Ex Parte Ashley et al

Patent Trial and Appeal Board

Aug 30, 2016

13050439 (P.T.A.B. Aug. 30, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/050,439 03/17/2011
7590 08/31/2016
Hollingsworth & Funk, LLC
Suite 320
8500 Normandale Lake Blvd.
Minneapolis, MN 55437
FIRST NAMED INVENTOR
William B. Ashley
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
HNF.001.Ul 2668
EXAMINER
HWA, SHYUE JIUNN
ART UNIT PAPER NUMBER
2155
MAILDATE DELIVERY MODE
08/31/2016 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 PATENT TRIAL AND APPEAL BOARD
Ex parte WILLIAM B. ASHLEY and TRACEY M. DOTTER
Appeal2015-006712
Application 13/050,439
Technology Center 2100
Before JEFFREYS. SMITH, ERIC B. CHEN, and NABEEL U. KHAN,
Administrative Patent Judges.
CHEN, Administrative Patent Judge.
DECISION ON APPEAL
Appeal2015-006712
Application 13/050,439
This is an appeal under 35 U.S.C. § 134(a) from the final rejection of
claims 1-17 and 20-22. Claims 18 and 19 have cancelled. We have
jurisdiction under 35 U.S.C. § 6(b). We reverse.
STATEMENT OF THE CASE
Appellants' invention relates to a reporting database that establishes
linkages between patent applications so that first references reported in a
first patent application are indicated as needing to be reported in a second
patent application. (Abstract.)
Claim 1 is exemplary, with disputed limitations in italics:
1. A method comprising:
entering first, second, and third patent applications into a
database via a computer graphical user interface;
establishing a first linkage in the database between the first and
second patent applications via the graphical user interface so that first
references reported in the first patent application are indicated as
needing to be reported in the second patent application when data
related to the second patent application is accessed via the graphical
user interface;
establishing a second linkage in the database between the
second patent application and the third patent application via the
graphical user interface so that second references reported in the
second patent application are indicated as needing to be reported in
the third patent application via the graphical user interface, wherein
there is no linkage in the database between the first patent application
and the third patent application analogous to the first and second
linkages;
detecting via the database that the first references have been
reported in the second patent application; and
preventing an indication via the graphical user interface that the
first references need to be reported in the third patent application
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Application 13/050,439
based on determining that the first references did not originate from
the second patent application.
Claims 1, 2, 4, 7-9, 11, 14--17, and 20-22 stand rejected under 35
U.S.C. §103(a) as unpatentable over Grainger (US 2002/0065676 Al;
May 30, 2002) and Liao (US 2011/0191310 Al; Aug. 4, 2011).
Claims 3 and 10 stand rejected under 35 U.S.C. §103(a) as
unpatentable over Grainger, Liao, Cheek (US 2007/0282619 Al; Dec. 6,
2007).
Claims 5, 6, 12, and 13 stand rejected under 35 U.S.C. §103(a) as
unpatentable over Grainger, Liao, and Hasan (US 2008/0301138 Al; Dec. 4,
2008).
ANALYSIS
§ 103 Rejection-Grainger and Liao
We are persuaded by Appellants' arguments (App. Br. 7; see also
Reply Br. 8-9) that the combination of Grainger and Liao would not have
rendered obvious independent claim 1, which includes the limitation
"detecting via the database that the first references have been reported in the
second patent application."
The Examiner found that the Information Disclosure Statement (IDS)
generation program of Grainger and Figure 21 of Grainger, which illustrates
IDS management, collectively correspond to the limitation "detecting via the
database that the first references have been reported in the second patent
application." (Final Act. 7; see also Ans. 7-8.) We do not agree.
Grainger relates to "a computer-implemented method of automatically
generating information disclosure statements associated with obtaining and
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Appeal2015-006712
Application 13/050,439
maintaining intellectual property rights." (if 2.) Grainger explains that an IP
service provider web site 1040 includes database 1041, IDS generation
program 1042, and search engine 1043, such that "[a] user may access
search engine 1043 for the purpose of conducting research", "a user may
access electronic versions of technical documents stored in database 1041 ",
and "the user may signal the IDS generation program to enter the document
in an electronic IDS." (if 80.) Furthermore, IDS generation program 1042
of Grainger also "provide[ s] instructions on when it is necessary to file an
IDS." (if 81.) Figure 21 of Grainger illustrates IDS management, including
first display section 2110 for displaying IDS form 892 and display
section 2120 for displaying links 2025 to the electronic reference documents.
(if 130.)
Although the Examiner cited IDS generation program 1042 of
Grainger, which includes instructions for when to file an IDS, and Figure 21
of Grainger, which illustrates an IDS form with links to electronic reference
documents (Final Act. 7; see also Ans. 7-8), the Examiner has provided
insufficient evidence to support a finding that Grainger teaches the limitation
"detecting via the database that the first references have been reported in the
second patent application." In particular, the Examiner has provided neither
a sufficient explanation as to how generation program 1042 of Grainger
could be used to cross-reference two related patent applications nor
identified a feature in Grainger that corresponds to detecting that "first
references have been reported in the second patent application," as claimed.
On this record, we do not agree with the Examiner that Grainger teaches the
limitation "detecting via the database that the first references have been
reported in the second patent application."
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Application 13/050,439
Accordingly, we are persuaded by Appellants' arguments that
"Grainger fails to teach or suggest that submitting the reference information
shown in FIG. 21 for one case would result in the Web page for another case
showing that the reference information also needed to be reported" (App.
Br. 7) and "even if the Examiner can allege the Grainger' s system can detect
references being added to a case, this nonetheless fails to teach or suggest
this particular scenario set forth in the independent claims related to
detecting, on behalf of one application, of reference added in another
application" (Reply Br. 9).
Accordingly, we do not sustain the rejection of independent claim 1
under 35 U.S.C. § 103(a). Claims 2, 4, and 7 depend from independent
claim 1. We do not sustain the rejection of claims 2, 4, and 7 under 35
U.S.C. § 103(a) for the same reasons discussed with respect to independent
claim 1.
Independent claims 8 and 15 recite limitations similar to those
discussed with respect to independent claim 1. We do not sustain the
rejection of claims 8 and 15, as well as dependent claims 9, 11, 14, 16, 17,
and 20-22, for the same reasons discussed with respect to claim 1.
§ 103 Rejection-Grainger, Liao, and Cheek
Claims 3 and 10 depend from independent claims 1 and 8. Cheek was
cited by the Examiner for teaching the additional features of claims 3 and
10. (Final Act. 14--17.) However, the Examiner's application of Cheek does
not cure the above noted deficiencies of Grainger.
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Appeal2015-006712
Application 13/050,439
§ 103 Rejection-Grainger, Liao, and Hasan
Claims 5, 6, 12, and 13 depend from independent claims 1 and 8.
Hasan was cited by the Examiner for teaching the additional features of
claims 5, 6, 12, and 13. (Final Act. 17-20.) However, the Examiner's
application of Hasan does not cure the above noted deficiencies of Grainger.
DECISION
The Examiner's decision rejecting claims 1-17 and 20-22 is
reversed. 1
REVERSED
1 In the event of further prosecution, the Examiner should consider whether
the recitation of a "computer-readable storage medium" in independent
claim 15 complies with 35 U.S.C. § 101. See In re Nuijten, 500 F.3d 1346,
1356-57 (Fed. Cir. 2007) ("A transitory, propagating signal like Nuitjen's is
not a 'process, machine, manufacture, or composition of matter.' ... [T]hus,
such a signal cannot be patentable subject matter."); see also MPEP § 2106
(I) ("Non-limiting examples of claims that are not directed to one of the
statutory categories ... [include] transitory forms of signal transmission (for
example, a propagating electrical or electromagnetic signal per se.")).
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