International Business Machines CorporationDownload PDFPatent Trials and Appeals BoardMar 24, 202014523250 - (D) (P.T.A.B. Mar. 24, 2020) 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. 14/523,250 10/24/2014 Edwin W. Peters CAM920130003US2_8150-0483 1598 52021 7590 03/24/2020 Cuenot, Forsythe & Kim, LLC 20283 State Road 7 Ste. 300 Boca Raton, FL 33498 EXAMINER HO, BINH VAN ART UNIT PAPER NUMBER 2152 NOTIFICATION DATE DELIVERY MODE 03/24/2020 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): ibmptomail@iplawpro.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte EDWIN W. PETERS, SHERRY L. PLATEK, NITTY T. PULIKAN, BALAJI RANGANATHAN, LIVIU RODEAN, BALASUBRAMANIAN SIVASUBRAMANIAN, and ERIC WOODS _____________ Appeal 2019-002736 Application 14/523,250 Technology Center 2100 ____________ Before ST. JOHN COURTENAY III, ERIC S. FRAHM, and CATHERINE SHIANG, Administrative Patent Judges. COURTENAY, Administrative Patent Judge. DECISION ON APPEAL Appellant1 appeals under 35 U.S.C. § 134(a) from a Final rejection of claims 21–30. Claims 1–20 are canceled. We have jurisdiction over the pending claims under 35 U.S.C. § 6(b). We reverse. 1 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42(a). According to Appellant, the real party in interest is IBM Corporation. See Appeal Br. 1. Appeal 2019-002736 Application 14/523,250 2 STATEMENT OF THE CASE 2 Introduction Appellant’s claimed invention relates generally “to note taking within a virtual meeting.” (Spec. ¶ 1). Independent Claim 21 21. A computer-implemented method within a computer hardware system, comprising: a hardware processor configured to initiate the following executable operations: receiving a first meeting user notes from a first participant of a virtual meeting; receiving a second meeting user notes from a second participant of the virtual meeting; [L] analyzing text of the first and second meeting user notes to identify key elements therein; cross-referencing the analysis of the text of first and second meeting user notes to identify a common key element in the analysis thereof that is common to both the first and second meeting user notes; and generating consolidated system notes that include the common key element, wherein the identifying of a key element includes establishing that each key element meets a predetermined threshold of significant. Appeal Br. 17, “CLAIMS APPENDIX.” (Bracketed lettering added and disputed limitations “L” emphasized). 2 We herein refer to the Final Office Action, mailed June 1, 2018 (“Final Act.”); Appeal Brief, filed Oct. 10, 2018 (“Appeal Br.”); the Examiner’s Answer, mailed Jan. 2, 2019 (“Ans.”), and the Reply Brief, filed Feb. 19, 2019 (“Reply Br.”). Appeal 2019-002736 Application 14/523,250 3 References The prior art relied upon by the Examiner as evidence is: Name Reference Date Kansal Agapi et al. Yoshida et al. Bingaman et al. Moran et al. US 2009/0119246 A1 US 2009/0271438 A1 US 2007/0013945 A1 US 2006/0233334 A1 US 6,018,346 May 7, 2009 Oct. 29, 2009 Jan. 18, 2007 Oct. 19, 2006 Jan. 25, 2000 Rejections A. Claims 21–30 are provisionally rejected on the ground of nonstatutory obviousness-type double patenting (OTDP) as being unpatentable over claims 28–47 of copending Application No. 13/838,731. B. Claims 21–23, 26, 27, and 30 are rejected as being unpatentable under pre-AIA 35 U.S.C. § 103(a) over Kansal in view of Agapi et al. (“Agapi”). C. Claims 24 and 25 are rejected as being unpatentable under pre-AIA 35 U.S.C. § 103(a) over Kansal, Agapi, and Yoshida et al. (“Yoshida”). D. Claim 28 is rejected as being unpatentable under pre-AIA 35 U.S.C. § 103(a) over Kansal, Agapi, and Bingaman et al. (“Bingaman”). E. Claim 29 is rejected as being unpatentable under pre-AIA 35 U.S.C. § 103(a) over Kansal, Agapi, and Moran et al. (“Moran”). Appeal 2019-002736 Application 14/523,250 4 Prior Decision PTAB Appeal 2016-008464, Application No. 14/523,250, decided April 28 2017. Examiner affirmed. Related Appeals This appeal is related to PTAB Appeal 2019-002741, stemming from co-pending Application No. 13/838,731. (Appeal Br. 1). See March 16, 2020 Board Decision: Examiner Affirmed. The instant appeal and Appeal 2019- 002741 have the same assignee (IBM Corporation), and are filed by the same inventive entity (Peters et al.). This appeal is also related to PTAB Appeal 2016-004945 (Application No. 14/216,682) (Notice of Allowance mailed Dec. 10, 2019) and PTAB Appeal 2016-004920 (Application No. 13/839,038) (Notice of Allowance mailed Dec. 17, 2019). These appeals also have the same assignee (IBM Corporation), and are filed by the same inventive entity (Peters et al.). ANALYSIS We have considered all of Appellant’s arguments and any evidence presented. In our analysis below, we highlight and address specific findings and arguments for emphasis. Rejection A of Claims 21–30 under Provisional Non-statutory OTDP When all other rejections on appeal have been reversed, and the only remaining rejections are provisional non-statutory OTDP rejections, it is Appeal 2019-002736 Application 14/523,250 5 premature to address the provisional rejections. Ex Parte Moncla, 95 USPQ2d 1884, 1885 (BPAI 2010) (precedential). Here, we reverse infra the Examiner’s Rejections B, C, D, and E, of claims 21–30, over the cited prior art, for the reasons discussed below. Therefore, the only remaining rejection on appeal is the provisional non- statutory OTDP Rejection A of claims 21–30. However, we do not reach provisional OTDP Rejection A of claims 21–30 to decide this appeal, following the precedential authority of Moncla, 95 USPQ2d at 1885. Rejection B of Independent Claim 21 under § 103 Issues: Under 35 U.S.C. § 103, we focus our analysis on the following argued limitations that we find are to be dispositive regarding Rejection B of claims 21–23, 26, 27, and 30: Did the Examiner err by finding that Agapi teaches or suggests the disputed, dispositive limitations “L”: “analyzing text of the first and second meeting user notes to identify key elements therein; cross-referencing the analysis of the text of first and second meeting user notes to identify a common key element in the analysis thereof that is common to both the first and second meeting user notes; and generating consolidated system notes that include the common key element, wherein the identifying of a key element includes establishing that each key element meets a predetermined threshold of significant,” Appeal 2019-002736 Application 14/523,250 6 within the meaning of representative claim 21?3 (emphasis added). See Final Act. 5–6. Appellant contest limitations “L” of claim 21, by contending: [T]he Examiner has not specifically identified those teachings within Agapi being relied upon by the Examiner and mapped those teachings to the limitations at issue. Rather, the Examiner generally refers to paragraphs [0008] and [0057] of Agapi without explanation. Appeal Br. 8 (emphasis added). Secondly, Appellant contends that the Examiner’s obviousness analysis represented: no more than the Examiner repeating the limitations at issue as the “rational underpinning.” In essence, the Examiner is merely arguing that it would have been obvious to include “X” for the purpose of having “X.” This is not a rational underpinning — it is circular reasoning, Appeal Br. 11 (emphasis added). Regarding the first contention, and based upon our review of the record, we agree with Appellant that the Examiner’s mapping of the disputed limitations is unclear, because the Examiner supports the rejection with a grouping of citations, without providing a clear mapping of the 3 We give the contested claim limitations the broadest reasonable interpretation consistent with the Specification. See In re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997). Appeal 2019-002736 Application 14/523,250 7 individual claim terms to the corresponding specific feature(s) found in Agapi. See Final Act. 5–6. We note the Board is a reviewing body that does not perform initial examination. To show obviousness (or anticipation), the Examiner must provide a clear mapping of each claim limitation to the corresponding specific feature found in the reference, which the Examiner must identify with particularity.4 In our review of the Answer, we find Examiner’s responses are duplicative and insufficient to establish a prima facie case of obviousness. The Examiner merely reproduces, verbatim, a number of portions of Agapi being relied upon, without further clarifying how the “cross-referencing” and the “identifying” limitations “L” are taught or suggested by Agapi. See Ans. 8–10 (emphasis added). Appellant also contends Agapi does not store an identified topic keyword “as part of the generation of consolidated system notes.” Appeal Br. 9; Reply Br. 4. We find the Examiner does not clearly explain in the Final Action or the Answer how Agapi teaches or at least suggests the disputed limitation of “generating consolidated system notes that include the common key element.” Claim 21 (emphasis added). The prima facie burden has therefore not been met, and the rejection does not adhere to the minimal requirements of 35 U.S.C. § 132(a), “when a 4 See 37 C.F.R. § 1.104(c)(2) (“When a reference is complex or shows or describes inventions other than that claimed by the applicant, the particular part relied on must be designated as nearly as practicable. The pertinence of each reference, if not apparent, must be clearly explained and each rejected claim specified.” (emphasis added)). Appeal 2019-002736 Application 14/523,250 8 rejection is so uninformative that it prevents the applicant from recognizing and seeking to counter the grounds for rejection.” Chester v. Miller, 906 F.2d 1574, 1578 (Fed. Cir. 1990). Regarding Appellant’s second contention, we also agree with Appellant that Examiner has not provided an adequate reason based on rational underpinnings to explain why a skilled artisan would have been led to modify the teachings of Kansal with those of Agapi to arrive at the claimed invention of claim 21. In the Final Office Action (6–7), we find the Examiner simply concludes, without any explanation or justification, that a “skilled artisan would have been motivated to improve[] Kansal” solely for the purpose of implementing the disputed limitations “L”. Final Act. 6–7 (reciting limitations “L”, verbatim). However, “rejections on obviousness grounds cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.” KSR Int’l., Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (citing In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)).5 Therefore, we find some degree of speculation would be required to affirm the Examiner on this record. We decline to engage in speculation. 5 See In re NuVasive, Inc., 842 F.3d 1376, 1383 (Fed. Cir. 2016) (“‘[C]onclusory statements’ alone are insufficient and, instead, the finding must be supported by a ‘reasoned explanation.’” (internal citation omitted)); see also In re Chaganti, 554 Fed. Appx. 917, 922 (Fed. Cir. 2014) (“It is not enough to say that . . . to do so would ‘have been obvious to one of ordinary skill.’. . . Such circular reasoning is not sufficient—more is needed to sustain an obviousness rejection.”). Appeal 2019-002736 Application 14/523,250 9 “A rejection . . . must rest on a factual basis . . . .” In re Warner, 379 F.2d 1011, 1017 (CCPA 1967). “The Patent Office has the initial duty of supplying the factual basis for its rejection. It may not . . . resort to speculation, unfounded assumptions or hindsight reconstruction to supply deficiencies in its factual basis.” Id. Accordingly, for essentially the same reasons argued by Appellant in the Briefs, as further discussed above, we are constrained on this record to reverse the Examiner’s § 103 Rejection B of independent claim 21 and dependent claims 22, 23, 26, 27, and 30, rejected on the same basis, and depending therefrom. Rejections C, D, and E of Dependent Claims 24, 25, 28 and 29 under § 103 In light of our reversal of the rejections of claims 21 and 27, supra, we also reverse obviousness Rejections C, D, and E under § 103 of claims 24, 25, 28, and 29, which variously and ultimately depend from claim 21 or claim 27. On this record, the Examiner has not shown how the additionally cited secondary references overcome the aforementioned deficiencies of the base combination of Kansal and Agapi, as discussed above regarding claim 21. CONCLUSIONS 6 The Examiner erred with respect to the obviousness Rejections B, C, 6 Given that we have affirmed the Examiner’s 35 U.S.C. § 101 rejection for similar claims in copending Appeal 2019-002741 (mailed Mar. 16, 2020) as being patent ineligible, we leave it the Examiner in the event of further prosecution, including any review prior to allowance, to consider a rejection Appeal 2019-002736 Application 14/523,250 10 D, and E of claims 21–30, over the cited prior art of record, and we do not sustain the rejections. We do not reach the Examiner’s provisional Rejection A of claims 21–30, on the ground of nonstatutory obviousness-type double-patenting. See Moncla, 95 USPQ2d at 1885 (precedential). DECISION SUMMARY Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 21–23, 26, 27, 30 103 Kansal, Agapi 21–23, 26, 27, 30 24, 25 103 Kansal, Agapi, Yoshida 24, 25 28 103 Kansal, Agapi, Bingaman 28 29 103 Kansal, Agapi, Moran 29 Overall outcome 21–30 REVERSED under 35 U.S.C. § 101 under the Director’s 2019 Revised Guidance for all claims 21–30 on appeal. Although the Board is authorized to reject claims under 37 C.F.R. § 41.50(b), no inference should be drawn when the Board elects not to do so. See Manual of Patent Examining Procedure (MPEP) § 1213.02. Copy with citationCopy as parenthetical citation