner submits that the claim limitations of “locating a start
word,” “locating one or more contiguous non-noun words,” “locating one or
more contiguous noun words,” and “displaying any antecedent basis error”
were “not described at all” in the Specification. Ans. 4.
With respect to the “locating” limitations, Appellant contends that
pseudo code contained in the Specification supports the claim language.
Appellant places all-cap comments or annotations next to pseudo code
appearing in the Specification to map claim language to the corresponding
pseudo code (App. Br. 6).
The Examiner responds with the (correct) observation that Appellant’s
Specification does not contain the annotations and explanation added in the
Appeal Brief, and with the general allegation that the pseudo code would not
reasonably convey to the artisan the limitations now claimed (Ans. 12-13).
However, the Examiner has failed to show that the pseudo code is not
sufficient to provide support for the “locating” recitations.
For the recitation of “displaying any antecedent basis error,”
Appellant relies on page 16, lines 26 through 29, page 24, lines 2 through 8,
and Figure 11 of the disclosure. App. Br. 7.
The text at page 24 of the Specification describes a system “embedded
in a word processor” (Spec. 23:34-35) whereby a user can check for errors in
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a patent application. The system also “performs an antecedent basis check”
(id. at 24:5). In view of what the artisan knew of word processors and
“antecedent basis” in a patent application, we find that the Specification
reasonably conveys that any antecedent basis error be displayed to the user.
Thus, while the disclosure does not provide in haec verba support for
the limitations identified by the Examiner, we agree with Appellant with
respect to deficiencies in the instant case for lack of written description. We
therefore do not sustain the rejection of claims 1-21 under 35 U.S.C. § 112,
first paragraph, as failing to comply with the written description
requirement.

FINDINGS OF FACT
Newman
1. Newman describes a method for processing patent text in a
computer, analyzing parts of the patent text, and displaying the results to a
user. The method can be coupled to work with a word processor program.
Abstract.
2. In Newman’s method, loading sections of a patent application
into computer memory involves extracting the text in the form of character
strings and “tokenizing” the text for analysis. Tokenization is the lowest
level of parsing which involves parsing character strings to identify the
boundaries of words, numbers, punctuation marks, etc. Col. 3, ll. 46-52.
3. The source patent text is thus converted from a long string of
characters to a list of tokens (e.g., words, numbers, and punctuation marks).
Col. 4, ll. 7-10.
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4. The analysis of claim sections results in the identification of
what is known in the patent art as “antecedent basis” errors. Antecedent
basis denotes the requirement that each element or step be introduced by an
indefinite article on first introduction (e.g., “a” or “an”) and thereafter by a
definite article (e.g., “the” or “said). Col. 4, ll. 22-36.
5. Identification of claim elements can be accomplished with a
combined syntactic and semantic analysis of the claim wording. For
example, claim word tokens can be scanned for key words used to introduce
claim elements, such as “a,” “an,” “the,” and “said.” Once the start of a
potential claim element has been identified, the next step is to scan forward,
examining each token for a word that can never belong in a claim element
word phrase, such as most prepositions and present tense verbs. Col. 11, ll.
22-67.
6. In the preferred embodiment, the patent analyzer program 204
(Fig. 2) communicates with the user 202 via a dialog window to take user
directions and to present results. The analyzer program can direct the word
processor program 208 to highlight relevant results in the word processor’s
display window. The analyzer dialog window describes the error or warning
while the word processing text window displays the corresponding text,
similar to the operation of a spelling checker or a grammar checker. Col. 6,
ll. 45-67.

Grune
7. Grune describes computer-aided “intelligent searching” of
patent and non-patent literature, with visual presentation of the results.
¶¶ [0028], [0040]-[0041], [0059]-[0060].
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PRINCIPLES OF LAW -- ANTICIPATION & OBVIOUSNESS
“Anticipation requires the presence in a single prior art reference
disclosure of each and every element of the claimed invention, arranged as
in the claim.” Lindemann Maschinenfabrik GMBH v. American Hoist &
Derrick Co., 730 F.2d 1452, 1458 (Fed. Cir. 1984).
The question of obviousness is resolved on the basis of underlying
factual determinations including (1) the scope and content of the prior art,
(2) any differences between the claimed subject matter and the prior art, and
(3) the level of skill in the art. Graham v. John Deere Co., 383 U.S. 1, 17
(1966).

ANALYSIS -- REJECTIONS OVER PRIOR ART
Claim 1 -- § 102 over Newman
Appellant admits that Newman determines a claim element by
identifying a start word such as “a,” “an,”, “the,” and “said.” App. Br. 8.
Appellant argues, however, that the reference does not classify the claim
element by examining words and determining whether they are nouns or not.
Id.
As the Examiner indicates, however, claim 1 does not require
classifying a claim element by examining words and determining whether
they are nouns or not. The claim recites “locating” one or more contiguous
non-noun words after the start word, and “locating” one or more contiguous
noun words after the contiguous non-noun words.
According to Appellant, the “determining a claim element by locating
a start word” and the “locating” of the noun and non-noun words are
described in the Specification at page 9, line 24 through page 10, line 10.
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See App. Br. 2-3, “Summary of Claimed Subject Matter.” According to the
Specification’s corresponding description (including pseudo code), a claim
element (“Noun Phrase String”) is presumed (i.e., determined) in the words
that follow the word “a,” “an,” “the,” or “said.” Appellant’s presumption or
determination thus matches, exactly, Newman’s description of how a claim
element is determined (FF 5).
Newman describes identifying a complete claim element by scanning
forward and finding a type of word (e.g., present tense verb) that cannot be
part of a claim element (see id.). Newman’s system thus locates one or more
contiguous non-noun words (e.g, “jet”) after the start word (e.g., “a”) and
locates one or more contiguous noun words (e.g., “engine”) after the
contiguous non-noun words (“jet”), to identify the claim element “jet
engine.”
Newman thus describes a method within the ambit of instant claim 1,
even though the reference might not describe the invention using the same
words found in the claim. For a prior art reference to anticipate in terms of
35 U.S.C. § 102, every element of the claimed invention must be identically
shown in a single reference. However, this is not an “ipsissimis verbis” test.
In re Bond, 910 F.2d 831, 832 (Fed. Cir. 1990).
We are therefore not persuaded that the Examiner erred in finding that
Newman anticipates instant claim 1.

Claims 11, 14, 15, 16 -- § 102 over Newman
Appellant makes general allegations that recitations reproduced from
claims 11, 14, 15, and 16 are not found in Newman. App. Br. 9.
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As set forth in the Answer, the Examiner finds claim 11 to be met by
Newman’s disclosure as applied against claim 1. With respect to the
checking “reference number” recitations of claims 14, 15, and 16, the
Examiner finds that corresponding limitations in other of the dependent
claims are described by Newman at column 8, lines 57 through 67.
We do not consider Appellant’s remarks in the Appeal Brief to be
arguments for separate patentability of any of claims 11, 14, 15, and 16
under current Board rules (cf. 37 C.F.R. § 41.37(c)(1)(vii)). However, to the
extent the remarks might be considered arguments for separate patentability,
and in view of Appellant’s further opportunity to demonstrate error in the
rejection (cf. Reply Br. 3), we find that the remarks in support of claims 11,
14, 15, and 16 are not persuasive of any error in the Examiner’s findings.

Claims 8, 17, 20, 21 -- § 103(a) over Newman and Grune
Appellant submits that the “Office Action” asserted that it would have
been within the skill of the art to combine Newman and Grune.
Additionally, “there was no support or explanation of this conclusion and the
rejection should be withdrawn.” App. Br. 11.
Appellant does not specify what “Office Action” the allegation might
reference, but both the Final Rejection and the Answer finds motivation to
combine in the references themselves. In particular, the Examiner finds
(e.g., Ans. 17) that one of ordinary skill in the art would have combined the
teachings of Newman and Grune in view of Grune’s teaching of a user-
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friendly, web-based tool for searching patents and non-patent literature
(¶ [0010)]. We are not persuaded of error in the Examiner’s finding.3
We also agree with the Examiner that, in the absence of evidence to
the contrary adduced by Appellant, we are not persuaded that combining a
system for analysis of patent text and drawings (Newman) with a system for
searching and retrieving patent text (Grune) would have no “reasonable
expectation of success.”
We now turn to the limitations, more specific than those contained in
claim 1, that are argued to be missing from the proposed combination of the
rejection.
According to Appellant, claim 8 (dependent on claim 1) is directed to
the downloading of prior art patents with sub-parts such as the
“Background” or “Brief Description of the Drawings,” so that “novice”
users can view as examples. App. Br. 12. Appellant argues that paragraph
[0053] of Grune fails to teach the entirety of claim 8. Id. at 12-13.
The Final Rejection (at 9-10) with respect to claim 8, however, relied
on much more than the paragraph [0053] teachings of Grune. Moreover, the
rejection over Newman and Grune has been refined in the Answer, perhaps
in view of Appellant’s amplification in the Appeal Brief of what claim 8 is
thought to require. In the rejection set forth in the Answer, the Examiner
relies on paragraph [0051], rather than paragraph [0053], for the teaching of
“separating the downloaded prior art into corresponding prior art sub-parts.”
Ans. 9. Paragraph [0051] of Grune describes sub-parts of patent documents,

3 The presence or absence of a motivation to combine references in an
obviousness determination is a pure question of fact. In re Gartside, 203
F.3d 1305, 1316 (Fed. Cir. 2000).
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such as claims or inventors. Paragraph [0053] of Grune describes sub-parts
of non-patent literature, such as abstracts or summaries.
Appellant responds in the Reply Brief (at 4) that nothing in paragraph
[0053] (which is no longer applied in the rejection) discloses the entirety of
claim 8.
In view of the foregoing, we are not persuaded of any error in the
Examiner’s rejection of claim 8, and sustain the rejection. Claims 17, 20,
and 21 fall with claim 8. See 37 C.F.R. § 41.37(c)(1)(vii).

Claims 9, 10, 18, 19 -- § 103(a) over Newman and Tran
With respect to claim 9, Appellant submits there is no suggestion in
Newman to file documents with agencies over the Internet. App. Br. 14.
However, as the Examiner correctly notes, the rejection relies on Tran
(¶ [0017]) for a teaching of filing documents with agencies over the Internet.
Claim 10 recites the method of claim 9, wherein the agency is “one
of” a patent office and a security exchange commission. Notwithstanding
Appellant’s position (App. Br. 14), we agree with the Examiner that
Newman at least suggests filing a document (a patent application) with a
patent office. Moreover, Tran paragraph [0017], applied against the claim
from which claim 10 depends, discusses electronic patent filing with the
“Patent Office,” which also teaches or suggests, at the least, that the agency
is a “patent office.”
We therefore sustain the rejection of claims 9 and 10. Claims 18 and
19 fall with claim 9 or 10. See 37 C.F.R. § 41.37(c)(1)(vii).

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Conclusion
Because Appellant has not demonstrated that any claim on appeal has
been rejected in error, we sustain the Examiner’s rejections over the applied
prior art.

DECISION
The rejection of claims 11-16 and 18-21 under 35 U.S.C. § 101 as
being directed to non-statutory subject matter is affirmed.
The rejection of claims 1-21 under 35 U.S.C. § 112, first paragraph, as
failing to comply with the written description requirement is reversed.
The rejection of claims 1-7 and 11-16 under 35 U.S.C. § 102(b) as
being anticipated by Newman is affirmed.
The rejection of claims 8, 17, 20, and 21 under 35 U.S.C. § 103(a) as
being unpatentable over Newman and Grune is affirmed.
The rejection of claims 9, 10, 18, and 19 under 35 U.S.C. § 103(a) as
being unpatentable over Newman and Tran is affirmed.
Because we have sustained at least one ground of rejection against
each claim on appeal, the Examiner’s decision 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). See 37 C.F.R.
§ 41.50(f).

AFFIRMED

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