Ex Parte Courson et al

Patent Trial and Appeal Board

Mar 23, 2016

13014001 (P.T.A.B. Mar. 23, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/014,001 01/26/2011
29855 7590 03/25/2016
Blank Rome LLP
717 Texas Avenue, Suite 1400
Houston, TX 77002
FIRST NAMED INVENTOR
Gardner G. Courson
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.
250-0002USC 9784
EXAMINER
MOONEYHAM, JANICE A
ART UNIT PAPER NUMBER
3689
NOTIFICATION DATE DELIVERY MODE
03/25/2016 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):
houstonpatents@blankrome.com
mbrininger@blankrome.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte GARDNER G. COURSON,
VINCENT J. MIRAGLIA,
BLANE A. ERWIN, and
PATRICK T. O'DONNELL
Appeal2014-001192
Application 13/014,001 1
Technology Center 3600
Before MURRIEL E. CRAWFORD, HUBERT C. LORIN, and
ANTON W. PETTING, Administrative Patent Judges.
LORIN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Gardner G. Courson, et al. (Appellants) seek our review under 35
U.S.C. § 134 of the final rejection of claims 1--4. We have jurisdiction
under 35 U.S.C. § 6(b) (2002).
1 The Appellants identify Bridgeway Software, Inc. as the real party in
interest. "Gardner G. Courson, personally may also be a party of interest."
App. Br. 3.
Appeal2014-001192
Application 13/014,001
We REVERSE.
SUMMARY OF DECISION
THE INVENTION
Claim 1, reproduced below, is illustrative of the subject matter on
appeal.
1. A tool for developing litigation discovery materials, the tool
compnsmg:
an entry field to request collection of discovery requests, the
entry field available on a plurality of screens of a graphical user
interface of a computer, the plurality of screens being not directly
related to discovery;
a menu available on a graphical user interface of a computer for
gathering discovery related information, said menu provided in
response to a request using said entry field;
storage of discovery related information gathered from said
menu;
form discovery materials; and
a computer implementing a discovery production mechanism to
combine stored discovery related information and form discovery
materials to produce discovery items for use in the litigation.
THE REJECTIONS
The Examiner relies upon the following as evidence of
unpatentability:
Krachman
Ciaramitaro
US 6,738,760 Bl
US 7,058,661 B2
2
May 18, 2004
June 6, 2006
Appeal2014-001192
Application 13/014,001
The following rejections are before us for review:
1. Claims 1-3 are rejected under 35 U.S.C. § 102(e) as being anticipated
by Ciaramitaro.
2. Claim 4 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Ciaramitaro and Krachman.
ISSUES
Did the Examiner err in rejecting claims 1-3 under 35 U.S.C. § 102(e)
as being anticipated by Ciaramitaro and claim 4 under 35 U.S.C. § 103(a) as
being unpatentable over Ciaramitaro and Krachman?
ANALYSIS
The rejection of claims 1-3 under 35 U.S. C. § 102(e) as being anticipated by
Ciaramitaro.
Sole independent claim l includes the limitation "a computer
implementing a discovery production mechanism to combine stored
discovery related information and form discovery materials to produce
discovery items for use in the litigation." In other words, claim 1 provides
for a computer implementing a mechanism to combine a stored first type of
information and a second type of information to produce a third type of
information.
According to the Examiner, said claim limitation is expressly
described in Ciaramitaro.
(Ciaramitaro: col. 7, line 59-col. 8, line 60; col. 11, lines 35-55 -
the system provides a link between the new pleading and the
discovery documents that were produced in response to the
pleading; fig. 7 - new question builder; Fig. 3; col. 10, lines 25-
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Appeal2014-001192
Application 13/014,001
67; col. 15, lines 15-65 - system allows for the editing and
creation of pleadings; col. 17, claim 13; fig. 11 - query results
compiled; fig. 1 - computer system)
Final Act. 5.
The difficulty with the Examiner's reasoning is that said Ciaramitaro
disclosure suggests modifying only one type of information (i.e., "questions"
or "pleadings"). This does not adequately describe what is claimed. Claim
1 does not read on said disclosure because said disclosure does not describe
a mechanism to combine a stored first type of information and a second type
of information to produce a third type of information. Said disclosure at best
describes modifying a first type of information (i.e., "questions" or
"pleadings") to produce a second type of information. As the Appellant
points out, "allowing a user to edit or create pleadings is not the combination
of the claim element." App. Br. 20. As we understand it, the Examiner
appears to be making a case that, given the disclosure of, for example,
editing pleadings, one of ordinary skill would have been led to employ a
mechanism for combining the two types of information as claimed. But the
question here is one of anticipation, not obviousness, and in that regard,
claim 1 does not read on Ciaramitaro.
For the foregoing reasons, a prima facie case of anticipation has not
been made out in the first instance. Accordingly, the rejection of
independent claim 1 and claims 2 and 3 that depend from it, is not sustained.
The rejection of claim 4 under 35 U.S. C. § 103 (a) as being unpatentable
over Ciaramitaro and Krachman.
Because the Examiner incorporates the position that Ciaramitaro
describes all that is claimed in claim 1, a position not supported by a
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Appeal2014-001192
Application 13/014,001
preponderance of the evidence, we also do not sustain the rejection of claim
4 that depends from claim 1. A prima facie case of obviousness has not
been made out in the first instance.
CONCLUSIONS
The rejection of claims 1-3 under 35 U.S.C. § 102(e) as being
anticipated by Ciaramitaro is not sustained.
The rejection of claim 4 under 35 U.S.C. § 103(a) as being
unpatentable over Ciaramitaro and Krachman is not sustained.
DECISION
The decision of the Examiner to reject claims 1--4 is reversed.
REVERSED
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