Ex Parte Lee

Board of Patent Appeals and Interferences

Jul 17, 2012

09875937 (B.P.A.I. Jul. 17, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte EUGENE M. LEE
____________

Appeal 2010-008410
Application 09/875,937
Technology Center 2100
____________

Before JOHN A. JEFFERY, STANLEY M. WEINBERG, and
BRIAN J. McNAMARA, Administrative Patent Judges.

JEFFERY, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2010-008410
Application 09/875,937

2
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 1-36. We have jurisdiction under 35 U.S.C. § 6(b). We
reverse.

STATEMENT OF THE CASE
Appellant’s invention determines a field-of-search for locating
intellectual property information by (1) analyzing an intellectual property
field of documents in a source group to identify elements in the field; and (2)
providing at least part of the elements as a field-of-search for automatic use
as search criteria. See generally Spec. ¶ 0049; Fig. 5. Claim 1 is illustrative:
1. A computer-implemented method of determining an intellectual
property field-of-search for locating intellectual property information,
wherein the intellectual property information includes at least one
information field containing accessible information, the method comprising
the steps of:
(a) selecting a source grouping containing documents having
intellectual property information;
(b) determining, responsive to the selecting, elements in the
documents in the source grouping, including analyzing at least one
intellectual property information field of the documents to identify the
elements in the information field; and providing the elements as search
information corresponding to the source grouping; and
(c) providing, responsive to determining step (b), at least a portion of
the elements in the search information as a field-of-search for automatic use
as search criteria.

RELATED APPEAL
An appeal in Application No. 10/229,273 is said to be related to the
appeal in the present application. App. Br. 2; Ans. 2. That appeal has been
decided, and does not involve issues that are germane to those before us in
Appeal 2010-008410
Application 09/875,937

3
the present appeal. See Ex parte Lee, No. 2009-010022 (BPAI 2011) (non-
precedential).

THE REJECTION
The Examiner rejected claims 1-36 under 35 U.S.C. § 103(a) as
unpatentable over Cronin (US 7,117,198 B1; Oct. 3, 2006 (filed Nov. 28,
2000)) and Bowman (US 6,169,986 B1; Jan. 2, 2001). Ans. 3-12.1

CONTENTIONS
The Examiner finds that Cronin’s method of determining an
intellectual property field-of-search has every recited feature of independent
claim 1 except for providing at least part of the elements in the search
information as a field-of-search for automatic use as search criteria, but cites
Bowman as teaching this feature in concluding that the claim would have
been obvious. Ans. 3-5, 12-14.
Appellant argues that the prior art does not teach or suggest
limitations in clauses (b) and (c) of the claim, including (1) analyzing the
source group documents’ intellectual property information field to identify
elements in the field, and (2) providing those elements as search information
corresponding to the source grouping as claimed. App. Br. 11-12; Reply Br.
2-4. Appellant adds that the Examiner’s reliance on Bowman is misplaced
and, in any event, the references are not properly combinable as proposed.
App. Br. 12-13.

1 Throughout this opinion, we refer to (1) the Appeal Brief filed November
6, 2008 (supplemented October 27, 2009); (2) the Examiner’s Answer
mailed January 15, 2010; and (3) the Reply Brief filed March 15, 2010.
Appeal 2010-008410
Application 09/875,937

4

ISSUE
Under § 103, has the Examiner erred in rejecting claim 1 by finding
that Cronin and Bowman collectively would have taught or suggested (1)
analyzing at least one intellectual property information field of source group
documents to identify elements in the field, and (2) providing those elements
as search information corresponding to the source grouping?

ANALYSIS
This appeal turns on one key question: What is an “element” in an
information field of a document? The answer is crucial, for independent
claim 1 requires that this field is analyzed to identify “elements” in that
field—elements that are then provided as search information as a field-of-
search for automatic use as search criteria.
Although Appellant’s Specification does not define the term
“element” in this context, Appellant nonetheless indicates that the selected
source grouping is “analyzed for elements (e.g., numbers, classifications,
words, concepts, phrases, etc.) in one or more informational fields of the
intellectual property information constituting the source grouping . . . .”
Spec. 29:3-5 (emphasis added). Despite this broad and open-ended
description, the Examiner’s Answer is hardly a model of clarity on what
exactly constitutes “elements” in a field in Cronin. As Appellant indicates,
the Examiner apparently maps Cronin’s patent fields themselves to the
recited “elements.” Reply Br. 3-4 (quoting Ans. 4). Accord Ans. 13
(“Cronin provides patent fields in the search information as a field of search
for automatic use as search criteria. Therefore, Cronin teaches providing the
Appeal 2010-008410
Application 09/875,937

5
elements as search information corresponding to the USPTO database 200.”
(emphasis added)); Ans. 4 (same). The Examiner then reasons that “Cronin
teach[es] analyzing the intellectual property information field such as patent
field in the patent documents in the USPTO database 200 for electronic
search and retrieval by a computer.” Ans. 13 (emphasis added) (citation
omitted).
But the Examiner never squarely identifies the elements of this patent
field in Cronin. Are these “elements” data? Are they content within these
fields, such as textual characters? The Examiner does not say, nor will we
speculate in that regard here in the first instance on appeal. But what we can
say from this record is that the Examiner’s gloss on what exactly constitutes
an “element” in an information field tends to bolster Appellant’s
presumption—and ours—that the Examiner intends to map Cronin’s patent
fields themselves to the recited “elements.” Our conclusion is buttressed by
the fact that the Examiner designates assignee information as both an
element (Ans. 4, ll. 1-2; Ans. 12, ll. 15-16) and a field (Ans. 4, ll. 9-10; Ans.
12, l. 15 – Ans. 13, l. 6).
That the Examiner’s Response to Arguments essentially reiterates the
rejection in this regard, as Appellant indicates (Reply Br. 3 n.1), not only is
unhelpful to glean the Examiner’s position regarding the recited “elements,”
but only reinforces Appellant’s presumed mapping. In any event, this
mapping is problematic, for it is at best unclear how providing patent fields
themselves—not the content—identifies elements in those fields, let alone
provides those constituent elements as search information as claimed. The
weight of the evidence on this record therefore favors Appellant’s position in
this regard (Reply Br. 3-4).
Appeal 2010-008410
Application 09/875,937

6
Therefore, even if Cronin and Bowman were properly combinable as
the Examiner proposes, the Examiner has still not shown that they
collectively would have taught or suggested (1) analyzing at least one
intellectual property information field of source group documents to identify
elements in the field, and (2) providing those elements as search information
as a field-of-search for automatic use as search criteria as claimed.
We are therefore persuaded that the Examiner erred in rejecting (1)
independent claim 1; (2) independent claims 17, 24, 33, and 35 which recite
commensurate limitations; and (3) the dependent claims for similar reasons.
Since this issue is dispositive regarding our reversing the rejection of these
claims, we need not address Appellant’s other arguments. App. Br. 14-21;
Reply Br. 4-5.

CONCLUSION
The Examiner erred in rejecting claims 1-36 under § 103.

ORDER
The Examiner’s decision rejecting claims 1-36 is reversed.

REVERSED

babc