Ex Parte LeeDownload PDFBoard of Patent Appeals and InterferencesJul 17, 201209875937 (B.P.A.I. Jul. 17, 2012) Copy Citation 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 Copy with citationCopy as parenthetical citation