SIGRAM SCHINDLER BETEILIGUNGSGESELLSCHAFT MBH

Patent Trials and Appeals Board

Oct 9, 2020

14294825 - (D) (P.T.A.B. Oct. 9, 2020)

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.
14/294,825 06/03/2014 Sigram SCHINDLER 2654-0016US01 6628
137713 7590 10/09/2020
Potomac Law Group, PLLC
8229 Boone Boulevard
Suite 430
Vienna, VA 22182
EXAMINER
SMITH, PAULINHO E
ART UNIT PAPER NUMBER
2125
NOTIFICATION DATE DELIVERY MODE
10/09/2020 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):
eofficeaction@appcoll.com
patents@potomaclaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte SIGRAM SCHINDLER1
____________________

Appeal 2019-003733
Application 14/294,825
Technology Center 2100
____________________

Before ROBERT E. NAPPI, JEAN R. HOMERE, and JAMES R. HUGHES,
Administrative Patent Judges.

NAPPI, Administrative Patent Judge.

DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 33 through 52, which constitute all of the pending claims.
Appeal Br. 2. Claims 1–32 have been canceled. Id. We have jurisdiction
under 35 U.S.C. § 6(b).
We AFFIRM.

1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42(a). According to Appellant, SIGRAM SCHINDLER
BETEILIGUNGSGESELLSCHAFT MBH is the real party in interest.
Appeal Br. 2.
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Application 14/294,825

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CLAIMED SUBJECT MATTER
The claimed subject matter relates generally to an innovation expert
system to present automatically or interactively a legal argument chain in
response to a question being asked. Spec. 5. Claim 33 is reproduced below.
33. A computer implemented innovation expert system
(IES) configured to be executed in at least one of a
configuration-mode and a real-time mode, the innovation expert
system comprising:
a processor;
memory for storing data relating to the operation of the
innovation expert system, the stored data comprising:
a given data structure (DS) derived from a given
claimed invention (CI and its technical teaching TT.0
respectively) and its corresponding/peer prior art
documents (called reference set RS); and
fragmented arguable subtests (ASTs) logically
comprised by the data structure, the fragmented arguable
subtests (ASTs) comprising the results of the claimed
invention's FSTP test, wherein the FSTP test comprises a
set of tests for evaluating a claimed invention under
substantive patent law, and wherein the instantiation of
the fragmented arguable subtests provides access to the
respective parts the FSTP test results;
at least one input/output device for interacting with at
least one user in at least one of a configuration mode and a real-
time mode;
program instructions stored on the memory for execution
by the processor, the program instructions comprising:
first program instructions to provide a user interface
entity (UIE) via the input/output device for enabling a user to
input/access a set of legal argument chains (LACs) of the given
claimed invention to show that the claimed invention satisfies
substantive patent law (SPL), wherein a legal argument chain
(LAC) is derived from one or more arguable subtests (ASTs)
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and comprises a presentation of one or more arguable subtests
(ASTs), the instantiation of which facilitates decision making as
to a claimed invention's satisfying of substantive patent law,
wherein the user interface entity comprises a plurality of user
interface entities, the plurality of user interface entities each
comprising synchronously accessible components including:
a knowledge representation user interface entity (KR-
UIE), any instantiation of it enables structuring and controlling
the presentation of any of the LAC's by an appropriate choice of
the logics of the AST's;
a human interaction user interface entity (HI-UIE), any
instantiation of it enables determining the multimedia aspects
and didactic presentation of any of the legal argument chains;
and
an interaction control user interface entity (IC-UIE), any
instantiation of it enables structuring and controlling the
presentation of any part of any legal argument chain;
second program instructions for enabling, in
configuration mode, a user to generate or modify, for a selected
one of the plurality of these three user interface entities, the
synchronously accessible components, by:
automatically deriving, based on user input, a
selected user interface entity of the plurality of user
interface entity; and
automatically prompting a user to input:
into the knowledge representation user
interface entity (KR-UIE) of the selected user
interface entity, a presentation of one or more
fragmented arguable subtests logically comprised
by the given data structure derived from the given
claimed invention,
into the human interaction user interface
entity (HI-UIE) of the selected user interface
entity, how the knowledge representation user
interface entity is to be presented as a legal
argument chain via the input/output device, and
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into the interaction control user interface
entity (IC-UIE) of the selected user interface
entity, what interactive control a user has for a
legal argument chain presentation; and
third program instructions for automatically presenting,
in real-time mode, a legal argument chain, based on the
fragmented argument subtests, by executing the selected user
interface entity in real-time and combining the fragmented
argument subtests to form the legal argument chain.
EXAMINER’S REJECTIONS2
The Examiner rejected claims 37 and 48 under 35 U.S.C. § 112(b) as
being indefinite. Final Act. 4.
The Examiner rejected claims 33 through 52 under 35 U.S.C. § 103(a)
as being unpatentable over Szygenda (US 2008/0086507 A1; April 10,
2008); Manual of Patent Examining Procedure (MPEP) in view of Hexel
(Rene Hexel et al.,“Powerpoint to the People”: Suiting the World to the
Audience, pp. 49–50 (2004)), and further in view of Cisco (Cisco, Sharing a
Screen, Documents or Whiteboard in Cisco Unified Meeting Place, Release
7.0, pp. 1–20 (December 9, 2009)). Final Act. 5–16.3

DISCUSSION

2 Throughout this Decision we refer to Appellant’s Specification filed June
3, 2014 (“Spec.”); Appeal Brief filed July 30, 2018 (“Appeal Br.”); Reply
Brief filed April 8, 2019 (“Reply Br.”); Final Office Action mailed
November 30, 2019 (“Final Act.”); and the Examiner’s Answer mailed
February 6, 2019 (“Answer”).
3 We note the statement of the rejection on page 5 of the Final Action does
not include claims 38 and 47, However the detailed findings in support of
the rejection identify claims 38 and 47 on pages 13, and 15 of the Final
Action identifies that these claims are included in the rejection under 35
USC § 103.
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Rejection under 35 U.S.C. § 112(b)
The Examiner rejects claims 37 and 48 under 35 U.S.C. § 112(b) as
“the plurality of user interface entities are subdivided into user
interface entity steps, whereby invoking one of the plurality of
user interface entities causes executing at least one of the
corresponding user interface entity steps and whereby any step
defined in both config-mode and real-time mode may be
applied” which renders the claims indefinite. It is not clear to
examiner how a user interface entity is subdivided into user
interface entity steps and how does user interface entity step
differ from the user interface entity. However there no
instructions on what is consider a subdivision also.
Final Act. 4.
Appellant argues the Examiner’s rejection of claims 37 and 48 under
35 U.S.C. § 112(b) is in error because the limitations in question are clear
when interpreted in light of the Specification. Appeal Br. 15. According to
Appellant, the Specification discusses that the user interface entities can be
subdivided into user interface entity steps, which differ from the user
interface entity. Id. (citing paragraphs 19 and 30 of the published
application (US 2014/0365385 A1; December 11, 2014), (citations found on
pages 2 and 3 of the Specification)).
Appellant’s arguments have persuaded us of error in the Examiner’s
rejection. The Office “determines the scope of claims . . . not solely on the
basis of the claim language, but upon giving claims their broadest reasonable
construction ‘in light of the specification as it would be interpreted by one of
ordinary skill in the art.’” Phillips v. AWH Corp., 415 F.3d 1303, 1316
(Fed. Cir. 2005). Applying the broadest reasonable interpretation of a claim,
then, the Office establishes a prima facie case of indefiniteness with a
rejection explaining how the metes and bounds of a pending claim are not
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clear because the claim contains words or phrases whose meaning is unclear.
See In re Packard, 751 F.3d 1307, 1310 (Fed. Cir. 2014).
Here, each of claims 37 and 48 further limits independent claims 33
and 43 by identifying that the user interface entities are subdivided into user
interface entity steps, and that invoking a user interface entity causes
executing of at least one of the steps. We see no ambiguity in these claim
limitations, the user interface entity steps and user interface entities are
different items. Further, the claims and Specification clearly identify that the
entities are subdivided into user entity steps which are executed when the
entities are invoked. Spec. 3. Thus, we do not sustain the Examiner’s
rejection of claims 37 and 48 under 35 U.S.C. § 112(b) as being indefinite.

Rejection under 35 U.S.C. § 103
Appellant argues the Examiner’s obviousness rejection of claims 33
through 52 is in error as a) the references do not teach a “data structure
derived from a claimed invention’s technical teachings and corresponding
prior art documents as well as fragmented arguable subtests (ASTs) logically
comprised by the data structure, the fragmented arguable subtests (ASTs)
comprising the results of the claimed invention's FSTP test,” or b) a user
interface entity for enabling the user to input a set of legal argument chains.
Appeal Br. 17. Appellant argues that:
Szygenda is directed to an automated letters patent
analysis support system. . . .
. . . In contrast, the IES recited in the present application
has no end result at all, but eventually is capable of instantly
replying to ANY question about a claim invention's satisfying
an SPLFFOLLIN by automatically reproducing at least one LAC
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(in at least one predefined presentation) verbally/graphically
proving that this is true.
Appeal Br. 17–18 (emphasis omitted). Appellant additionally argues that
the skilled artisan would not combine the references. Appeal Br. 19–20.
Appellant asserts:
In particular, incorporating the process of MPEP 2103
into Szygenda would significantly alter the principle of
operation of Szygenda. That is Szygenda is intended to
narrowly determine a prior art list, not a full patentability
determination. Accordingly, one of skill in the art would not
seek to alter Szygenda by incorporating features such as
determining whether the claimed invention represents patent-
eligible subject matter, determining whether the claims of the
application adequately set forth the invention, determining
whether the claims comply with novelty and non-obviousness
requirements, and communicating the findings to the Appellant.
Appeal Br. 20.
The Examiner responds to Appellant’s arguments stating “Appellant's
interpretation of Szygenda is narrow and incorrect. While the Szygenda
reference deal with prior art searching it also deals with mapping claims
limitations to prior which discloses anticipations in the form of 102 and 103
rejections.” Answer 6 (citing Szygenda Figures 13–15 and ¶ 37). Further
the Examiner notes that paragraphs 36 and 37 of Szygenda identify that
other aspects, such as indefiniteness and antecedent basis and validity issues,
suggest that the system can be used for more than prior art issues. Answer 7.
Appellant’s augments have not persuaded us of error in the
Examiner’s rejection. We have reviewed the cited teachings of Szygenda
cited by the Examiner and concur with the Examiner’s findings. We further
note that Appellant’s arguments are not commensurate with the scope of
representative claim 33. The claim does not recite that the IES “ is capable
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of instantly replying to ANY question about a claim invention[],” as argued
by Appellant. Appeal Br. 18 (emphasis omitted). Representative claim 33
states “ a . . . memory for storing data . . . comprising . . . a given data
structure . . . derived from a . . . claimed invention . . . and its technical
teaching . . . [a] fragmented arguable subtest . . . the fragmented arguable
subtest . . . comprising the results of the claimed invention’s FSTP test.”4
The claim, further, recites “automatically presenting, in real-time mode, a
legal argument chain, based on the fragmented argument subtests.” The
claim is not limited to replying to any question. Szygenda teaches a system
that indicates when a single reference or combination of references contains
all of the key parameters of a given claim. See Szygenda ¶ 37. This shows
that Szygenda teaches a data structure derived from a claimed invention and
its technical teachings. It also discusses determining whether a single
reference or combination of references contains the elements of the claim; an
arguable subtest with the results of a test under substantive patent law
(whether a reference anticipates a claim or only makes certain limitations
obvious). In combination with the MPEP, the skilled artisan would
recognize these are analyses under 35 U.S.C. § 102 and 35 U.S.C. § 103.
Further, Szygenda teaches the user may add, modify, or delete results to
refine or modify the search, which suggests a using a user interface to
modify the data. Szygenda ¶ 38. Accordingly, Appellant’s augments have
not persuaded us the Examiner erred in finding that the combination of the
references teaches the disputed limitation.

4 We understand the “FSTP” to be a test for evaluating claimed invention
under substantive patent law. However, should there be further prosecution
of the claims, the Appellant should define this acronym.
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Further, we are not persuaded of error by Appellant’s argument
concerning the motivation to combine Szygenda and the teachings of the
MPEP. Appellant’s argument is premised upon Szygenda not performing a
full patentability determination which, as discussed above, is not
commensurate with the scope of the claim. Further, we concur with the
Examiner that Szygenda, in paragraph 36, suggests analysis of other
substantive patent law issues. Thus, Appellant’s arguments have not
persuaded us that the skilled artisan would not modify the teachings of
Szygenda with the MPEP because it would significantly alter the principle
operation of Szygenda. Rather, as discussed above, Szygenda provides
suggestion that other substantive patent law issues, many of which are
discussed in the MPEP, could be included in the system. Accordingly,
Appellant has not persuaded us of error in the Examiner’s rejection of
representative claim 33 and we sustain the Examiner’s obviousness rejection
of claim 33 and claims 34 through 52, which are grouped with claim 33.
We note that for the first time in the Reply Brief, Appellant
additionally argues that “Szygenda also fails to disclose presentation of the
different User Interface Entities (UIEs), namely Knowledge Representation
User Interface Entity ‘KR-UIE’, Human Interaction User Interface Entity
‘HI-UIE’ and Interaction Control User Interface Entity ‘IC-UIE’.” Reply
Br. 3. We have not considered this argument as it is waived. This new
argument could have been presented in the Appeal Brief, was not prompted
by the Examiner’s Answer, and is not based on any new arguments or
grounds of rejection in the Examiner’s Answer. As a result, Appellant has
waived such untimely argument because Appellant has not shown good
cause for belatedly raising the new argument. See 37 C.F.R. § 41.41(b)(2).
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CONCLUSION
In summary:
Claim
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
37, 48 112(b) Indefiniteness 37, 48
33–37,
39–46,
48–52
103 Szygenda, MPEP,
Hexel, Cisco
33–52
Overall
Outcome
33–52

Because we have affirmed at least one ground of rejection with
respect to each claim on appeal, the Examiner’s decision is affirmed. See
37 C.F.R. § 41.50(a)(1).
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). See 37
C.F.R. § 41.50(f).
AFFIRMED