Ex Parte Lee

Patent Trial and Appeal Board

Mar 16, 2017

13599206 (P.T.A.B. Mar. 16, 2017)

United States Patent and Trademark Office
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
13/599,206 08/30/2012 Eugene M. Lee 113708.121_CON2 6802
23400 7590 03/20/2017
POSZ LAW GROUP, PLC
12040 SOUTH LAKES DRIVE
SUITE 101
EXAMINER
MOONEYHAM, JANICE A
RESTON, VA 20191 ART UNIT PAPER NUMBER
3689
NOTIFICATION DATE DELIVERY MODE
03/20/2017 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):
mailbox@poszlaw.com
dposz@poszlaw.com
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PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte EUGENE M. LEE
Appeal 2014-009364
Application 13/599,206
Technology Center 3600
Before JOHN A. JEFFERY, ST. JOHN COURTENAY III, and CAROLYN
D. THOMAS, Administrative Patent Judges.
JEFFERY, Administrative Patent Judge.
DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s
decision to reject claims 21—23, 25—31, 33—39, and 41 44. We have
jurisdiction under 35 U.S.C. § 6(b). We affirm.
STATEMENT OF THE CASE
Appellant’s invention is an integrated intellectual property (IP) system
that includes IP docketing and licensing applications. The docketing
application provides information for managing and scheduling all
prosecution duties relating to patents, trademarks, and copyrights. In one
aspect, the system sends reminders to users that certain case actions are due.
See generally Abstract; Spec. 1, 23, and 30; Figs. 1, 9, and 11. Claims 21
and 25 are illustrative:
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21. A method for providing information relating to an intellectual
property docket,
comprising:
receiving, in a computer processor device, information about docket
actions to be taken by a user with respect to a case, the case being an
intellectual property case;
when one of the docket actions is due:
determining, in the computer processor device, whether the case is the
subject of a license;
at least one of sending an e-mail reminder and inserting a
calendar reminder, in the computer processor device, to the user
regarding an action which is due, wherein
at least one of the e-mail reminder and the calendar reminder to the
user includes prosecution forms which are ready for completion by the user
and are filled out with case information regarding the case; and
sending a reminder to a licensee or a licensor of the license for the
case, when the case is determined to be the subject of a license.
25. A method for providing information relating to an intellectual
property docket, comprising:
receiving, in a computer processor device, as a docket entry,
information about docket actions to be taken by a user with respect to a case,
the case being an intellectual property case;
in response to a user request for an IP audit:
performing, in the computer processor device, a family search of an
official database, for a priority case corresponding to the docket entry in the
docket for the case; and
modifying, in the computer processor device, the docket entry for the
case to include the family search results having the priority case for the
docket entry, when the docket entry for the case has incomplete or incorrect
information about the priority case.
RELATED APPEALS
On page 2 of the Reply Brief, Appellant cites seven related appeals,
five of which are cited on page 4 of the Appeal Brief. We decided the
appeals in two of those applications, where one application (10/229,273)
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Application 13/599,206
involved multiple appeals. See Ex parte Lee, No. 2009-010022 (BPAI Apr.
22, 2011) (“Leer); Ex parte Lee, No. 2014-009230 (PTAB Aug. 5, 2016)
(“Lee IF), reh ’g denied (PTAB Nov. 15, 2016). The appeal in Application
13/599,415 has also been decided. See Ex parte Lee, No. 2014-003734
(PTAB Mar. 2, 2017).
THE REJECTIONS
The Examiner rejected claims 21—23, 28—31, 36—39, and 44 under
35U.S.C. § 112, first paragraph, as failing to comply with the written
description requirement. Final Act. 4—5.1
The Examiner rejected claims 21—23, 28—31, 36—39, and 44 under
35U.S.C. § 112, second paragraph, as indefinite. Final Act. 6.
The Examiner rejected claims 21—23, 28—31, 36—39,2 and 44 under
35 U.S.C. § 103(a) as unpatentable over Grow (US 6,694,315 Bl; published
Feb. 17, 2004) and Davies (US 2003/0172020 Al; pub. Sept. 11, 2003; filed
Nov. 19, 2002). Final Act. 7-16.
The Examiner rejected claims 25, 26, 33, 34, 41, and 42 under
35 U.S.C. § 103(a) as unpatentable over Grainger (US 2002/00111824 Al;
pub. Aug. 15, 2002) and Thomson Scientific, Patent Family Searching
1 Throughout this opinion, we refer to (1) the Final Rejection mailed October
31, 2013 (“Final Act.”); (2) the Appeal Brief filed March 31, 2014 (“App.
Br.”); (3) the Examiner’s Answer mailed June 5, 2014 (“Ans.”); and (4) the
Reply Brief filed August 5, 2014 (“Reply Br.”).
2 Although the Examiner omits claims 36—39 in the statement of the
rejection, they are nonetheless included in the corresponding discussion.
Compare Final Act. 7 with Final Act. 12—15. Accordingly, we include
claims 37—39 here for clarity, and treat the Examiner’s error as harmless.
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Application 13/599,206
Using Derwent World Patents Index (Derwent WPI) (Apr. 2000)
(“Derwent”). Final Act. 16—22.
The Examiner rejected claims 27, 35, and 43 under 35 U.S.C. § 103(a)
as unpatentable over Grainger, Derwent, and Official Notice. Final Act. 22—
23.
THE WRITTEN DESCRIPTION REJECTION
The Examiner finds that Appellant’s original disclosure does not
support performing two recited steps when a docket action is due, namely
(1) determining whether the case is the subject of a license, and (2) sending a
reminder to (a) a user, and (b) a licensee or licensor as claimed. Final Act.
4—5; Ans. 3—8.
Appellant argues that, among other things, the language of original
claims 21 and 24 that were filed in a preliminary amendment in the present
application supports the recited steps that occur when a docket action is due.
App. Br. 10-14; Reply Br. 3—6.
ISSUE
Has the Examiner erred in rejecting claim 21 by finding that
Appellant’s original disclosure does not convey with reasonable clarity that
Appellant possessed (1) determining whether an IP case is the subject of a
license (“the license determination”), and (2) sending a reminder to a license
or licensor when the case is determined to be the subject of a license, where
steps (1) and (2) are performed when one docket action is due.
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Application 13/599,206
ANALYSIS
We begin by noting that the three recited steps in claim 21 that are
performed when one docket action is due are directed to conditional
limitations that need not be satisfied to meet the claim. See Ex parte
Schulhauser, No. 2013-007847, slip op. at 9—10 (PTAB Apr. 28, 2016)
(precedential).3
Nevertheless, despite the claim’s breadth in light of these conditional
limitations, the question remains whether Appellant’s original disclosure
conveys with reasonable clarity that Appellant possessed these conditional
limitations when the application was filed. On this record, we agree with the
Examiner that Appellant’s original disclosure falls short in this regard, at
least with respect to the two steps noted in our issue statement that must
occur when one docket action is due under the terms of claim 21.
First, despite Appellant’s arguments to the contrary (App. Br. 12—14;
Reply Br. 5—6), we agree with the Examiner’s findings (Final Act. 4—5; Ans.
4—8) at least to the extent that the various cited passages from Appellant’s
Specification and drawings, including those cited in the Appeal Briefs
summary of the claimed subject matter (App. Br. 5), do not support
determining whether the case is the subject of a license when one docket
action is due as claimed. This particular license-based determination could
be made before a docket action is due—not when it is due. For this reason
alone, Appellant fails to show possession of that element when the
application was filed.
3 This decision is available at the Board’s web site at
https://www.uspto.gov/patents-application-process/appealing-patent-
decisions/decisions-and-opinions/precedential.
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We reach this conclusion even assuming, without deciding, that it
would have been obvious to determine whether the case is the subject of a
license when one docket action is due in lieu of other times. Although the
written description requirement under § 112 does not demand any particular
form of disclosure or require a verbatim recitation, a description that merely
renders the invention obvious does not satisfy the requirement. Ariad
Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1352 (Fed. Cir. 2010) (en
banc) (citations omitted). Therefore, to the extent that Appellants contend
that determining whether a case is the subject of a license when one docket
action is due would have been obvious from the original disclosure, such a
position is unavailing in light of Ariad.
The language of original claims 21 and 24 fares no better in this
regard. To be sure, original claims are part of the Specification, and, in
many cases, will satisfy the written description requirement. Crown
Packaging Tech., Inc. v. Ball Metal Beverage Container Corp., 635 F.3d
1373, 1380 (Fed. Cir. 2011) (citing Ariad, 598 F.3d at 1349). And the fact
that claims 21 and 24 were filed in a preliminary amendment on August 30,
2012 does not disqualify those claims from being considered as part of the
original disclosure as Appellants indicate. Reply Br. 4 (citing 37 C.F.R.
§ 115(a)(1)).
But here, while (1) original independent claim 21 recited sending an
email reminder and/or inserting a calendar reminder when one docket action
is due, and (2) original dependent claim 24 recited determining whether the
case is subject to a license, those original claims did not require making that
license-based determination when one docket action is due as now claimed.
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That original claim 21 was later amended on March 18, 2013 to recite this
specific temporal requirement is telling in this regard.
Therefore, we are not persuaded that the Examiner erred in rejecting
claim 21 under § 112, first paragraph, and claims 22, 23, 28—31, 36—39, and
44 not argued separately with particularity.
THE INDEFINITENESS REJECTION
We will not, however, sustain the Examiner’s indefmiteness rejection
of claim 21. Final Act. 6. Although the Examiner finds that it is unclear
what functional steps are involved in determining whether a case is subject
to a license, and questions how such a determination is made {Id.; Ans. 8—9),
the claim need not so specify. Rather, claim 21 merely broadly recites
determining, in a computer processor device, whether the case is the subject
of a license. As Appellant indicates (App. Br. 15—16; Reply Br. 7), the fact
that claim 21 is broad in scope does not mean that it is indefinite. See In re
Gardner, 427 F.2d 786, 788 (CCPA 1970) (“Breadth is not indefmiteness.”).
To the extent that the Examiner’s functionality-based questions
implicate a lack of enablement of the recited license determination under
§112, first paragraph—an inquiry distinct from the possession requirement
under that statute4—no such rejection is before us, nor will we speculate in
that regard here in the first instance on appeal. And to the extent that the
Examiner’s functionality-based questions implicate the possibility that claim
21 is not enabled for its scope, again, no such rejection is before us, nor will
we speculate in that regard here in the first instance on appeal. See In re
4 Ariad, 598 F.3d at 1344.
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Wright, 999 F.2d 1557, 1561 (Fed. Cir. 1993) (“[T]he specification of a
patent must teach those skilled in the art how to make and use the full scope
of the claimed invention without ‘undue experimentation.”’) (emphasis
added). But what we can say is that the language of claim 21’s license
determination, while broad, is nonetheless clear in this regard.
So although Appellant’s original disclosure does not convey with
reasonable clarity that Appellant possessed the subject matter of claim 21
under § 112, first paragraph as noted above, the claim is nonetheless
sufficiently clear to satisfy the definiteness requirement under § 112, second
paragraph. Therefore, we are persuaded that the Examiner erred in rejecting
claims 21—23, 28—31, 36—39, and 44 as indefinite.
THE OBVIOUSNESS REJECTION OVER GROW AND DAVIES
The Examiner finds that Grow discloses every recited element of
claim 21 except for (1) an IP case; (2) the license determination; and (3)
sending a reminder to a licensee or licensor when the case is determined to
be the subject of a license, but cites Davies as teaching these features in
concluding that the claim would have been obvious. Final Act. 7—9.
Appellant argues that the obviousness rejection is improper because,
among other things, Davies is not prior art to the claimed invention. App.
Br. 18-20; Reply Br. 9-11.
ISSUE
Under § 103, has the Examiner erred in rejecting claim 21 as obvious
over Grow and Davies? This issue turns on whether Davies qualifies as
prior art to the claimed invention.
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ANALYSIS
The present application is a continuation of U.S. Application
12/474,728, filed May 29, 2009, which is a divisional of U.S. Application
10/229,273, filed August 28, 2002, and claims priority to U.S. Provisional
Application 60/315,021, filed August 28, 2001. Spec. I.5
The Davies reference is a U.S. application that published on
September 11, 2003, but was filed on November 19, 2002 which is after the
filing date of the present application’s grandparent ’273 application. Davies,
however, is based on U.S. Provisional Application 60/332,738, filed
November 19, 2001, which is before the ’273 application’s filing date.
The critical question, then, is whether Davies is entitled to the date of
its provisional application, for if it is not, then Davies does not qualify as
prior art because its utility application filing date (November 19, 2002) is
after that of the present application’s grandparent ’273 application (August
28, 2002). In that circumstance, Davies would not qualify as prior art
regardless of whether Appellant is entitled to the earlier filing date of the
’021 provisional application.
To be sure, if the Examiner shows that Davies’ ’738 provisional
application adequately provides (1) support for the subject matter of Davies ’
claimed invention in Davies’ published utility application under 35 U.S.C.
§112, first paragraph, and (2) similar § 112, first paragraph support for the
particular subject matter relied on in the rejection, then Davies would be
entitled to the November 16, 2001 filing date of its provisional application.
5 Page 1 of the Specification was amended to reflect this chain of priority in
a preliminary amendment filed August 30, 2012.
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See Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1380
(Fed. Cir. 2015) (“A reference patent is only entitled to claim the benefit of
the filing date of its provisional application if the disclosure of the
provisional application provides support for the claims in the reference
patent in compliance with § 112,11.”) (emphasis added) (citing In re
Wertheim, 646 F.2d 527, 537 (CCPA 1981)); see also id. at 1382 (“A
provisional application’s effectiveness as prior art depends on its written
description support for the claims of the issued patent of which it was a
provisional.”) (emphasis added).
Here, the Examiner merely asserts that Davies predates Appellant’s
grandparent ’273 application’s August 28, 2002 filing date due to the earlier
filing date of Davies’provisional application. Ans. 10. Crucially, however,
the Examiner does not show that Davies’ provisional application supports
the relied-upon subject matter in the rejection under 35U.S.C. § 112, first
paragraph, let alone also show that Davies’ provisional supports the claimed
subject matter of Davies’ published utility application. See Dynamic
Drinkware, 800 F.3d at 1380. Nor will we presume as much, for we have no
basis on this record for doing so. See id. (“[Bjecause the PTO does not
examine priority claims unless necessary, the Board has no basis to presume
that a reference patent is necessarily entitled to the filing date of its
provisional application.”). The Examiner’s analysis of Appellant’s ’021
provisional application on pages 11 to 14 of the Answer is, therefore,
irrelevant to the fundamental threshold determination of whether Davies is
entitled to its provisional application filing date.
On this record, then, we cannot say—nor has the Examiner shown—
that Davies is necessarily entitled to the date of its provisional application.
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Absent evidence to the contrary, Davies’ earliest effective filing date is
November 19, 2002 and, therefore, after the August 28, 2002 filing date of
Appellant’s grandparent ’273 application. Accordingly, Davies does not
qualify as prior art to the claimed invention.
Therefore, we are persuaded that the Examiner erred in rejecting
claims 21—23, 28—31, 36—39, and 44 as obvious over Grow and Davies.
Because this issue is dispositive regarding our reversing the Examiner’s
rejection of these claims, we need not address Appellant’s other associated
arguments.
THE OBVIOUSNESS REJECTION OVER GRAINGER AND DERWENT
We will, however, sustain the Examiner’s obviousness rejection of
independent claim 25 over Grainger and Derwent. Final Act. 16—17. Claim
25 recites, in pertinent part, responsive to a user request for an IP audit, (1)
performing a family search of an official database for a priority case
corresponding to a case’s docket entry, and (2) modifying the docket entry to
include the family search results. Notably, although the modifying step is
performed responsive to the recited user request, this step is also conditional,
because it is performed when the docket entry has incomplete or incorrect
information about the priority case. As such, this condition need not be
satisfied to meet the claim. See Schulhauser, No. 2013-007847, slip op. at
9-10.
Turning to the rejection, the Examiner finds that Grainger teaches (1)
receiving information about docket actions; (2) receiving and storing
information regarding priority applications associated with a certain
application; and (3) updating or modifying information regarding a specific
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case. Final Act. 16—17; Ans. 16. The Examiner also finds that Derwent
performs patent family searches responsive to user requests to obtain
priority data to determine whether a patent document can be added to an
existing family. Final Act. 17; Ans. 15—16. In light of these collective
teachings, the Examiner concludes that the claim would have been obvious.
Final Act. 17.
Despite Appellant’s arguments to the contrary (App. Br. 22—23; Reply
Br. 14—17), we see no error in the Examiner’s findings and conclusions in
this regard. First, the term “audit” is not defined in the Specification to so
limit its interpretation and, therefore, is construed with its plain meaning.
Although Appellant cites a dictionary definition of “audit” involving
formally inspecting and correcting accounts (Reply Br. 16), other
dictionaries define the term more broadly. One dictionary, for example,
defines “audit,” in pertinent part, as “a methodical examination and review”
Merriam Webster’s Collegiate Dictionary 76 (10th ed. 1993). Another
dictionary defines the term as “any thorough examination and evaluation of
a problem.” Webster’s New World Dictionary of American English
90 (3d College ed. 1993).
Given these broad definitions, we see no error in the Examiner’s
finding that Derwent at least suggests performing the recited family search
responsive to a user request for an IP audit. We reach this conclusion noting
that Derwent at least suggests that the user’s request that triggers the family
search would involve a methodical examination and review of IP-related
aspects, or a thorough examination and evaluation of a problem pertaining to
IP, at least with respect to associated patent families. Appellant’s arguments
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to the contrary (App. Br. 22—23; Reply Br. 14—17) are unavailing and not
commensurate with the scope of the claim.
Appellant’s arguments regarding the Grainger/Derwent system’s
family search not relating to the recited docket entry for the case and its
modification (Reply Br. 15—16) are likewise unavailing, particularly given
Grainger’s ability to modify information regarding a specific case (Final
Act. 17; Ans. 16)—information that could plausibly include a docket entry
regarding that case. Given this modification functionality in light of
Derwent’s family search functionality responsive to user requests related to
examining and reviewing IP, we find no error in the Examiner’s conclusion
that the recited modification would have been obvious over the collective
teachings of Grainger and Derwent even leaving aside the fact that the
recited modification is based on a specified condition that need not be
satisfied to meet the claim. See Schulhauser, No. 2013-007847, slip op. at
9-10.
Lastly, Appellant’s argument that there is allegedly no reason to
combine Grainger and Derwent on page 17 of the Reply Brief was raised for
the first time in the Reply Brief and is, therefore, deemed to be waived as
untimely. See 37 C.F.R. § 41.41(b)(2) (2012).
Therefore, we are not persuaded that the Examiner erred in rejecting
claim 25, and claims 26, 33, 34, 41, and 42 not argued separately with
particularity.
THE OTHER OBVIOUSNESS REJECTION
We also sustain the Examiner’s obviousness rejection of claims 27, 35
and 43. Final Act. 22—23. Because this rejection was not argued separately
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with particularity, we are not persuaded of error in that rejection for the
reasons previously discussed.
CONCLUSION
The Examiner did not err in rejecting claims 21—23, 28—31, 36—39,
and 44 under § 112, first paragraph, but erred in rejecting those claims under
§112, second paragraph.
Under § 103, the Examiner erred in rejecting claims 21—23, 28—31,
36—39, and 44, but did not err in rejecting claims 25—27, 33—35, and 41—43.
DECISION
The Examiner’s decision rejecting claims 21—23, 25—31, 33—39, and
41—44 is affirmed. Because we have affirmed at least one ground of
rejection with respect to each claim on appeal, the Examiner’s decision is
affirmed. See 37 C.F.R. § 41.50(a)(1).
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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