Ex Parte Denesuk et al

Patent Trial and Appeal Board

Jul 18, 2016

13526424 (P.T.A.B. Jul. 18, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/526,424 06/18/2012
67232 7590 07/20/2016
CANTOR COLBURN LLP - IBM ARC DIVISION
20 Church Street
22nd Floor
Hartford, CT 06103
Matthew Denesuk
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.
ARC920020002US2 5669
EXAMINER
PHAM, KHANH B
ART UNIT PAPER NUMBER
2166
NOTIFICATION DATE DELIVERY MODE
07/20/2016 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):
usptopatentmail@cantorcolbum.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MATTHEW DENESUK, DANIEL FREDERICK GRUHL,
SRIDHAR RAJAGOP ALAN, and ANDREW S. TOMKINS
Appeal2015-002298
Application 13/526,424
Technology Center 2100
Before ROBERT E. NAPPI, CARLL. SILVERMAN, and
SCOTT B. HOWARD, Administrative Patent Judges.
HOW ARD, Administrative Patent Judge.
DECISION ON APPEAL
Appellants 1 appeal under 35 U.S.C. § 134(a) from a Final Rejection of
claims 31-35, 38--42, and 56-60, which constitute all of the claims pending
in this application. Claims 1-30, 36, 37, and 43-55 have been cancelled.
App. Br. 10, 11, 14. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
1 Appellants identify International Business Machines Corporation as the
real party in interest. App. Br. 2.
Appeal2015-002298
Application 13/526,424
THE INVENTION
The claimed invention is directed to a knowledge-based data mining
system. Abstract, Spec. p. 1.
Claim 31, reproduced below, is illustrative of the claimed subject
matter:
31. A method for collecting and associating unstructured data,
compnsmg:
receiving a plurality of documents, the documents
comprising entities of interest that consist of one or more of a
person, a date, a company, an institution, an event or a location;
analyzing, by a processor, the plurality of documents to
identify the entities of interest, wherein a direct linkage does not
exist between at least a first and a second identified entity of
interest;
determining from the plurality of documents a bridging
entity consisting of one of a person, a date, a company, an
institution, an event or a location, wherein:
a first direct linkage exists between the first
identified entity of interest and the bridging entity; and
a second direct lirJ<:age exists bet\'l/een the second
identified entity of interest and the bridging entity;
periodically determining if another bridging entity exists,
wherein a plurality of data miners use rules to process the
entities and append respective keys to the entities representing
characteristics of the entities as derived from rules embodied in
the data miners, whereby characteristics of the entities are
defined by expert authors of the data miners are identified for use
in responding to data requests from customers.
REFERENCE
The prior art relied upon by the Examiner as evidence in rejecting the
claims on appeal is:
Tamayo US 2005/0102292 Al May 12, 2005
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Application 13/526,424
REJECTION
Claims 31-35, 38--42, and 56---60 stand rejected under (pre-AIA) 35
U.S.C. § 102(e) as being anticipated by Tamayo. Final Act. 2-5.
ANALYSIS
We have reviewed the Examiner's rejection in light of Appellants'
arguments that the Examiner erred. In reaching this decision, we have
considered all evidence presented and all arguments made by Appellants.
We are not persuaded by Appellants' arguments that the Examiner erred in
rejecting claims 31-35, 38--42, and 56-60.
Appellants argue Tamayo does not disclose "determining from the
plurality of documents a bridging entity consisting of one of a person, a date,
a company, an institution, an event or a location," as recited in claim 31.
App. Br. 6-8. According to Appellants, buying a banana cannot be a
bridging event "because it is not a person, a date, a company, an institution,
an event or a location, as required by the claims." App. Br. 7; see also
Reply Br. 2. Instead, Appellants argue a banana is a product. Id.
Appellants further argue that the Examiner's claim construction is not
consistent with the specification. App. Br. 7-8 (quoting Spec. i-fi-1 57---60).
The Examiner find Tamayo discloses the determining limitation
recited in claim 31. Final Act. 3 (citing Tamayo i-f 170); Ans. 3.
Specifically, the Examiner finds Tamayo teaches buying a banana is a
bridging event that links Joe and Jim. Id. The Examiner further finds
buying a banana is an event as recited in claim 31. Id.
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During prosecution, claims must be given their broadest reasonable
interpretation while reading claim language in light of the specification as it
would be interpreted by one of ordinary skill in the art. In re Am. Acad. of
Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). However, we will not
read limitations from the specification into the claims. In re Van Geuns, 988
F.2d 1181, 1184 (Fed. Cir. 1993). Any special meaning assigned to a term
"must be sufficiently clear in the specification that any departure from
common usage would be so understood by a person of experience in the
field of the invention." Multiform Desiccants, Inc. v. Medzam, Ltd., 133
F.3d 1473, 1477 (Fed. Cir. 1998); see also Helmsderfer v. Bobrick
Washroom Equip., Inc., 527 F.3d 1379, 1381 (Fed. Cir. 2008) ("A patentee
may act as its own lexicographer and assign to a term a unique definition
that is different from its ordinary and customary meaning; however, a
patentee must clearly express that intent in the written description.").
Absent an express intent to impart a novel meaning to a claim term, the
words take on the ordinary and customary meanings attributed to them by
those of ordinary skill in the art. Brookhill-Wilk 1, LLC v. Intuitive Surgical,
Inc., 334 F.3d 1294, 1298 (Fed. Cir. 2003).
Regardless of the general contentions and imputed intended meanings
articulated by Appellants in the Appeal Brief, "[i]t is the claims that measure
the invention." See SRI Int'! v. Matsushita Elec. Corp. of Am., 775 F.2d
1107, 1121 (Fed. Cir. 1985) (en bane) (citations omitted).
Though understanding the claim language may be aided by the
explanations contained in the written description, it is important
not to import into a claim limitations that are not a part of the
claim. For example, a particular embodiment appearing in the
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Application 13/526,424
written description may not be read into a claim when the claim
language is broader than the embodiment.
SuperGuide Corp. v. DirecTV Enters, Inc., 358 F.3d 870, 875 (Fed. Cir.
2004) (citing Electro Med. Sys. S.A. v. Cooper Life Sci., Inc., 34 F.3d 1048,
1054 (Fed. Cir. 1994)). "[A]lthough the specification often describes very
specific embodiments of the invention, we have repeatedly warned against
confining the claims to those embodiments .... [C]laims may embrace
'different subject matter than is illustrated in the specific embodiments in the
specification."' Phillips v. AWH Corp., 415 F.3d 1303, 1323 (Fed. Cir.
2005) (en bane) (citations omitted).
Appellants have not persuaded us the Examiner erred in finding
buying a banana to be an event as recited in claim 31. We have reviewed the
sections of the Specification cited by Appellants and do not find a special
definition of the term event. Accordingly, we use the ordinary meaning of
the term, which is broad enough to encompass buying a banana. Because
Appellants' arguments are not commensurate with the scope of the claims,
they are unpersuasive. See In re Self, 671 F.2d 1344, 1348 (CCPA 1982).
Appellants also argue the Examiner did not provide sufficient
information in its rejection of the periodically determining and wherein
limitations recited in claim 31. Appellants argue the Examiner cites one
hundred and twenty-four paragraphs and does not provide a full and fair
opportunity to address the Examiner's rejection.
In the Final Action, the Examiner finds Tamayo discloses the
periodically determining and wherein limitations recited in claim 31. Final
Act. 3--4 (citing Tamayo i-fi-173-197). In the Answer, the Examiner relies on
only three paragraphs from the original range-paragraphs 82, 84, and 86---
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Application 13/526,424
to support the finding that Tamayo teaches the periodically determining and
wherein limitations recited in claim 31. Ans. 3--4.
In response to the limited citations set forth in the Answer, Appellants
argue the Answer should be considered a new ground of rejection. Reply
Br. 4. Appellants further contend that the cited sections do not disclose the
disputed claim limitation. Id.
We are not persuaded by Appellants' arguments. As our reviewing
Court has held, "all that is required of the office to meet its prima facie
burden of production is to set forth the statutory basis of the rejection and
the reference or references relied upon in a sufficiently articulate and
informative manner as to meet the notice requirement of [35 U.S.C.] § 132."
In re Jung, 637 F.3d 1356, 1363 (Fed. Cir. 2011). We have reviewed the
Examiner's Answer (Ans. 3--4) and conclude that the notice requirement is
satisfied in this case by "the examiner's discussion of the theory of
invalidity ... , the prior art basis for the rejection ... , and the identification
of where each limitation of the rejected claims is shown in the prior art
reference by [paragraph] number." Jung, 637 F.3d at 1363. The citation of
three paragraphs does not impose an undue burden on the Appellants so that
they do not have a full and fair opportunity to respond.
Additionally, Appellants contention that the Examiner erred by not
designating a new ground of rejection does not persuaded us the Examiner
erred. Appellants did not file a petition to request that the Answer should be
designated a new ground of rejection and that prosecution should be
reopened. See 37 C.F.R. § 41.40(a); see also MPEP 1207.03(b) (A petition
should be filed "if an appellant feels an answer includes a new ground of
rejection that has not been designated as such and wishes to reopen
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Application 13/526,424
prosecution."). Instead, by filing a Reply Brief~ Appellants elected to
maintain the appeal. Id.
Finally, besides the new ground of rejection argument discussed
above, Appellants' argument consists essentially of quoting the claim
language twice and a naked assertion that the corresponding limitation is not
present in the prior art:
In the Examiner's Answer, the Examiner for the first time, has
pointed to paragraphs [0082], [0084] and [0086] with specificity
to assert that they teach the claimed step of periodically
determining if another bridging entity exists, wherein a plurality
of data miners use rules to process the entities and append
respective keys to the entities representing characteristics of the
entities as derived from rules embodied in the data miners,
whereby characteristics of the entities are defined by expert
authors of the data miners are identified for use in responding to
data requests from customers. First, Applicants respectfully
submit that this should constitute a new ground of rejection since
this is the first time that the Examiner has identified with the
required particularity the portion of Tamyo that he contends
teaches this claim limitation. In addition, Applicants
respectfully submit that the cited portions of Tamyo fail to teach
or disclose periodically determining if another bridging entity
exists, wherein a plurality of data miners use rules to process
the entities and append respective keys to the entities
representing characteristics of the entities as derived from rules
embodied in the data miners, whereby characteristics of the
entities are defined by expert authors of the data miners are
identified for use in responding to data requests from
customers.
Reply Br. 4 (bold underline in original, bold italics added). That is
insufficient to raise an argument that that Examiner erred. See In re Lovin,
652 F.3d 1349, 1357 (Fed. Cir. 2011) (Rule 41.37 requires "more
substantive arguments in an appeal brief than a mere recitation of the claim
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Application 13/526,424
elements and a naked assertion that the corresponding elements were not
found in the prior art."); see also 37 C.F.R. § 41.37(c)(l)(iv) ("A statement
which merely points out what a claim recites will not be considered an
argument for separate patentability of the claim."). Because Appellants have
not identified any specific errors in the Examiner's findings, "the Board will
not, as a general matter, unilaterally review those uncontested aspects of the
rejection." Frye, 94 USPQ2d at 1075.
Accordingly, we sustain the Examiner's rejection of claim 31, along
with the rejection of claims 38 and 56, which are argued on the same
grounds, and dependent claims 32-35, 39--42, and 57---60, which are not
argued separately.2
2 In the event of further prosecution, including any review for allowance, we
invite the Examiner's attention to the question of whether the claims are
patent-eligible under 35 U.S.C. § 101. Alice Corp. Pty. Ltd. v. CLS Bank
Int'!, 134 S. Ct. 2347, 2355-56 (2014). Regarding at least method claim 31,
but for the recitation of a processor, a question arises as to whether a person
would be capable of performing the contested steps or acts as mental steps,
or with the aid of pen and paper. See Cy her Source Corp. v. Retail
Decisions, Inc., 654 F.3d 1366, 1375 (Fed. Cir. 2011) ("That purely mental
processes can be unpatentable, even when performed by a computer, was
precisely the holding of the Supreme Court in Gottschalk v. Benson").
Moreover, "a method that can be performed by human thought alone is
merely an abstract idea and is not patent-eligible under§ 101."
CyberSource, 654 F.3d at 1373. We have decided the issues before us. We
leave further consideration of this § 101 issue to the Examiner.
We further invite the Examiner to consider whether the whereby clause of
the independent claims-specifically "characteristics of the entities are
defined by expert authors of the data miners are identified for use in
responding to data request from customers"-and the data miner limitation
of claim 35-"a data miner comprising a processor that executes
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DECISION
For the above reasons, we affirm the Examiner's decision rejecting
claims 31-35, 38--42, and 56-60.
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
instructions from a data miner"-are indefinite under section 112, second
paragraph.
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