Ex Parte LeeDownload PDFPatent Trial and Appeal BoardMar 16, 201713599206 (P.T.A.B. Mar. 16, 2017) Copy Citation 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 tvarndell @ poszlaw. com 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: Appeal 2014-009364 Application 13/599,206 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) 2 Appeal 2014-009364 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. 3 Appeal 2014-009364 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. 4 Appeal 2014-009364 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. 5 Appeal 2014-009364 Application 13/599,206 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. 6 Appeal 2014-009364 Application 13/599,206 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. 7 Appeal 2014-009364 Application 13/599,206 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. 8 Appeal 2014-009364 Application 13/599,206 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. 9 Appeal 2014-009364 Application 13/599,206 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. 10 Appeal 2014-009364 Application 13/599,206 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 11 Appeal 2014-009364 Application 13/599,206 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 12 Appeal 2014-009364 Application 13/599,206 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 13 Appeal 2014-009364 Application 13/599,206 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 14 Copy with citationCopy as parenthetical citation