Ex Parte Lee

Board of Patent Appeals and Interferences

Jul 26, 2012

11284591 (B.P.A.I. Jul. 26, 2012)

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
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Application 11/284,591

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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.
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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.
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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
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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.
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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).
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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.
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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
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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.
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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