Ex Parte Kothari et al

Patent Trial and Appeal Board

Mar 24, 2016

12193803 (P.T.A.B. Mar. 24, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/193,803 08/19/2008 Ravi Kothari
29154 7590 03/28/2016
FREDERICK W, GIBB, III
GIBB & RILEY, LLC
844 West Street
SUITE 200
ANNAPOLIS, MD 21401
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.
IN920050006US2 5516
EXAMINER
LIU, HEXING
ART UNIT PAPER NUMBER
2167
NOTIFICATION DATE DELIVERY MODE
03/28/2016 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):
support@gibbiplaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte RA VI KOTHARI and SOUGATA MUKHERJEA
Appeal2014-004366
Application 12/193,803
Technology Center 2100
Before THU A. DANG, JOHN P. PINKERTON, and
JEFFREY A. STEPHENS, Administrative Patent Judges.
DANG, Administrative Patent Judge.
DECISION ON APPEAL
Appeal2014-004366
Application 12/193,803
I. STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Final Rejection
of claims 1, 2, 4--8, 10-13, 15 and 16. Appellants previously canceled
claims 3, 9, and 14. We have jurisdiction under 35 U.S.C. § 6(b ).
We AFFIRM.
A. INVENTION
According to Appellants, the claimed invention relates "generally to
document searching and retrieval and, in particular, to a comparison of
documents using multiple similarity measures." Spec. i-f 2.
B. ILLUSTRATIVE CLAIM
Claim 1 is exemplary:
1. A computer-implemented knowledge retrieval system, comprising:
a memory that stores inventors, assignees, titles, and abstracts from
biomedical patents, a baseform and semantic class for each annotated term
from said titles and said abstracts from a biomedical ontology including a
Unified Medical Language System (UMLS), and for each chemical term
identified in said annotated terms, a molecular fingerprint representation of
each chemical term, which contains a list of all atoms within a chemical
structure, together with bond information that that describes exactly how
individual atoms are linked together; and
a processor that:
extracts said inventors, said assignees, said titles, and said
abstracts from said biomedical patents;
annotates terms from said titles and said abstracts by utilizing
said biomedical ontology that provides said baseform and said
semantic class for each annotated term;
derives from said baseform of each chemical term identified in
said annotated terms, based on a connection table, said molecular
fingerprint representation of each chemical term, which contains a list
of all atoms within said chemical structure, together with bond
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Application 12/193,803
information that that describes exactly how individual atoms are
linked together; and
retrieves from said memory, including said inventors, said
assignees, said titles, and said abstracts from said biomedical patents,
said baseform and said semantic class for each annotated term from
said titles and said abstracts from said biomedical ontology, and for
each chemical term identified in said annotated terms, said molecular
fingerprint representation of each chemical term, which contains said
list of all atoms within said chemical structure, together with said
bond information that that describes exactly how said individual
atoms are linked together, based on input search criteria.
1. REJECTIONS
The prior art relied upon by the Examiner as evidence in rejecting the
claims on appeal is:
Kim
Gardner
US 2006/0182571 Al
US 2006/0053173 Al
Aug. 18, 2005
Mar. 9, 2006
V. J. Gillet et al; "Similarity and Dissimilarity Methods for
Processing Chemical Structure Databases," The Computer Journal,
Vol. 41, No.8, 1998 ("Gillet").
Claims 1, 2, 4--8, 10-13, 15 and 16 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over the combination of Kim, Gillet, and
Gardner.
II. ISSUE
The principal issue before us is whether the Examiner erred in finding
the combination of Kim, Gillet, and Gardner teaches or at least suggests the
disputed limitations "a memory that stores ... abstracts from biomedical
patents" and "a processor that extracts" the abstracts, "annotates terms from"
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Application 12/193,803
the abstracts, and "retrieves" the abstracts from the memory (claim 1,
emphasis added).
III. FINDINGS OF FACT
Kim
1. Kim discloses parsing a patent document including the specification,
claim, drawings, sequence lists, and bibliographic data related with the
patent document. (i-f 31, Fig. IA).
2. In Kim, parsing is performed, as a word-oriented and sentence-
oriented syntactic analysis, for the patent document converted into at least
one character string. (i-f 35).
3. After the sequence corresponding to a sequence number in the claims
is extracted, the extracted sequence is indexed and stored in the database
together with the bibliographic data and then, the sequence information,
which the user desires, is searched for and provided from the database.
(ii 39).
ANALYSIS
Appellants contend "the Office Action incorrectly cites paragraphs ...
of Kim for a parsing process of extracted bibliographic data, which includes
abstracts from biomedical patents," and "the parsing of patent documents in
Kim, ... fails to explicitly disclose abstracts from biomedical patents."
(App. Br. 22). That is, according to Appellants, "[ n ]owhere does Kim
explicitly disclose his bibliographic data including abstracts of biomedical
patents" (id.). Appellants contend "as to knowledge of those of ordinary
skill in the art, the term, 'bibliographic data,' ... does not include
information or data from abstracts." (App. Br. 23).
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We consider all of Appellants' arguments and evidence presented, and
disagree with Appellants' contentions that the Examiner erred in rejecting
the claims. We adopt as our own: (1) the findings and reasons set forth by
the Examiner in the action from which this appeal is taken, and (2) the
reasons and rebuttals set forth in the Examiner's Answer in response to
arguments made in Appellants' Appeal Brief. We highlight and address
specific findings and arguments below.
As an initial matter of claim interpretation, we give the claims their
broadest reasonable interpretation consistent with the specification. See In
re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997). While we interpret claims
broadly but reasonably in light of the specification, we nonetheless must not
import limitations from the specification into the claims. See Phillips v.
AWH Corp., 415 F.3d 1303, 1323 (Fed. Cir. 2005) (en bane).
We note that independent claims 1, 7, and 12 do not define "abstracts"
other than that they are "from biomedical patents." Further, the
Specification does not provide a specific definition for the term. Thus, we
do not find the Examiner's interpretation that "abstracts of a patent is
basically a succinct, words limited summary of the patent itself' (Ans. 4) to
be overly broad or unreasonable.
Although Appellants argue "the parsing of patent documents in Kim,
... fails to explicitly disclose abstracts from biomedical patents" and
"[ n ]owhere does Kim explicitly disclose his bibliographic data including
abstracts of biomedical patents" (App. Br. 22, emphasis added), the test for
obviousness is not what a particular reference "explicitly discloses"
individually. Rather, the issue is what the combined teachings would have
suggested to one ofordincuy skill in the art. See In re Merck & Co., 800
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F.2d 1091, 1097 (Fed. Cir. 1986). Thus, the issue we address is whether the
Examiner's proffered combination of Kim with Gillet and Gan1er, 1;1/ould
have taught or suggested parsing of "abstracts," when parsing biomedical
patent documents, to one of ordinary skill in the art.
We agree with the Examiner's finding "it is well known and obvious
that a PATENT includes abstracts" (Ans. 4). We agree that Kim discloses
"parsing of PATENT documents" (Ans. 3; FF 1-3), wherein "it is well
known and widely practiced in the art that the ABSTRACT or other textual
information RELEVANT to A PATENT can be parsed, stored, manipulated"
for "analysis, display and various types of rendering associated with patent
document processing" (Ans. 4). We also agree that "parsing and storing
abstracts AND/OR other textual information of patents and other literatures
are well known and widely practiced in the art in other indexing engines and
published database" (id.). Further, as the Examiner points out, Gamer "also
discloses PATENT information can be parsed, analyzed and stored to be
used as related information when retrieving a chemical compound" (id.).
Thus, we find no error with the Examiner's reliance on Kim and
Gardner for teaching or at least suggesting a "technique that is widely
practiced" (id.).
Furthermore, even assuming arguendo that our reviewing court were
to find "the parsing of patent documents in Kim, ... fails to explicitly
disclose abstracts from biomedical patents" as Appellants contend (App. Br.
22), we agree with the Examiner that the combination of the cited references
at least suggests the contested limitation. We conclude that one of ordinary
skill in the art, upon viewing Kim's (and Gardner's) teaching of parsing and
storing of a patent document such as a biomedical patent document (FF 1-
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3), would have found it obvious to parse and store the "abstract" comprised
within the patent document.
The Supreme Court has determined the conclusion of obviousness can
be based on the interrelated teachings of multiple patents, the effects of
demands known to the design community or present in the marketplace, and
the background knowledge possessed by a person having ordinary skill in
the art. KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). The skilled
artisan is "a person of ordinary creativity, not an automaton." Id. at 421.
We are not persuaded, and Appellants have presented insufficient
persuasive evidence, that parsing and storing an "abstract" of a patent
document instead of or in addition to the other data within the patent
document is "uniquely challenging or difficult for one of ordinary skill in the
art." Leapfrog Enters., Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1162 (Fed.
Cir. 2007) (citing KSR, 550 U.S. at 418). Instead, we find that it would be
obvious via routine experimentation to parse and store the abstract.
Accordingly, we find Appellants have not shown the Examiner erred
in finding Kim in combination with Gillet and Gardner teaches or at least
would have suggested the contested limitations of claims 1, 7, and 12 (Ans.
4). Appellants do not provide substantive arguments for claims 2, 4---6, 8,
10, 11, 13, 15, and 16 separate from those of claims 1, 7, and 12 from which
they respectively depend (App. Br. 28-29), and thus these claims fall
therewith.
CONCLUSION AND DECISION
We affirm the Examiner's decision rejecting claims 1, 2, 4--8, 10-13,
15 and 16 under 35 U.S.C. 103(a).
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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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