Ex Parte CHEN et al

Patent Trial and Appeal Board

Sep 11, 2018

11674590 (P.T.A.B. Sep. 11, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
11/674,590 02/13/2007
67158 7590 09/13/2018
IBM - ARC (Shimokaji & Associates, P.C.)
SHIMOKAJI & ASSOCIATES, P.C.
8911 RESEARCH DRIVE
IRVINE, CA 92618
FIRST NAMED INVENTOR
YING CHEN
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.
ARC920060091US1(232-0107 4782
EXAMINER
MINCARELLI, JAN P
ART UNIT PAPER NUMBER
3689
NOTIFICATION DATE DELIVERY MODE
09/13/2018 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):
ClientServices@shimokaji.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte YING CHEN, JEFFREY THOMAS KREULEN, LARRY LEE
PROCTOR, JAMES J. RHODES, and WILLIAM SCOTT SP ANGLER,
Appeal2017-004336
Application 11/674,590 1
Technology Center 3600
Before JOHN A. JEFFERY, CATHERINE SHIANG, and
BETH Z. SHAW, Administrative Patent Judges.
SHIANG, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's
rejection of claims 1 and 22, which are all the claims pending in the
application. 2 We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
1 Appellants identify International Business Machines Corporation as the
real party in interest. App. Br. 3.
2 Claims 2-21 have been cancelled. App. Br. 20.
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Application 11/674,590
STATEMENT OF THE CASE
Introduction
According to the Specification, the present invention relates to
analytics tools and methodologies for assisting in the identification of
potential partnering relationships in a given industry. Spec. ,r 1.
One embodiment of the present invention is a method for use
with a set of intellectual property documents related to an
industry of interest; the method comprising: classifying the
intellectual property documents by assignee, creating categories
for the documents, the categories identified by terms associated
with the industry of interest, 5 each of the intellectual property
documents assigned to one of the categories, and constructing a
contingency table that includes a listing of assignees for each of
the categories, the listing for identifying assignees having
interests in complementary ones of the categories.
Spec. ,r 5. Claim 1 is exemplary:
1. A method comprising:
identifying an area of interest,
a first computer processor in a first data processing
system performing at least one of a search operation and a
query operation among a plurality of databases that include
information about documents relevant to said identified area of
interest utilizing a combination of a structured field and a non-
structured field to identify the set of documents related to said
identified area of interest;
retrieving said identified documents matching a keyword;
analyzing relationships between said identified
documents using an analytical tool that is based on knowledge
about said area of interest from multiple domain experts;
classifying said identified documents in the set of
documents by assignee;
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creating categories for said identified documents, said
categories identified by a combination of the structured field
and the non-structured field;
creating an additional category that includes all of said
identified documents that were not included in one of the
created categories;
deleting a number of said created categories and merging
a number of said created categories that are determined to be
similar to one another;
providing an indication of those features within a
category having greater occurrence in said identified documents
of said identified area of interest,
assigning each of said identified documents to at least
one of said merged categories;
constructing a first contingency table that includes a
listing of assignees including a first assignee and a second
assignee with respect to each of said merged categories,
wherein a value, associated with the first assignee and one of
the merged categories corresponding to the first assignee,
represents a number of said identified documents matching said
first assignee and the corresponding merged category;
comparing the merged categories with at least a threshold
number of items that match both the first assignee and another
assignee among the listing of assignees;
determining, by one of the multiple domain experts based
on the rendering on the computer display, whether the cell in
the first contingency table exceeds a threshold value;
visually rendering on a computer display within a second
data processing system with a second computer processor, the
first contingency table, wherein a cell in the first contingency
table is rendered one of a plurality of colors based on a
document count in a row of the first contingency table, based
on the cell in the contingency table exceeding the threshold
value, based on a number of documents assigned to the first
assignee, and based on a total number of documents in the first
contingency table;
outputting the first contingency table through a physical
input-output port using an intervening physical input-output
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controller from the first computer processor to a computer
network;
coupling the first data processing system to the second
data processing system with the second computer processor
through the computer network;
the second data processing system creating a second
contingency table based on the coupled first data processing
system and the second data processing system;
outputting the second contingency table through the
physical input-output port using the intervening physical input-
output controller from the second computer processor to the
computer network; and
making said indication available to a user.
References and Rejections
Claims 1 and 22 stand rejected under 35 U.S.C. § 101 because they
are directed to patent-ineligible subject matter. Final Act. 2---6.
Claim 1 stands rejected under pre-AIA 35 U.S.C. § 103(a) as being
unpatentable over the collective teachings of Stobbs et al. (US 8,095,581 B2,
issued Jan. 10, 2012) ("Stobbs"), Nutter et al. (US 2002/0178029 Al,
published Nov. 28, 2002) ("Nutter"), Rujan et al. (US 2006/0212413 Al,
published Sept. 21, 2006) ("Rujan"), VanTrieste (US 2006/0086782 Al,
published Apr. 27, 2006), and Zilka et al. (US 7,117,443 B 1, issued Oct 3,
2006) ("Zilka"). 3 Final Act. 6-22.
3 Throughout this opinion, we refer to (1) the Final Rejection dated June 15,
2016 ("Final Act."); (2) the Appeal Brief dated October 11, 2016 ("App.
Br."); (3) the Examiner's Answer dated November 17, 2016 ("Ans."); and
(4) the Reply Brief dated January 17, 2017 ("Reply Br.").
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ANALYSIS 4
35 u.s.c. § 101
The Examiner rejects the claims under 35 U.S.C. § 101 because they
are directed to patent-ineligible subject matter. See Final Act. 2---6; Ans. 2-
8. In particular, the Examiner concludes the claims are directed to the
abstract idea of information manipulation and display. See Final Act. 3--4;
Ans. 3--4. The Examiner determines:
Claim 1 recites several method steps that obtain, query, analyze,
classify, and categorize data, the construction of a table
indicating assignees and values, identifying assignee overlap,
and visually rendering, outputting, and making that comparison
available to the user. Ultimately, Appellant's method steps use
categories to organize, store, and transmit information about
patents and patent assignees. This is an abstract idea of itself ..
. . Alternatively, Appellant's claims can be seen as obtaining
and comparing intangible data (i.e., comparing obtained
intangible patent data based on assignee and industry/category),
which also is an abstract idea of itself ... Appellant's
specification further corroborates that the invention is directed
toward an abstract idea because it notes that the invention is
used to assist "in the identification of potential partnering
relationships in a given industry," such as "cross-licensing
relationships" for a set of patents and other IP that a business
entity might own (see specification paragraphs 1-2). Thus,
when viewed in light of the specification, the abstract idea
could alternatively be considered to be a fundamental economic
activity or a certain method of organizing human activity
because it relates to managing potential business relations
between people or businesses such as deciding whether to form
partnering or cross-licensing relationships.
Ans. 3--4.
4 To the extent Appellants advance new arguments in the Reply Brief
without showing good cause, Appellants have waived such arguments. See
37 C.F.R. § 41.41(b)(2).
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The Examiner determines the claims do not identify an
inventive concept to transform the nature of the claims into a patent-
eligible application. See Final Act. 4---6; Ans. 4--8. Appellants argue
the Examiner erred. See App. Br. 11-13; Reply Br. 2--4.
Appellants have not persuaded us of error. Section 101 of the Patent
Act provides "[ w ]hoever invents or discovers any new and useful process,
machine, manufacture, or composition of matter, or any new and useful
improvement thereof, may obtain a patent therefor, subject to the conditions
and requirements of this title." 35 U.S.C. § 101. That provision "contains
an important implicit exception: Laws of nature, natural phenomena, and
abstract ideas are not patentable." Alice Corp. Pty. Ltd. v. CLS Bank Int 'l,
134 S. Ct. 2347, 2354 (2014) (quoting Ass 'nfor Molecular Pathology v.
Myriad Genetics, Inc., 133 S. Ct. 2107, 2116 (2013)). According to the
Supreme Court:
[W] e set forth a framework for distinguishing patents that claim
laws of nature, natural phenomena, and abstract ideas from
those that claim patent-eligible applications of those concepts.
First, we determine whether the claims at issue are directed to
one of those patent-ineligible concepts .... If so, we then ask,
"[ w ]hat else is there in the claims before us?" . . . To answer
that question, we consider the elements of each claim both
individually and "as an ordered combination" to determine
whether the additional elements "transform the nature of the
claim" into a patent-eligible application. . . . We have
described step two of this analysis as a search for an "'inventive
concept'" -i.e., an element or combination of elements that is
"sufficient to ensure that the patent in practice amounts to
significantly more than a patent upon the [ineligible concept]
itself."
Alice Corp., 134 S. Ct. at 2355 (quoting Mayo Collaborative Services
v. Prometheus Laboratories, Inc., 132 S.Ct. 1289, 1294, 1296-98
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(2012)).
The Federal Circuit has described the Alice step-one inquiry as
looking at the "focus" of the claims, their "character as a whole," and the
Alice step-two inquiry as looking more precisely at what the claim elements
add-whether they identify an "inventive concept" in the application of the
ineligible matter to which the claim is directed. See Elec. Power Grp., LLC
v. Alstom S.A., 830 F.3d 1350, 1353 (Fed. Cir. 2016); Enfzsh, LLC v.
Microsoft Corp., 822 F.3d 1327, 1335-36 (Fed. Cir. 2016); Internet Patents
Corp. v. Active Network, Inc., 790 F.3d 1343, 1346 (Fed. Cir. 2015).
Regarding Alice step one, the Federal Circuit has "treated collecting
information, including when limited to particular content ( which does not
change its character as information), as within the realm of abstract ideas."
Elec. Power, 830 F.3d at 1353 (emphasis added); see also Internet Patents,
790 F.3d at 1348--49; OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359,
1363 (Fed. Cir. 2015); Content Extraction & Transmission LLC v. Wells
Fargo Bank, Nat 'l Ass 'n, 776 F.3d 1343, 1347 (Fed. Cir. 2014). "In a
similar vein, we have treated analyzing information [including manipulating
information] by steps people go through in their minds, or by mathematical
algorithms, without more, as essentially mental processes within the
abstract-idea category." Elec. Power, 830 F.3d at 1354 (emphasis added);
see also In re TL! Commc'ns LLC Patent Litig., 823 F.3d 607, 613 (Fed. Cir.
2016). "And we have recognized that merely presenting the results of
abstract processes of collecting and analyzing information, without more
(such as identifying a particular tool for presentation), is abstract as an
ancillary part of such collection and analysis." Elec. Power, 830 F.3d at
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1354 (emphasis added); see also Ultramercial, Inc. v. Hulu, LLC, 772 F.3d
709, 714--15 (Fed. Cir. 2014).
The rejected claims "fall into a familiar class of claims 'directed to' a
patent-ineligible concept." Elec. Power, 830 F.3d at 1353. Contrary to
Appellants' arguments (App. Br. 11-13; Reply Br. 2--4), we agree with the
Examiner that the claims are similar to the claims of Electric Power, and are
focused on the combination of abstract-idea processes. See Ans. 7; Elec.
Power, 830 F.3d at 1354. For example, claim 1 is directed to collecting,
analyzing, and displaying information ("identifying ... performing ... a
search operation and a query operation ... ; retrieving ... ; analyzing ... ;
classifying ... ; creating ... ; deleting ... ; providing ... , assigning ... ;
constructing ... ; comparing ... ; determining ... ; visually rendering ... ;
outputting ... ; coupling ... ; making said indication available .... "). See
Elec. Power, 830 F.3d at 1353. Dependent claim 22 is directed to similar
processes, and Appellants have not shown claim 22 is directed to other non-
abstract processes. See claim 22.
We also agree with the Examiner that when viewed in light of the
Specification, the claims are directed to a fundamental economic activity or
a method of organizing human activity. See Ans. 3--4. As pointed out by
the Examiner (Ans. 3--4), the Specification states the invention is used to
assist in "the identification of potential partnering relationships in a given
industry," such as "cross-licensing relationships (e.g., partnerships)" for a set
of patents and other intellectual property that a business entity might own.
Spec. ,r,r 1-2.
For the reasons discussed below, Appellants' following assertion is
unpersuasive:
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the "deleting a number of said created categories and merging a
number of said created categories that are determined to be
similar to one another" feature from claim 1 provides greater
efficiency by removing unnecessary items. The "utilizing
interactive clustering of the features for use in classifying
groups of the items" feature from claim 22 increases efficiency
by clustering features. This increases efficiency in creating
databases that are useful to the user.
App. Br. 12.
As discussed above, those claim steps are directed to the
abstract processes of manipulating information, and Appellants have
not explained why such information manipulation renders the claims
patent eligible. See Elec. Power, 830 F.3d at 1353. Further, those
claim steps merely result in different known information content for
databases, and Appellants have not explained why populating
different information content in databases constitutes "an
improvement to database technology" (App. Br. 13) or renders the
claims patent eligible under Alice.
Contrary to Appellants' assertion (App. Br. 11-13), the rejected
claims are unlike the claims in Enfish. In Enfish, the court determines:
The ... patents are directed to an innovative logical model for a
computer database . ... A logical model generally results in the
creation of particular tables of data, but it does not describe how
the bits and bytes of those tables are arranged in physical
memory devices. Contrary to conventional logical models, the
patented logical model includes all data entities in a single
table, with column definitions provided by rows in that same
table. The patents describe this as the "self-referential"
property of the database.
Enfish, 822 F .3d at 1330 ( emphases added).
[T]he plain focus of the claims 1s on an improvement to
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computer functionality itself, not on economic or other tasks for
which a computer is used in its ordinary capacity.
[T]he claims . . . are directed to a specific improvement to the
way computers operate, embodied in the self-referential table.
Id. at 1336.
The rejected claims are unlike the claims of Enfish because they are
not "directed to an innovative logical model for a computer database [that]
includes all data entities in a single table, with column definitions provided
by rows in that same table." Id. at 1330. 5 Instead, the pending claims are
directed to using databases to manipulate data, and "the focus of the claims
is not on such an improvement in computers as tools, but on certain
independently abstract ideas that use computers as tools." Elec. Power, 830
F.3d at 1354.
Appellants cite page 1346 of the Enfish opinion and asserts "the field
of data mining ... has been recently upheld as a valid area for patents."
App. Br. 11. But that page does not include such a broad statement. In fact,
"data mining" does not even appear in the Enfish opinion.
Appellants also cited Ex Parle Carvalho et al., 2016 WL3646737
(Patent Tr. & App. Bd. 2016) (App. Br. 13), but that decision is not
precedential. In any event, Appellants' assertion that the pending claims are
patent eligible because they "describe structured data" (App. Br. 13) is
unpersuasive under that PTAB decision. See Carvalho, 2016 WL3646737 at
*4. In Carvalho, the PTAB panel determined the claims are patent eligible
because they "are directed to an irnprovement in the functioning of a
5 As a result, Appellants' assertion that both "Enfish and the present
invention describe software that constructs tables" (App. Br. 12) does not
show the pending claims are patent eligible.
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computer (i.e., eliminating word aligner latency delay unce1iainty)"--------not
because they describe structured data. id.
Regarding Alice step two, contrary to Appellants' assertion (App. Br.
11-13; Reply Br. 2-4), Appellants have not shown the claims in this case
require an arguably inventive set of components or methods, or invoke any
assertedly inventive programming. See Elec. Power, 830 F.3d at 1355.
Further, contrary to Appellants' arguments (App. Br. 11-13; Reply
Br. 2-4) and as pointed out by the Examiner (Ans. 7), the claims are similar
to the claims of Electric Power, because they do not require any
nonconventional computer, network, or display components, or even a "non-
conventional and non-generic arrangement of known, conventional pieces,"
but merely call for performance of the claimed information collection,
analysis, and display functions on generic computer components and display
devices. See Elec. Power, 830 F.3d at 1355; see also Claim 1 (reciting "a
first computer processor in a first data processing system," "databases," "a
second data processing system with a second computer processor," and "a
computer network). Dependent claim 22 calls for the same generic
components and devices, and Appellants have not shown claim 22 requires
any non-conventional components or devices. See claim 22.
Similar to the claims of Electric Power, the rejected claims specify
what information is desirable to gather, analyze, and display, but they "do
not include any requirement for performing the claimed functions of
gathering, analyzing, and displaying ... by use of anything but entirely
conventional, generic technology." Elec. Power, 830 F.3d at 1356.
Therefore, similar to the claims of Electric Power, the rejected claims "do
not state an arguably inventive concept in the realm of application of the
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information-based abstract ideas." Elec. Power, 830 F.3d at 1356.
Appellants' argument regarding the absence of prior art rejection of
claim 22 (Reply Br. 4) is unpersuasive, because prior art rejection is
determined under 35 U.S.C. § 102 and §103, which are different statutory
requirements. As the Supreme Court emphasizes: "[t]he 'novelty' of any
element or steps in a process, or even of the process itself, is of no relevance
in determining whether the subject matter of a claim falls within the§ 101
categories of possibly patentable subject matter." Diamond v. Diehr, 450
U.S. 175, 188-89 (1981) (emphasis added). Our reviewing court further
guides that "[e]ligibility and novelty are separate inquiries." Two-Way
Media Ltd. v. Comcast Cable Commc 'ns, LLC, 874 F.3d 1329, 1340 (Fed.
Cir. 2017).
Appellants cite BASCOM Global Internet Services, Inc. v. AT&T
Mobility LLC, 827 F.3d 1341 (2016) (Reply Br. 4), but do not persuasively
explain why that case is similar to the present case. In BASCOM, the court
determined that at the pleading stage and construed in favor of the
nonmovant,
The inventive concept described and claimed . . . is the
installation of a filtering tool at a specific location, remote from
the end-users, with customizable filtering features specific to
each end user. This design gives the filtering tool both the
benefits of a filter on a local computer and the benefits of a
filter on the ISP server. BASCOM explains that the inventive
concept rests on taking advantage of the ability of at least some
ISPs to identify individual accounts that communicate with the
ISP server, and to associate a request for Internet content with a
specific individual account.
Id. at 13 50 ( emphasis added).
The rejected claims are unlike the claims of BASCOMbecause they
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are not directed to an "installation of a filtering tool at a specific location,
remote from the end-users, with customizable filtering features specific to
each end user." Id. at 1350. Nor do they "give[] the filtering tool both the
benefits of a filter on a local computer and the benefits of a filter on the ISP
server." Id. In fact, the pending claims do not even recite any "ISP server."
In short, Appellants have not shown the claims, read in light of the
Specification, require anything other than conventional computer, network,
and display technology for collecting, analyzing, and presenting the desired
information. See Elec. Power, 830 F.3d at 1354. Such invocations of
computers and networks are "insufficient to pass the test of an inventive
concept in the application" of an abstract idea and, therefore, do not add
significantly more to that idea. Elec. Power, 830 F.3d at 1355.
Because Appellants have not persuaded us the Examiner erred, we
sustain the Examiner's rejection of claims 1 and 22 under 35 U.S.C. § 101.
35 u.s.c. § 103
On this record, the Examiner did not err in rejecting claim 1.
I
Appellants contend VanTrieste does not teach:
visually rendering on a computer display within a second data
processing system with a second computer processor, the first
contingency table, wherein a cell in the first contingency table
is rendered one of a plurality of colors based on a document
count in a row of the first contingency table, based on the cell
in the contingency table exceeding the threshold value, based
on a number of documents assigned to the first assignee, and
based on a total number of documents in the first contingency
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table;
as recited in claim 1. See App. Br. 14--16. In particular, Appellants
contend claim 1 requires all of the limitations above, and Van Trieste
alone does not teach them. See App. Br. 14--16.
Appellants have not persuaded us of error. Because the Examiner
relies on the combination of Stobbs, Nutter, and Van Trieste to teach the
disputed claim limitations, Appellants cannot establish nonobviousness by
attacking VanTrieste individually. See In re Merck & Co., 800 F.2d 1091,
1097 (Fed. Cir. 1986).
The Examiner determines Stobbs and Nutter collectively teach
visually rendering on a computer display within a second data
processing system with a second computer processor, the first
contingency table, wherein a cell in the first contingency table
is . . . based on a document count . . . of the first contingency
table, based on the cell in the contingency table exceeding the
threshold value, based on a number of documents assigned to
the first assignee, and based on a total number of documents in
the first contingency table;
as recited in claim 1. See Final Act. 11, 14--16, 18. Appellants do not
dispute that determination in the Appeal Brief.
The Examiner finds VanTrieste teaches the claimed "is rendered one
of a plurality of colors." See Final Act. 18. Appellants do not dispute that
finding. In fact, Appellants acknowledge VanTrieste teaches "coloring cells
based on values" (App. Br. 15; see also App. Br. 16). Further, the Examiner
finds-and Appellants do not persuasively dispute-VanTrieste teaches "in
a row." See Final Act. 18; VanTrieste ,r 67 ("Screen 300 includes multiple
cells 310 arranged in rows 330 and columns 320 .... Rows 330 include rows
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330a, 330b, 330c, 330d, among others depicted and ellipsis 332 represents
additional rows of cells that are not depicted") ( emphases omitted).
Appellants do not contend the Examiner erred in the rationale for
combining the teachings of Stobbs, Nutter, and Van Trieste. Therefore, we
agree with the Examiner that Stobbs, Nutter, and VanTrieste collectively
teach
visually rendering on a computer display within a second data
processing system with a second computer processor, the first
contingency table, wherein a cell in the first contingency table
is rendered one of a plurality of colors based on a document
count in a row of the first contingency table, based on the cell
in the contingency table exceeding the threshold value, based
on a number of documents assigned to the first assignee, and
based on a total number of documents in the first contingency
table;
as required by claim 1. See Final Act. 11, 14--16, 18-20.
In addition, Appellants' assertion that VanTrieste does not teach cells
are colored based on "'document count', 'a number of documents assigned
to the first assignee', and 'a total number of documents in the first
contingency table"' (App. Br. 16) is unpersuasive. The Examiner cites
Stobbs-not VanTrieste-for teaching those limitations. See Final Act. 18.
II
Appellants contend:
... claim 1 includes: coupling the first data processing system
to the second data processing system with the second computer
processor through the computer network . . . ; and "the second
data processing system creating a second contingency table
based on the coupled first data processing
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The Office action ... relies on Stobbs to overcome the above
features. The Office action argues that Stobbs teaches use of
"additional tables".
However, Stobbs does not specify that the "additional tables"
are contingency tables that are based on the first data processing
system coupled to the second data processing system, as in
claim 1. Stobbs does not teach or suggest coupling two data
processing systems and then creating a second contingency
table for the coupled systems, as in claim 1.
App. Br. 17.
Appellants' general assertion is unpersuasive of error. See 37 C.F.R.
§ 4I.37(c)(l)(iv) ("A statement which merely points out what a claim recites
will not be considered an argument for separate patentability of the claim.");
see also In re Lovin, 652 F.3d 1349, 1357 (Fed. Cir. 2011) (holding that "the
Board reasonably interpreted Rule 41.37 to require more substantive
arguments in an appeal brief than a mere recitation of the claim elements and
a naked assertion that the corresponding elements were not found in the
prior art").
III
First, Appellants argue:
Claim 1 also requires "the second data processing system
creating a second contingency table", which is contrary to
Stobbs which does not include multiple data processing systems
in the creation of a second contingency table. Claim 1 requires
that one of the two data processing systems connected by a
network create a contingency table for both of the two systems
connected by a network.
Under the broadest reasonable interpretation, Stobbs
describes a system that can include a separate client and server,
but it is one system (see Stobbs col. 5 lines 5-10). It is not
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reasonable to suggest that Stobbs teaches the multiple, separate
data processing system requirements of claim 1, or one of two
networked data processing systems creating a contingency table
for both data processing systems connected by a computer
network. This is because Stobbs does not teach or suggest
creating values of a contingency table for coupled systems, and
also because Stobbs does not teach or suggest creation of a
contingency table by just one of the two coupled systems
connected by a network.
App. Br. 17.
We disagree. Appellants do not argue the inventors specifically
define the term "a second data processing system" in the Specification. As
pointed out by the Examiner (Ans. 12), Appellants cite paragraphs 24 and 43
of the Specification for supporting that claim term (App. Br. 8-9), and those
paragraphs do not define that term. See Spec. ,r,r 24, 43. As a result, we
agree with the Examiner that Stobbs teaches "a second data processing
system" according to how one skilled in the art would understand that term.
See Ans. 12. Specifically, the Examiner maps the claimed "first data
processing system" and "second data processing system" to Stobbs' client
computer 20 and server computer 24, respectively. See Ans. 12; Stobbs 4:4--
11 ("The client computer 20 is connected to a multi-user network 22, for
communication with the server computer 24 ... The server computer 24 can
be a single computer ( e.g., single processor) or a multiple computer system")
( emphases omitted). Appellants do not dispute such findings and fail to
show Examiner error.
Second, Appellants' assertion that " [ c] laim 1 requires that one of the
two data processing systems connected by a network create a contingency
table for both of the two systems connected by a netwodc' ( emphasis added)
(App. Br. 17) is not commensurate with the scope of the claim, as the
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limitation "the second data processing system creating a second contingency
table" does not require the italicized portion. In any event, Appellants do
not explain how the italicized portion shows an Examiner error.
To the extent Appellants' remaining assertions are directed to
additional limitations, such general assertions are unsupported by evidence
and are unpersuasive. See 37 C.F.R. § 4I.37(c)(l)(iv); Lovin, 652 F.3d at
1357; see also In re Geisler, 116 F.3d 1465, 1470 (Fed.Cir.1997) ("attorney
argument [is] not the kind of factual evidence that is required to rebut a
prima facie case of obviousness"); Meitzner v. Mindick, 549 F.2d 775, 782
(CCP A 1977) ("Argument of counsel cannot take the place of evidence
lacking in the record.").
IV
In the Reply Brief and for the first time, Appellants belatedly argue:
The Examiner's Answer failed to show the present claim
feature of "a cell in the first contingency table is rendered one
of a plurality of colors based on ... a total number of
documents in the first contingency table" ....
The Examiner's Answer argues that "[t]he contingency
table of Stobbs is based on a document count and a number of
documents assigned to each assignee and a total number of
documents in the table because the table includes a 'sum of
factors' value". However, a review of column 18, lines 47-67
of Stobbs does not reveal basing the contingency table on "a
total number of documents in the first contingency table" ....
Rather, the "sum of factors" value in Stobbs is a sum of
the "factor'' value for a particular group of the table. (Stobbs,
col. 19, lines 47-67). For example, Stobbs lists multiple sum of
factor values for the table referred to in column 18, lines 30-41.
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Application 11/674,590
Stobbs defines a "factor value" as indicating "how well [a]
patent fits within a linguistic cluster". (Stobbs, col. 12, lines
20-25). Therefore Stobbs views a "sum of factors" value as a
relational value, not a summation of "a total number of
documents in the first contingency table" as in claim 1.
The Examiner's Answer does not point out in any
reference that "a cell in the first contingency table is rendered
one of a plurality of colors based on a document count in a row
of the first contingency table". For example, no mention was
made in the Examiner's Answer that a reference discussed
coloring based on document count in a row.
Reply Br. 5---6.
With respect to the above claim limitations, the Examiner has
provided the same findings in the Final Action and the Examiner's Answer.
See Final Act. 18; Ans. 9. In particular, the Examiner has already provided
the finding ("[t]he contingency table of Stobbs is based on a document count
and a number of documents assigned to each assignee and a total number of
documents in the table because the table includes a 'sum of factors' value")
in the Final Action (Final Act. 18), and the Examiner's Answer merely
repeats that finding (Ans. 9).
Therefore, Appellants have waived the above arguments because they
are untimely, and Appellants have not demonstrated any "good cause" for
the belated presentation. See 37 C.F.R. § 4I.41(b)(2).
Because Appellants have not persuaded us the Examiner erred, we
sustain the Examiner's rejection of independent claim 1.
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Application 11/674,590
DECISION
We affirm the Examiner's decision rejecting claims 1 and 22 under 35
U.S.C. § 101.
We affirm the Examiner's decision rejecting claim 1 under pre-AIA
35 U.S.C. § 103(a).
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv). See 37
C.F.R. § 41.50(±).
AFFIRMED
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