Ex Parte Lundberg et al

Patent Trial and Appeal Board

Sep 18, 2017

13310322 (P.T.A.B. Sep. 18, 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.
13/310,322 12/02/2011 Steven W. Lundberg 3431.019US1 9652
21186 7590 09/20/2017
SCHWEGMAN LUNDBERG & WOESSNER, P.A.
P.O. BOX 2938
MINNEAPOLIS, MN 55402
EXAMINER
THAI, HANH B
ART UNIT PAPER NUMBER
2163
NOTIFICATION DATE DELIVERY MODE
09/20/2017 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):
uspto@slwip.com
SLW @blackhillsip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte STEVEN W. LUNDBERG and LARS OLOF HUGO SVENSSON
Appeal 2016-007787
Application 13/310,322
Technology Center 2100
Before JOHN A. JEFFERY, BRUCE R. WINSOR, and
JUSTIN BUSCH, Administrative Patent Judges.
WINSOR, Administrative Patent Judge.
DECISION ON APPEAL
Appellants1 appeal under 35 U.S.C. § 134(a) from the final rejection
of claims 1—21, which constitute all the claims pending in this application.
We have jurisdiction under 35 U.S.C. § 6(b).
We affirm-in-part and institute a new ground of rejection within the
provisions of 37 C.F.R. § 41.50(b) (2015).
1 The real party in interest identified by Appellants is Black Hills IP
Holdings, LLC. App. Br. 2.
Appeal 2016-007787
Application 13/310,322
STATEMENT OF THE CASE
The Invention
Appellants’ disclosed invention relates to patent mapping.
Spec. Title, Abstract. According to the Specification, a mapping module
“facilitate[s] mappings of scope concept, technology categories, prior art[,]
and keywords to patent claims.” Id. 1 58. In a disclosed embodiment, the
mapping module “is also able to roll down [a] mapping from independent
claims to dependent claims.” Id. 1 65. Claim 1, which is illustrative, reads
as follows:
1. A computer implemented method comprising:
maintaining a database of patent portfolios and a database
of patents, each patent stored in the database of patents
associated with one or more patent portfolios stored in the
database of patent portfolios;
receiving a search query associated with a first patent
portfolio;
searching the first portfolio as a function of the search
query;
generating search results, the search results including one
or more independent patent claims associated with the search
query;
mapping the one or more independent patent claims to at
least one patent concept; and
automatically associating the at least one mapped patent
concept to one or more individual patent claims which are
dependent on the one or more independent patent claims based
on the patent concept individually mapped to the independent
patent claims.
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The Rejections
Claims 1 and 4—11 stand provisionally rejected for non-statutory
obviousness-type double patenting over claims 1—9 of copending
Applications 12/605,030; 13/309,200; 13/253,936; 13/310,279; and
13/310,368.2 See Final Act. 4-7.
Claims 1—21 stand rejected under 35 U.S.C. § 102(b)3 as being
anticipated by Lundberg et al. (US 2007/0198578 Al; Aug. 23, 2007).
See Final Act. 7—11.
Claims 1,11, and 21 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Speier (US 2007/0288256 Al; Dec. 13, 2007) and
Elfayoumy et al. (US 2007/0192272 Al; Aug. 16, 2007). See Final Act. 12—
13.
The Record
Rather than repeat the arguments here, we refer to (1) the Briefs
(“App. Br.” filed Jan. 15, 2016; “Reply Br.” filed Aug. 15, 2016) and the
Specification (“Spec.” filed Dec. 2, 2011) for the positions of Appellants;
and (2) the Final Office Action (“Final Act.” mailed Mar. 31, 2015) and
2 The Examiner indicates “[cjlaims 1—21 are provisionally rejected on the
ground of nonstatutory obviousness-type double patenting.” Final Act. 5.
However, in the detailed articulation of the provisional double patenting
rejection the Examiner explains that claims 1—9 of the copending
Applications contain every element of claims 1 and 4—11. See Final Act. 5—
7. The Examiner does not discuss claims 2, 3, and 12—21. Considering the
record before us as a whole, we conclude the Examiner provisionally
rejected only claims 1 and 4—11 for non-statutory obviousness-
type double patenting. We treat the Examiner’s reference to claims 1—21,
inclusive of claims 2, 3, and 12—21, as a clerical or typographical error.
3 All rejections are under the provisions of 35 U.S.C. in effect prior to the
effective date of the Leahy-Smith America Invents Act of 2011.
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Application 13/310,322
Examiner’s Answer (“Ans.” mailed June 16, 2016) for the reasoning,
findings, and conclusions of the Examiner. Only those arguments actually
made by Appellants have been considered in this decision. Arguments that
Appellants did not make in the Briefs have not been considered and are
deemed to be waived. See 37 C.F.R. § 41.37(c)(l)(iv).
Related Appeals
Appellants did not identify any related appeals. See App. Br. 3.
However, we note that there are at least twenty-eight (28) related appeals,
which are:
Anneal No. Annlication No. Decided/Status
2009-005709 10/128,141 Decision mailed Mar. 23, 2010
2009-006404 10/874,486 Decision mailed Aug. 2, 2010
2011-009966 11/061,383 Decision mailed Jan. 31, 2014
2012-004166 11/061,312 Decision mailed Nov. 4, 2014
2015-000319 13/309,080 Decision mailed May 27, 2016
2015-000321 13/309,127 Decision mailed July 26, 2017
2015-003180 13/309,039 Decision mailed Sept. 23, 2016
2015-007422 13/309,146 Decision mailed June 1, 2016
2016-000912 13/309,060 Decision mailed Aug. 25, 2017
2016-001687 11/888,632 Decision mailed Jan. 19, 2017
2016-002121 13/309,200 Decision mailed Aug. 28, 2017
2016-002680 13/310,279 Decision mailed Aug. 30, 2017
2016-002792 12/605,030 Decision mailed Sept. 1, 2017
2016-006797 13/310,368 Decision mailed Aug. 30, 2017
2016-007186 13/573,803 Decision mailed July 28, 2017
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Application 13/310,322
2016-007415 13/464,598 Decision mailed July 31, 2017
2016-007623 13/408,877 Decision mailed Sept. 6, 2017
2016-008030 13/253,936 Decision mailed Aug. 3, 2017
2017-000280 13/408,917 Pending
2017-000386 11/098,761 Pending
2017-002337 14/010,376 Pending
2017-003702 14/483,903 Pending
2017-003815 14/094,542 Pending
2017-004158 14/010,391 Pending
2017-004159 14/010,380 Pending
2017-004188 14/010,400 Pending
2017-006390 13/409,189 Pending
2017-006642 13/310,452 Pending
PROVISIONAL OBVIOUSNESS-TYPE DOUBLE PATENTING
REJECTIONS
Appellants “request consideration and reversal of the Examiner’s
rejections of the pending claims.” App. Br. 1. Appellants do not otherwise
contest the provisional obviousness type double patenting rejections.
Accordingly, Appellants have waived appeal of the provisional obviousness-
type double patenting rejections of claims 1 and 4—11, and we summarily
sustain the provisional rejections over Applications 12/605,030; 13/309,200;
13/253,936; 13/310,279; and 13/310,368. See Manual of Patent
Examining Procedure (MPEP) § 1205.02 (9th ed. Rev. 07, Nov. 2015).
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Application 13/310,322
ISSUES
The issues presented by Appellants’ arguments are as follows:
Does the Examiner err in finding Lundberg discloses “automatically
associating the at least one mapped patent concept to one or more individual
patent claims which are dependent on the one or more independent patent
claims based on the patent concept individually mapped to the independent
patent claims,” as recited in claim l?4
Does the Examiner err in finding the combination of Speier and
Elfayoumy teaches or suggests
mapping the one or more independent patent claims to at
least one patent concept, [and]
automatically associating the at least one mapped patent
concept to one or more individual patent claims which are
dependent on the one or more independent patent claims based
on the patent concept individually mapped to the independent
patent claims[,]
as recited in claim 1?
ANALYSIS
Rejection under 35 U.S.C. § 102
The Examiner finds Lundberg maps a patent claim to a concept or a
claim limitation to a limitation concept. Ans. 3 (citing Lundberg || 26, 39,
4 Appellants’ arguments raise additional issues with respect to the § 102(b)
rejection of claims 1—21 as being anticipated by Lundberg. Because the
identified issue is dispositive of the Appeal as to that rejection, we do not
reach the additional issues.
6
Appeal 2016-007787
Application 13/310,322
50, 58, 59). The Examiner further finds Lundberg’s mappings include
“independent claims, dependent claims[,] or both.” Id.
Appellants argue, among other things, Lundberg does not disclose
“automatically associating the at least one mapped patent concept to one or
more individual patent claims which are dependent on the one or more
independent patent claims based on the patent concept individually mapped
to the independent patent claims,” as recited in claim 1. Reply Br. 2
(emphasis added by Appellants). We agree with Appellants.
A claim is anticipated only if each and every element as set forth in
the claim is found, either expressly or inherently described, in a single prior
art reference. Verdegaal Bros., Inc. v. Union Oil Co. of Cal., 814 F.2d 628,
631 (Fed. Cir. 1987).
The Fundberg reference is generally directed to claim mapping. See
Fundberg 12 (“This application relates to patent mapping.”). Paragraph 58
of Fundberg, relied upon by the Examiner, discloses:
[A] claim map can include claims of one or more patents or
patent applications to provide a graphical representation of
related claims. Such maps can include maps of patent families
and can illustrate the relationship of claim limitations within a
patent family. These maps c[a]n include independent claims,
dependent claims, or both
Fundberg | 58.
The Examiner and Appellants agree that Fundberg’s mappings
include concepts mapped to both independent and dependent claims. See
Ans. 3; see also Reply Br. 2. However, Fundberg does not expressly
disclose that any particular concept mapped to any particular independent
claim is automatically associated to a claim dependent on the independent
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Application 13/310,322
claim. Further, although it is possible that a particular concept is mapped to
both a particular independent claim and claim dependent on, i.e., associated
with, the independent claim, “[t]he mere fact that a certain thing may result
from a given set of circumstances is not sufficient” to establish an inherent
disclosure for purposes of anticipation under § 102. In re Oelrich, 666 F.2d
578, 581 (CCPA 1981) (quoting Hansgirg v. Kemmer, 102 F.2d 212, 214
(CCPA 1939)). Accordingly, the Examiner has not sufficiently explained
how Lundberg’s concept mapped to an independent claim is automatically
associated to a claim dependent on the independent claim.
Appellants have persuaded us of error in the anticipation rejection of claim
1. Independent claims 11 and 21 recite similar limitations (see App. Br.
(Claims App’x) 14—16), and were rejected on similar bases (see Final
Act. 7—8). Accordingly, we do not sustain the anticipation rejection of
independent claims 1,11, and 21, and claims 2—10 and 12—20, which
respectively depend, directly or indirectly, from claims 1 and 11.
Rejection under 35 U.S.C. § 103
Mapping Claim(s) to Concept(s)
The Examiner relies on paragraph 118 of Speier, when combined with
Elfayoumy, to teach or suggest mapping a patent claim to a patent concept.
Final Act. 13. Appellants assert paragraph 118 of Speier “generally
describes searching for a patent claim and associating the claim with a
hyperlink to intrinsic evidence (e.g., the specification) or extrinsic evidence
(e.g., a reference)” (App. Br. 9), but argues paragraph 118 of Speier does not
teach or suggest mapping an independent patent claim to at least one patent
concept, as recited in claim 1 (id.). We disagree.
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Application 13/310,322
Although paragraph 118 of Speier does not explicitly recite either a
“concept” or a “mapping,” “a[] . . .reference . . . need not duplicate word for
word what is in the claims.” Standard Havens Prods., Inc. v. Gencor Indus.,
Inc., 953 F.2d 1360, 1369 (Fed. Cir. 1991); cf. In re Bond, 910 F.2d 831,
832—33 (Fed. Cir. 1990) (citing Akzo N.V. v. U.S. Inti Trade Comm’n, 808
F.2d 1471, 1479 & n.l 1 (Fed. Cir. 1986)) (interpretation of references “is
not an ‘ipsissimis verbis’ test.”).
During examination, claims are given their broadest reasonable
interpretation consistent with the specification. See In re Am. Acad, of Sci.
Tech Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). Appellants’ Specification
does not define a “patent concept,” but does note “patent concepts” are
scope concepts or technology categories. Spec. 139. See also id. H 41^44.
While these descriptions inform our construction of the term “patent
concept,” they do not limit our interpretation. We, therefore, construe the
term “concept” in accordance with its plain meaning, namely “an abstract or
generic idea generalized from particular instances.” Merriam-Webster’s
Collegiate Dictionary 238 (10th ed. 1999). Thus, under a broadest
reasonable interpretation consistent with the Specification, a “patent
concept” is an abstract or generic idea generalized from a patent.
Appellants’ Specification also fails to define “mapping.” We, therefore,
construe the term “mapping” in accordance with its plain meaning, namely
“to assign (as a set or element).” Id. 708 (10th ed. 1999).
Speier is generally related to a patent claim reference system.
Speier 12. Speier retrieves extrinsic and intrinsic evidence relating to a
claim term. Id. 1118. Speier’s extrinsic and intrinsic evidence is displayed
to a user using a hyperlink. Id. Speier’s “hyperlink may include a
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Application 13/310,322
mechanism to present a popup menu containing a plurality of references
defining the term contained in the claim limitation.” Id. Speier’s “extrinsic
evidence may include at least one of a publication, another patent, expert
testimony, testimony of an inventor on the patent, or a dictionary definition.”
Id.
A dictionary definition provides an abstract or generic idea
generalized from a word. Thus, a dictionary definition of a claim term
provides an abstract or generic idea generalized from the patent.
Accordingly, we agree with the Examiner that Speier teaches or suggests
assigning (the recited “mapping”) one or more independent patent claims to
at least one dictionary definition (the recited “patent concept”). See Final
Act. 13; Ans. 5—6.
Automatically Associating Concept(s)
Appellants contend as follows:
Elfayoumy discusses a concept hierarchy consisting of classes,
subclasses, and properties. The available property types may be
set by the user to flow from a class to a subclass. For example,
the property definition of cost may be set to flow from the class
“Camera” to the subclasses “Digital” and “Large-Format.”
However, it does not follow that the actual cost value of class
“Camera” would flow to subclasses “Digital” and “Large-
Format” as the cost value of each class and sub-class may vary
drastically.
In contrast, claim 1 recites the claim concept of the
independent claim flowing to claims dependent on the
independent claim. For example, independent claim 1 may be
mapped to concept value “A” and claim 2 depending from claim
1 may be automatically associated with concept value “A.” This
is clearly different than the placeholder property definitions as
discussed in Elfayoumy. For example, even if the property
definitions themselves have hierarchies, there is no indication
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Appeal 2016-007787
Application 13/310,322
that a property is automatically applied to another object based
on a hierarchy of objects.
App. Br. 10. We are not persuaded of error.
As pointed out by the Examiner, Elfayoumy’s “subclasses and main
class [correspond] to the claimed ‘dependent and independent [claims].’
Consequently, the combination of Speier and Elfayoumy teach all elements
of claim 1.” Ans. 6; see also Final Act. 13. Thus, contrary to Appellants’
arguments (see App. Br. 10), the Examiner’s rejection is not based on
Elfayoumy alone, but rather the collective teachings of Speier and
Elfayoumy—the latter for “mapping concepts to the subclasses of the main
class” (Ans. 6 (citing Elfayoumy | 82)).
We see no error in the Examiner’s limited reliance on Elfayoumy for
the purpose of teaching that “[o]ne of the major differences between an
ontology and a [concept semantic network (CSN)] is inheritance.
Ontologies allow downward inheritance of class properties to all its
subclasses.” Elfayoumy | 82 (emphases added). Thus, the Examiner relies
on Speier’s concept mapped to an independent claim, in combination with
Elfayoumy’s downward inheritance of properties from class to subclass, for
teaching downward inheritance of the concept mapped to the independent
claim to a claim dependent on the independent claim. Therefore, we agree
with the Examiner in concluding the combination of Speier and Elfayoumy
teaches or suggests automatically associating an independent claim’s
mapped concept to a claim dependent on the independent claim.
Accordingly, Appellants’ arguments regarding Elfayoumy’s individual
shortcomings in this regard do not show nonobviousness where, as here, the
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Application 13/310,322
rejection is based on the cited references’ collective teachings. See In re
Merck & Co., Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986).
Summary
Appellants have not persuaded us of error in the obviousness rejection
of claim 1. Appellants argue independent claims 11 and 21 together with
claim 1. See App. Br. 8—10. Accordingly, we sustain the obviousness
rejection of independent claims 1,11, and 21.
NEW GROUND OF REJECTION
Claims 1—21 are rejected on a new ground of rejection under
35 U.S.C. § 103(a) as unpatentable over Lundberg.
Independent Claim 1
We adopt as our own the Examiner’s findings regarding claim 1 vis-a-
vis Lundberg (see Final Act. 7—8) except, as discussed above, Lundberg
does not expressly or inherently disclose that a concept mapped to an
independent claim is automatically associated to a claim dependent on the
independent claim.
A portion of Lundberg’s Figure 7D is illustrative and reproduced
below:
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Appeal 2016-007787
Application 13/310,322
Reproduction of a portion of Lundberg’s Figure 7D
The Lundberg published application claims benefit to the
provisional application 60/703,413. Lundberg 11. Solely for
purposes of clarity, the same portion of Figure 7D of the ’413
provisional is reproduced below:
UCrpQlU/iS UP
21
3-
s ► V N/A (Independent) -.
J i .. *1'
i
mmmmsm
V.Gaming Machine
it ' l- tN/MImJaDE[j N/A (Indopendant) V cabinet"
■■
2T3
s_
5/
---- --------- ........... j' ......— -- _JL„,.——-j
VT' ‘45' ■ .-r-. -. ir............ • : r ;A' • • • : * 1 ‘41 ■ - j h.. '■ [
Jji. v,"' " 7L ,7— 7 A-. ^'1:, ' ’ ;■ 2 :Cs*.__: ‘3
fi l&iai&'WT? 1 j: ;C "., v'.:
,s;v . i ■ -'.VjB'J'v
fiaT- . t4s* •lis-_______ ^a_:__J S__3__ ■rESTf, LA
Portion of Figure 7D in Lundberg’s provisional application
Figure 7D of Lundberg illustrates an example arrangement of independent
and dependent claims in a patent or patent application. As shown in Figure
7D of Lundberg, independent claim 1 maps to a “Gaming Machine” concept.
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Application 13/310,322
As further shown in Figure 7D of Lundberg, claims 2—10 depend from
independent claim 1.
Lundberg teaches the following:
Within any given patent document there are often many claims
with similar limitations. Once a claim is mapped in a given
patent, the mapping software may analyze each successive claim
chosen for mapping and suggest mappings based on the way the
previous claim(s) in the patent document have been mapped.
Id. 127 (emphasis added). Lundberg, in teaching analyzing each successive
claim based on a previous claim’s mapping to a concept (e.g., the
independent claim 1 mapped to a “Gaming Machine” concept illustrated in
Figure 7D), at least suggests automatically associating the concept to each
successive claim (e.g., the dependent claims 2—10 illustrated in Figure 7D).
We note that Appellants have argued that the Examiner’s findings
ignore the word “automatically,” recited in various claim limitations. See
App. Br. 7—8. However, “it is not ‘invention’ to broadly provide a[n] . . .
automatic means to replace manual activity which has accomplished the
same result.” In re Venner, 262 F.2d 91, 95 (CCPA 1958).
ft would have been obvious to one of ordinary skill in the art for
Lundberg’s concept mapped to an independent claim to be automatically
associated to a claim dependent on the independent claim as taught by
Lundberg such that “mapping is both greatly accelerated and also made
more uniform.” Lundberg 127.
Therefore, claim 1 is rejected under 35 U.S.C. § 103(a) as
unpatentable over Lundberg.
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Application 13/310,322
Independent Claims 11 and 21
The recitations of claims 11 and 21 are substantially similar to those
of claim 1. We adopt as our own the Examiner’s findings regarding claims
11 and 21 vis-a-vis Lundberg (see Final Act. 7—8) except, as discussed
above, Lundberg does not expressly or inherently disclose that a concept
mapped to an independent claim is automatically associated to a claim
dependent on the independent claim. For the same reasons as discussed
above for claim 1, claims 11 and 21 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Lundberg.
Dependent Claims 2—10 and 12—20
Appellants do not separately contest the Examiner’s findings
regarding claims 2—10, dependent from claim 1, and claims 12—20,
dependent from claim 11, with particularity. Therefore, we adopt as our
own the Examiner’s uncontested findings regarding claims 2—10 and 12—20
vis-a-vis Lundberg. See Final Act. 8—11. For the same reasons as discussed
for claims 1 and 11 and those indicated by the Examiner for claims 2—10 and
12—20 (Final Act. 8—11), claims 2—10 and 12—20 are rejected under 35
U.S.C. § 103(a) as unpatentable over Lundberg.
DECISION
The Examiner’s decision to provisionally reject claims 1 and 4—11 on
the ground of non-statutory obviousness-type double patenting is summarily
affirmed.
The Examiner’s decision to reject claims 1—21 under 35 U.S.C.
§ 102(b) over Lundberg is reversed.
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The Examiner’s decision to reject claims 1,11, and 21 under
35 U.S.C. § 103(a) over Speier and Elfayoumy is affirmed.
We enter a new ground of rejection for claims 1—21 under 35 U.S.C.
§ 103(a) as being unpatentable over Lundberg.
Regarding the affirmed rejection(s), 37 C.F.R. § 41.52(a)(1) provides
“Appellants] may file a single request for rehearing within two months
from the date of the original decision of the Board.”
In addition to affirming the Examiner’s rejection(s) of one or more
claims, this decision contains new grounds of rejection pursuant to 37
C.F.R. § 41.50(b). Section 41.50(b) provides “[a] new ground of rejection
pursuant to this paragraph shall not be considered final for judicial review.”
Section 41.50(b) also provides that 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 the appeal 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 § 41.52 by the Board upon the same Record.
Should Appellants elect to prosecute further before the Examiner
pursuant to 37 C.F.R. § 41.50(b)(1), in order to preserve the right to
seek review under 35 U.S.C. §§ 141 or 145 with respect to the affirmed
rejection, the effective date of the affirmance is deferred until
conclusion of the prosecution before the Examiner unless, as a mere
incident to the limited prosecution, the affirmed rejection is overcome.
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If Appellants elect prosecution before the Examiner and this does not
result in allowance of the application, abandonment or a second appeal, this
case should be returned to the Patent Trial and Appeal Board for final
action on the affirmed rejection, including any timely request for rehearing
thereof.
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). See 37 C.F.R.
§§ 41.50(f), 41.52(b) (2015).
AFFIRMED-IN-PART
37 C.F.R, §41.500?)
17