Sandeep Mehta

Patent Trials and Appeals Board

Aug 20, 2019

14086514 - (D) (P.T.A.B. Aug. 20, 2019)

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.
14/086,514 11/21/2013 Sandeep MEHTA MTA-101 CIP 5726
32205 7590 08/20/2019
Patti & Malvone Law Group, LLC
One North LaSalle St., 44th Floor
Chicago, IL 60602
EXAMINER
SHAAWAT, MUSSA A
ART UNIT PAPER NUMBER
3665
NOTIFICATION DATE DELIVERY MODE
08/20/2019 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):
info@pattimalvonelg.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte SANDEEP MEHTA
____________

Appeal 2017-011183
Application 14/086,5141
Technology Center 3600
____________

Before MICHAEL C. ASTORINO, KENNETH G. SCHOPFER, and
ROBERT J. SILVERMAN, Administrative Patent Judges.

SILVERMAN, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
The Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s
decision rejecting claims 29–36. We have jurisdiction under 35 U.S.C.
§ 6(b).
We REVERSE and enter a NEW GROUND OF REJECTION under
37 C.F.R. § 41.50(b).

1 The Appeal Brief (page 3) states: “The real party in interest is the
applicant and inventor of the above-identified application, Sandeep Mehta.”
We note that USPTO records indicate that the subject application of this
Appeal has been assigned by Sandeep Mehta to InspiRD, Inc. (Reel/Frame:
031651/0988, received November 21, 2013).
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ILLUSTRATIVE CLAIM
29. A method for generating and updating a dynamically
linked information record implemented in a non-transitory
computer storage medium coupled to a computer, said linked
information record used to manage Research and Development
(R&D) of a new product or technology in an enterprise, the
enterprise comprising one or more divisions, the one or more
divisions comprising one or more users, the method comprising
the steps of:
using the computer, by a first user, to input or modify at
least one or more product and technology categories and
subcategories in the dynamically linked information record;
using the computer, by the first user, to input or modify
at least the relationships between the one or more categories
and subcategories in the dynamically linked information record;
using the computer and the relationships between the one
or more categories and subcategories, by the first user, to
receive from a second user a set of projects and subprojects for
R&D of a new product or technology into the dynamically
linked information record;
using the computer, by the first user, to assign at least
one or more of the categories and subcategories to one or more
of the set of projects and subprojects in the dynamically linked
information record; and
generating and dynamically updating, by the first user,
the linked information record in the non-transitory computer
storage medium by dynamically linking the categories and
subcategories and the projects and subprojects regardless of
order or time of receipt according to the relationships between
the one or more categories and subcategories;
transmitting, by the first user, using the computer, the
linked information record for storage in the non-transitory
computer storage medium; and
dynamically informing, by the first user, a set of users
contributing to the linked information record of the changes in
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the linked information record using one or more of the set of
communication channels.
REJECTION
Claims 29–36 are rejected under 35 U.S.C. § 101 as ineligible subject
matter.
FINDINGS OF FACT
The findings of fact relied upon, which are supported by a
preponderance of the evidence, appear in the following Analysis.
ANALYSIS
Subject-Matter Eligibility
“The claims give notice both to the examiner at the U.S. Patent and
Trademark Office during prosecution, and to the public at large, including
potential competitors, after the patent has issued.” Johnson & Johnston
Assocs. Inc. v. R.E. Service Co., Inc., 285 F.3d 1046, 1052 (Fed. Cir. 2002)
(en banc).
Although “claim construction is not an inviolable prerequisite” to an
analysis under § 101, it is, nevertheless, necessary to have “a full
understanding of the basic character of the claimed subject matter.”
Bancorp Servs., LLC v. Sun Life Assur. Co. of Canada, 687 F.3d 1266,
1273–74 (Fed. Cir. 2012). See also McRO, Inc. v. Bandai Namco Games
Am. Inc., 837 F.3d 1299, 1311 (Fed. Cir. 2016) (“As an initial matter, we
note that, in this case, claim construction is helpful to resolve the question of
patentability under § 101.”)
In the present Appeal, we are unable to ascertain such an
understanding of the claimed subject matter and, therefore, we do not assess
the merits of the rejection under § 101. Rather, for the reasons given below,
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and pursuant to our authority under 37 C.F.R. § 41.50(b) to enter a new
ground of rejection, we determine that the claims are indefinite under
35 U.S.C. § 112(b). Accordingly, the rejection under § 101 must fall, pro
forma, because it is necessarily based upon speculative assumptions as to the
meaning of the claims. See In re Steele, 305 F.2d 859, 862–63 (CCPA
1962) (addressing an obviousness rejection). This determination does not
reflect on the merits of the underlying rejection based upon § 101.
Indefiniteness
(New Ground of Rejection)
Claim 29, the sole independent claim in the Appeal, contains language
that renders the claim indefinite.
“[A] claim is indefinite when it contains words or phrases whose
meaning is unclear,” i.e., “ambiguous, vague, incoherent, opaque, or
otherwise unclear in describing and defining the claimed invention.” In re
Packard, 751 F.3d 1307, 1310–13 (Fed. Cir. 2014); see also In re McAward,
No. 2015-006416, 2017 WL 3669566, at *3 (PTAB Aug. 25, 2017)
(precedential).
As our reviewing court has emphasized, “[c]laims must be
‘interpreted with an eye toward giving effect to all terms in the claim.’”
Becton, Dickinson & Co. v. Tyco Healthcare Group, LP, 616 F.3d 1249,
1257 (Fed. Cir. 2010) (quoting Bicon, Inc. v. Straumann Co., 441 F.3d 945,
950 (Fed. Cir. 2006)). See also In re Power Integrations, Inc., 884 F.3d
1370, 1376 (Fed. Cir. 2018) (explaining that a “problem with the board’s
claim construction is that it renders claim language meaningless.”); In re
Danly, 263 F.2d 844, 847 (CCPA 1959) (“limit[ing] the claims to a
construction in which a connection with a source of alternating current is
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actually made,” even though “not positively recite[d],” because “any other
interpretation would render the [claimed] expression virtually
meaningless”).
As an initial matter, the three appearances of the expression “the
linked information record,” in claim 29, have no antecedent basis in the
claim. That is, the claim does not include any prior recitation of “a linked
information record” (employing the indefinite article “a”), such that the
claimed recitation of “the linked information record” (employing the definite
article “the”) is unclear. Even if “the linked information record” were
understood to mean claim 29’s “dynamically linked information record”
(emphasis added), a phrase appearing first in the claim preamble, there are
other reasons why the claim would be indefinite.
With regard to the recited “dynamically updating . . . the linked
information record,” it is unclear how the word “dynamically” might modify
“updating . . . the linked information record,” because we understand that the
recited “information record” is already “dynamically linked.” Notably, the
Specification does not employ the phrase “dynamically updating.”
Furthermore, it is unclear what quality the various claim activities
characterized as occurring “dynamically” should be understood to possess.
For example, it is unclear how the word “dynamically” modifies the term
“informing” in the phrase “dynamically informing.” Notably, the
Specification (¶ 45) points out: “[T]he linked information module 304
maintains a very dynamic nature continuously being updated with any action
related to the R&D activities.” The Specification does not provide further
explanation or otherwise use the terms “dynamic” or “dynamically” and
does not employ the phrase “dynamically informing.”
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It is also unclear what distinctions exist among the claimed features of
(1) “assign[ing] at least one or more of the categories and subcategories to
one or more of the set of projects and subprojects in the dynamically linked
information record,” (2) “generating and dynamically updating . . . the
linked information record,” and (3) “dynamically linking the categories and
subcategories and the projects and subprojects.” It appears that all of these
expressions relate to adding the same supplemental information to the same
“information record.”
Finally, there is no antecedent basis for the recitation “the set of
communication channels.” That is, the claim does not include any prior
recitation of “a set of communication channels” (employing the indefinite
article “a”), such that the claimed recitation of “the set of communication
channels” (employing the definite article “the”) is unclear. Notably, the
Specification (¶ 54) refers to a singular “communication channel,” which
may “include various means of communication such as emails, messengers,
telephones, and meeting conversations,” but claim 29 does not reference,
with particularity, any of these means of communication.
Therefore, in view of the foregoing, we enter a new ground of
rejection of independent claim 29 and dependent claims 30–36 under
35 U.S.C. § 112(b), as indefinite for failing to particularly point out and
distinctly claim the subject matter regarded as the invention.
DECISION
We REVERSE the Examiner’s decision rejecting claims 29–36 under
35 U.S.C. § 101, pro forma.
We ENTER A NEW GROUND OF REJECTION for claims 29–36,
under 35 U.S.C. § 112(b).
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This Decision contains a new ground of rejection pursuant to
37 C.F.R. § 41.50(b). Section 41.50(b) provides that “[a] new ground of
rejection pursuant to this paragraph shall not be considered final for judicial
review.” Section 41.50(b) also provides:
When the Board enters such a non-final decision,
the appellant, within two months from the date of the
decision, must exercise one of the following two options
with respect to the new ground 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
prosecution will be remanded to the examiner. The new
ground of rejection is binding upon the examiner unless
an amendment or new Evidence not previously of Record
is made which, in the opinion of the examiner,
overcomes the new ground of rejection designated in the
decision. Should the examiner reject the claims,
appellant may again appeal to the Board pursuant to this
subpart.
(2) Request rehearing. Request that the
proceeding be reheard under § 41.52 by the Board upon
the same Record. The request for rehearing must address
any new ground of rejection and state with particularity
the points believed to have been misapprehended or
overlooked in entering the new ground of rejection and
also state all other grounds upon which rehearing is
sought.
Further guidance on responding to a new ground of rejection can be
found in MPEP § 1214.01.
REVERSED; 37 C.F.R. § 41.50(b).