Ex Parte LeeDownload PDFBoard of Patent Appeals and InterferencesJul 26, 201211284591 (B.P.A.I. Jul. 26, 2012) 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. 11/284,591 11/21/2005 Ben Gill-Ho Lee 6653 7590 07/26/2012 Ben Gill-Ho Lee 2136 Weatherly Place Fullerton, CA 92833 EXAMINER PENG, HUAWEN A ART UNIT PAPER NUMBER 2158 MAIL DATE DELIVERY MODE 07/26/2012 PAPER 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. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES ____________ Ex parte BEN GILL-HO LEE ____________ Appeal 2011-006067 Application 11/284,591 Technology Center 2100 ____________ Before JAMESON LEE, HOWARD B. BLANKENSHIP, and MICHAEL R. ZECHER, Administrative Patent Judges. ZECHER, Administrative Patent Judge. DECISION ON APPEAL Appeal 2011-006067 Application 11/284,591 2 I. STATEMENT OF THE CASE Appellant (pro se) appeals under 35 U.S.C. § 134(a) from the Examiner’s rejection of claims 1 and 7-17. Claims 2-6 have been cancelled. Br. 2.1 We have jurisdiction under 35 U.S.C. § 6(b). We reverse and enter a new ground of rejection. Appellant’s Invention Appellant invented a resource management method that includes a depositor, who stores one or more text-words for an item associated with the depositor, and a searcher, who prepares one or more keywords to search and retrieve the item that has at least one text-word matched with the keywords. The text-words and the key-words both include a word that defines one of a plurality of subject matters and, further, are capable of being implemented with a key-code that stands for the particular subject matter defined by each text-word and keyword. According to Appellant, the claimed method attaches the key-code to the associated text-word and keyword so as to be self-parameterized, self-categorized, and self-explanatory. See Abstract. Illustrative Claim 1. An information management method, comprising the steps of: storing information related to one or more items into data-storage in the system memory; said data-storage storing one or more text-words; said text-words provided by one or more depositors associated with said items; said text-words searched by one or more searchers who are interested in said items; and retrieving said items and depositors thereof, using retrieval means; 1 All references to the Brief are to the Brief filed October 14, 2010, which replaced the Brief filed September 2, 2010. Appeal 2011-006067 Application 11/284,591 3 said retrieval means including one or more keywords; said keywords prepared by said searchers to set the retrieving condition; said text-words and keywords each being a word which defines on one or more of a plurality of subject-matters of said item and said associated depositor; said text-words and keywords each attached with one or more key-codes, forming a key-coded text-word and key-coded keyword respectively; said key-codes each standing for one or more of said subject-matters; said subject-matters and key-codes pre-analyzed and predefined to the definitions thereof recognized to said depositors and searchers; said retrieval means retrieving said items and depositors of which said key-coded text-word is matched with said key coded keyword. Prior Art Relied Upon Bailey US 7,395,259 B2 July 1, 2008 (filed July 30, 2004) Nunez US 7,426,506 B2 Sept. 16, 2008 (filed Sept. 26, 2003) Rejection on Appeal Claims 1 and 7-17 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over the combination of Nunez and Bailey. Ans. 3-12. Examiner’s Findings and Conclusions The Examiner finds that Nunez’s disclosure—namely column 7, lines 47-57—teaches “retrieving said items and depositors thereof, using retrieval means[,]” as recited in independent claim 1. Ans. 4 and 14. In particular, the Examiner finds that Nunez’s search criterion amounts to the claimed “retrieval means.” Ans. 14. Appeal 2011-006067 Application 11/284,591 4 Appellant’s Contentions Appellant contends that Nunez does not teach “retrieving said items and depositors thereof, using retrieval means[,]” as recited in independent claim 1. Br. 21-22. II. ISSUE The dispositive issue before us is whether the Examiner erred in finding that the combination of Nunez and Bailey teaches “retrieving said items and depositors thereof, using retrieval means[,]” as recited in independent claim 1? III. ANALYSIS Claim 1 Based on the record before us, we discern that there is error in the Examiner’s obviousness rejection of independent claim 1, which recites, inter alia, “retrieving said items and depositors thereof, using retrieval means[.]” At the outset, we note that the Examiner relies upon Nunez’s search criterion, which consists of a keyword or parameter represented as a continuous text string (col. 7, ll. 47-57), to teach the disputed claim limitation. At best, we find that Nunez’s search criterion amounts to a text string that is capable of being used to retrieve information associated with an index entry—otherwise known as an item. However, the Examiner’s stated position fails to account for all the features of the disputed claim limitation. That is, the Examiner does not direct us to, nor can we find, a portion of Nunez that teaches retrieving the depositor associated with the item, as Appeal 2011-006067 Application 11/284,591 5 claimed. Further, Bailey does not remedy the above-noted deficiency in the Examiner’s obviousness rejection. Moreover, we note that the Examiner never indicated whether the “retrieval means” found in independent claim 1 invokes 35 U.S.C. § 112, sixth paragraph. We conclude that such language does in fact invoke 35 U.S.C. § 112, sixth paragraph, because it uses the phrase “means,” the “means” is modified by functional language, and the “means” is not modified by sufficient structure or material for achieving the specified function. Consequently, using the broadest reasonable interpretation standard, the Examiner should have construed the “retrieval means” to cover the corresponding structure described in Appellant’s Specification and its equivalents. See In re Donaldson Co., Inc., 16 F.3d 1189, 1195 (Fed. Cir. 1994) (en banc). Since the Examiner does not indicate the corresponding structure or its equivalents covered by the claimed “retrieval means,” we conclude that the Examiner did not apply the correct standard in construing independent claim 1. Since the Examiner’s position with respect to Nunez does not properly account for all the features of the disputed claim limitation, and the Examiner did not apply the correct standard in construing the claimed “retrieval means,” we need not reach the merits of Appellant’s other arguments. It follows that the Examiner has erred in concluding that the combination of Nunez and Bailey renders independent claim 1 unpatentable. Appeal 2011-006067 Application 11/284,591 6 Claims 7-17 Since dependent claims 7-17 incorporate by reference the same disputed claim limitation as their underlying base claim, we conclude that the Examiner erred in rejecting these claims for the same reason set forth in our discussion of independent claim 1. IV. NEW GROUND OF REJECTION We enter the following new ground of rejection pursuant to our authority under 37 C.F.R. § 41.50(b). 35 U.S.C. § 112, Second Paragraph Rejection PRINCIPLES OF LAW The test for definiteness under 35 U.S.C. § 112, second paragraph is whether “those skilled in the art would understand what is claimed when the claim is read in light of the specification.” Orthokinetics, Inc. v. Safety Travel Chairs, 806 F.2d 1565, 1576 (Fed. Cir. 1986) (citations omitted). In the context of a means-plus-function limitation, if an ordinarily skilled artisan would be able to identify the structure, material, or acts for performing the claimed function, then the requirements of 35 U.S.C. § 112, second paragraph are satisfied. See Atmel Corp. v. Info. Storage Devices, Inc., 198 F.3d 1374, 1381 (Fed. Cir. 1999); see also In re Dossel, 115 F.3d 942, 94647 (Fed. Cir. 1997). However, if there is insufficient disclosure of the structure, material, or acts for performing the claimed function, a rejection under 35 U.S.C. § 112, second paragraph is appropriate. See Donaldson, 16 F.3d at 1195; Biomedino v. Waters Techs. Corp., 490 F.3d 946, 952 (Fed. Cir. 2007). Appeal 2011-006067 Application 11/284,591 7 ANALYSIS Claim 1 As discussed supra, the “retrieval means” found in independent claim 1 invokes 35 U.S.C. § 112, sixth paragraph. We therefore construe this limitation to cover the corresponding structure described in the Specification and its equivalents. See Donaldson, 16 F.3d at 1195. In the Brief, Appellant identifies page 5, lines 22-28, page 7, lines 16- 19, page 9, lines 12-31, and page 10, lines 1-6 of the Specification2 in connection with the claimed “retrieval means.” Br. 9. Appellant also identifies Figures 2A and 3 of the Specification as corresponding to the claimed “retrieval means.” Id. Page 5, lines 22-28, page 7, lines 16-19, page 9, lines 12-31, and page 10, lines 1-6 of Appellant’s Specification merely refer to Figures 2A and 3. In particular, Figure 3 illustrates an interface provided by the server to a searcher. Spec. 5: 22-23. The interface shows a text field that allows the searcher to input keywords for a search. Spec. 5: 23-30; spec. 9: 12-31; spec. 10: 1-6. In addition to the disclosures identified by Appellant in the Brief, we note that Figure 1 of the Specification illustrates that the searcher amounts to a client who uses a client computer to search and retrieve data stored in data storage affiliated with the server. Spec. 4: 16-spec. 5: 3. Therefore, since Appellant’s Specification discloses that the searcher uses a client computer to search and retrieve data, we conclude that the corresponding structure invoked by the claimed “retrieval means” is nothing more than general purpose computing device. 2 All references to the Specification are to the Specification included in the Evidence Appendix of the Brief filed October 14, 2010. Appeal 2011-006067 Application 11/284,591 8 The corresponding structure of a means-plus-function limitation, however, must be more than simply a general-purpose computer or microprocessor to avoid pure functional claiming. Aristocrat Techs. Austl. Pty Ltd. v. Int'l Game Tech., 521 F.3d 1328, 1333 (Fed. Cir. 2008). That is, the corresponding patent application must disclose “enough of an algorithm to provide the necessary structure under § 112, ¶ 6” or a disclosure that can be expressed in any understandable terms (e.g., a mathematical formula, in prose, or as a flowchart). Finisar Corp. v. The DirectTV Group, 523 F.3d 1323, 1340 (Fed. Cir. 2008). “Simply reciting ‘software’ without providing some detail about the means to accomplish the function is not enough.” Id. at 1341-42. The general and non-limiting illustration of a client computer in Appellant’s Figure 1 falls well short of providing the requisite level of specificity needed to inform an ordinarily skilled artisan of the specific structure corresponding to the claimed “retrieval means.” Moreover, the cited pages and line numbers in the Specification identified by Appellant in the Brief do not assist in this regard. When considered in light of the aforementioned client computer, these descriptions also fall well short of adequately specifying the structure corresponding to the claimed “retrieval means.” As a result, we conclude that Appellant’s Specification does not adequately describe the corresponding structure for the claimed “retrieval means” such that an ordinarily skilled artisan can reasonably ascertain the scope of the claim. While Appellant’s Figures generally illustrate the claimed invention’s computational steps, mathematical manipulations, and results (see, e.g., Figures 1-3), these general illustrations (or any other part of Appeal 2011-006067 Application 11/284,591 9 Appellant’s disclosure) fall short of providing the requisite level of detail needed to describe the algorithm with sufficient specificity to provide the necessary corresponding structure for the claimed “retrieval means” under 35 U.S.C. § 112, sixth paragraph. See Finisar, 523 F.3d at 1340. Since we cannot reasonably determine the scope of independent claim 1 due to the aforementioned defect, we conclude that claim 1 is indefinite under 35 U.S.C. § 112, second paragraph. Claims 7-17 Since dependent claims 7-17 incorporate by reference the “retrieval means” recited in independent claim 1, we conclude that these claims are also indefinite under 35 U.S.C. § 112, second paragraph. V. CONCLUSION 1. The Examiner has erred in rejecting claims 1 and 7-17 as being unpatentable under 35 U.S.C. § 103(a) because the combination of Nunez and Bailey does not teach “retrieving said items and depositors thereof, using retrieval means[,]” as recited in independent claim 1. 2. We enter a new ground of rejection against claims 1 and 7-17 as being indefinite under 35 U.S.C. § 112, second paragraph. VI. DECISION We reverse the Examiner’s decision to reject claims 1 and 7-17 as being unpatentable under 35 U.S.C. § 103(a). However, we newly reject claims 1 and 7-17 as being indefinite under 35 U.S.C. § 112, second paragraph. Appeal 2011-006067 Application 11/284,591 10 37 C.F.R. § 41.50(b) provides that, “[a] new ground of rejection pursuant to this paragraph shall not be considered final for judicial review.” 37 C.F.R. § 41.50(b) also provides that the Appellants, WITHIN TWO MONTHS FROM THE DATE OF THE DECISION, must exercise one of the following two options with respect to the new grounds of rejection to avoid termination of proceedings (37 C.F.R. § 1.197 (b)) as to the rejected claims: (1) Reopen prosecution. Submit an appropriate amendment of the claims so rejected or new evidence relating to the claims so rejected, or both, and have the matter reconsidered by the examiner, in which event the proceeding will be remanded to the examiner. . . . (2) Request rehearing. Request that the proceeding be reheard under 37 C.F.R. § 41.52 by the Board upon the same record. . . . No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv). REVERSED 37 C.F.R. § 41.50(b) ack Copy with citationCopy as parenthetical citation