Ex Parte Courson et al

Board of Patent Appeals and Interferences

Sep 27, 2010

10673050 (B.P.A.I. Sep. 27, 2010)

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.
10/673,050 09/26/2003 Gardner G. Courson 250-0002US 8057
29855 7590 09/27/2010
WONG, CABELLO, LUTSCH, RUTHERFORD & BRUCCULERI,
L.L.P.
20333 SH 249 6th Floor
HOUSTON, TX 77070
EXAMINER
RIVIERE, HEIDI M
ART UNIT PAPER NUMBER
3689
MAIL DATE DELIVERY MODE
09/27/2010 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte GARDNER G. COURSON,
VINCENT J. MIRAGLIA,
BLANE A. ERWIN,
and PATRICK T. O’DONNELL
___________

Appeal 2009-001491
Application 10/673,050
Technology Center 3600
____________

Before MURRIEL E. CRAWFORD, HUBERT C. LORIN, and
ANTON W. FETTING, Administrative Patent Judges.

LORIN, Administrative Patent Judge.

DECISION ON APPEAL1

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.
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STATEMENT OF THE CASE
Gardner G. Courson et al. (Appellants) seek our review under 35
U.S.C. § 134 (2002) of the final rejection of claims 1-12. We have
jurisdiction under 35 U.S.C. § 6(b) (2002).

SUMMARY OF DECISION
We AFFIRM-IN-PART and enter a new ground of rejection pursuant
to 37 C.F.R. 41.50(b). 2

THE INVENTION
This invention is “an integrated computer-based system for capturing
and managing legal knowledge in making an assessment of the strengths and
weaknesses of a lawsuit.” Specification [0001].
Claims 1 and 5, reproduced below, are illustrative of the subject
matter on appeal.
1. A tool for developing litigation discovery
materials, the tool comprising:
an entry field available on a plurality of
views not directly related to discovery to request
collection of discovery requests;
a menu for gathering discovery related
information in response to a request using said
entry field;
storage of discovery related information
gathered from said menu;

2 Our decision will make reference to the Appellants’ Appeal Brief (“App.
Br.,” filed Mar. 8, 2007) and Reply Brief (“Reply Br.,” filed Apr. 24, 2008),
and the Examiner’s Answer (“Answer,” mailed Feb. 25, 2008).

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form discovery materials; and
a discovery production mechanism to
combine stored discovery related information and
form discovery materials to produce discovery
items for use in the litigation.

5. A tool for recommending a decision in
litigation, the tool comprising:
interfaces for gathering selected information
relevant to the decision;
storage for the gathered selected
information;
weighting values associated with each
element of selected information;
an analyzer for using the stored selected
information and the associated weighting values to
determine a resultant value;
resultant values associated with various
decision options; and
a recommendation element using the
determined resultant value and the associated
decision options to provide a recommended
decision.

THE REJECTIONS
The Examiner relies upon the following as evidence of
unpatentability:
Newell US 2003/0112270 A1 Jun. 19, 2003

The following rejections are before us for review:
1. Claims 5-12 are rejected under 35 U.S.C. § 112, 1st paragraph
for failing to enable one of ordinary skill in the art to make and
use the claimed invention.
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2. Claims 1-12 are rejected under 35 U.S.C. § 112, 2nd paragraph
for failing to particularly point out and distinctly claim the
subject matter which the Appellants regard as the invention.
3. Claims 1-12 are rejected under 35 U.S.C. § 101 as being
directed to non-statutory subject matter.
4. Claims 1-12 are rejected under 35 U.S.C. § 102(e) as being
anticipated by Newell.

ISSUES
The first issue is whether claims 1-4 are indefinite for failing to
particularly point out and distinctly claim the subject matter which the
Appellants regard as the invention under 35 U.S.C. § 112, second paragraph.
Specifically, the issue is whether claim 1 is indefinite because it
encompasses a method and an apparatus.
The second issue is whether claims 5-12 are indefinite for failing to
particularly point out and distinctly claim the subject matter which the
Appellants regard as the invention under 35 U.S.C. § 112, second paragraph.
The third issue is whether claims 5-12 are directed to statutory subject
matter under 35 U.S.C. § 101. Specifically, the major issue is whether
claims 5-12 are directed to an apparatus.
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The fourth issue is whether claims 5-12 fail to enable one of ordinary
skill in the art to make and use the invention of claims 5-12 under 35 U.S.C.
§ 112, first paragraph. Specifically, the issue is whether the Examiner has
established a prima facie showing in rejecting claims 5-12 under 35 U.S.C.
§ 112, first paragraph.
The fifth issue is whether claims 5-12 are anticipated under 35 U.S.C.
§ 102(e) by Newell. Specifically, the issue is whether the Examiner has
established that Newell anticipates claims 5-12.

ANALYSIS
The rejection of claims 1-4 under 35 U.S.C. § 112, 2nd paragraph for failing
to particularly point out and distinctly claim the subject matter which the
Appellants regard as the invention.
The Examiner rejects claims 1-12 under 35 U.S.C. § 112, 2nd
paragraph as indefinite. App. Br. 11-13 and Reply Br. 35-42. The Examiner
finds the claims indefinite because it is unclear what statutory class they
invention fall into. Id. The Examiner states: “The [A]ppellant simply
identifies the invention as a tool. However, there is no clear structure
identified and there are no clear method steps being performed.” App. Br.
35-36. The Appellants respond:
Applicants submit that present claims are properly
classified as apparatus or system claims. The
present claims are a combination of graphical user
interface elements and related data field (See claim
1, entry field and menu), physical storage (See
claim 1, storage), stored information (form
discovery materials), and a generally computer-
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implemented process (discover production
mechanism).
App. Br. 18.
A claim is considered indefinite under 35 U.S.C. § 112, second
paragraph, if it does not reasonably apprise those skilled in the art of its
scope. See IPXL Holdings, L.L.C. v. Amazon.com, Inc., 430 F.3d 1377,
1383-84 (Fed. Cir. 2005).
We are not persuaded by the Appellants’ argument that claims 1-4 are
directed to an apparatus and that “[e]ach element clearly falls into the
apparatus classification, so the whole invention must then also into the
apparatus classification.” App. Br. 18. The Appellants’ argument is overly
narrower and is not commensurate in scope with what is claimed. Claim 1’s
recitation of an entry field and a menu does not require a graphical user
interface, as the Appellants seem to argue (see App. Br. 18). Further, we
note that contrary to the Appellants’ own argument, the Appellants have
construed the discovery production mechanism as a “computer-implemented
process” (Id.). If we adopt this construction, claim 1 would comprise
elements and a step of using these elements. This would cause the claim to
be indefinite because it does not reasonably apprise those skilled in the art of
the statutory class of invention the claim is directed to. See IPXL Holdings,
430 F.3d at 1384.
Arguably, the only structural element recited in claim 1 is the
“storage.” We see no other element of claim 1 that can be reasonably
construed to require a device, and an apparatus (i.e. machine) consists of a
plural parts or devices.
The Supreme Court has defined the term
“machine” as “a concrete thing, consisting of parts,
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or of certain devices and combination of devices.”
Burr v. Duryee, 68 U.S. (1 Wall.) 531, 570
(1863). This “includes every mechanical device or
combination of mechanical powers and devices to
perform some function and produce a certain effect
or result.” Coring v. Burden, 56 U.S. 252 267
(1854).
In re Nuijten, 500 F.3d 1346, 1355 (Fed. Cir. 2007). Therefore, it would be
unreasonable to construe the claim 1 to require an apparatus, as the
Appellants argue.
We find that claim 1 does not reasonably apprise those skilled in the
art of its scope because it is ambiguous as to what statutory class of subject
matter is encompassed by the claim. Only when a claim remains insolubly
ambiguous without a discernible meaning after all reasonable attempts at
construction must a court declare it indefinite. Exxon Research & Eng'g Co.
v. United States, 265 F.3d 1371, 1375 (Fed. Cir. 2001). Accordingly, we
find that the Appellants have not overcome the Examiner rejection of claims
1-4 under 35 U.S.C. § 112, second paragraph for failing to particularly point
out and distinctly claim the subject matter which the Appellants regard as
the invention.

The rejections of claims 1-4 under 35 U.S.C. § 101 and 35 U.S.C. § 102.
Claims 1-4 are indefinite for the reasons discussed above. The other
rejections of claims 1-4 under 35 U.S.C. § 101 and U.S.C. § 102(e) must
fall, pro forma, because they necessarily are based on speculative
assumptions as to the meaning of the claims. See In re Steele, 305 F.2d 859,
862-63 (CCPA 1962). Accordingly, we reverse these rejections.

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The rejection of claims 5-12 under 35 U.S.C. § 112, second paragraph for
failing to particularly point out and distinctly claim the subject matter which
the Appellants regard as the invention.
The Examiner rejected claims 5-12 as indefinite for failing to
particularly point out and distinctly claim the subject matter which the
Appellants regards as the invention. Answer 11-13. See also Answer 38-41.
The Examiner finds the claims indefinite because it is unclear what statutory
class they invention fall into. Id. The Examiner also rejected claim 8
because claim 8 is “unclear” since it recites “a tool” in the preamble but
requires “a plurality of tools according to claim 5” in the body. Answer 13.
See also Answer 41-42.
Turning to the rejection of claims 5-12, the Examiner finds the claims
indefinite because it is unclear what statutory class they invention fall into.
Answer 11-13. See also Answer 38-41. The Appellants respond by
asserting that claims 5-12 are directed to an apparatus. App. Br. 17-19 and
Reply Br. 8.
We agree with the Appellants that these claims are not indefinite and
are directed to an apparatus (i.e. machine).
The Supreme Court has defined the term
“machine” as “a concrete thing, consisting of parts,
or of certain devices and combination of devices.”
Burr v. Duryee, 68 U.S. (1 Wall.) 531, 570
(1863). This “includes every mechanical device or
combination of mechanical powers and devices to
perform some function and produce a certain effect
or result.” Coring v. Burden, 56 U.S. 252 267
(1854).
In re Nuijten, 500 F.3d 1346, 1355 (Fed. Cir. 2007).
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A discussed above with regards to claim 1, “storage” is arguably
reasonably construed as structure. Further, unlike claim 1, claim 5 does
recite “interfaces,” which we find is reasonably construed as structure.
Given that claim 5 recites at least these two parts or devices, we find that
claim 5 is directed to an apparatus.
We note that the Examiner appears to consider the limitation
“weighting values associated with each element of selected information”
to be a method step (Answer 38) and that the Appellants do not challenge
this construction (See App. Br. 18-20 and Reply Br. 8). Assuming that this
limitation is properly construed as a method step, we still find that claim 5 is
not ambiguous. Unlike claim 1 above, this “step” is not a step of using the
recited elements.
We find that claims 5-12 are not insolubly ambiguous as to which
statutory class of subject matter they encompass.
Turing to the rejection of claim 8, the Examiner found that claim 8
was “unclear” because the claim recites “a tool” in the preamble but recites a
plurality of tools according to claim 5 in the body of the claim. Answer 13.
See also Answer 41-42.
The Appellants responds:
Claim 5 defines a singular tool according to the
present invention, a tool to recommend a particular
decision in a litigation. Claim 8 uses a plurality of
the singular tools of claim 5 to asses a lighting.
Thus claim 8 utilizes the various decisions
provided by the plurality of tools of claim 5 used
as elements in claim 8 to provide an assessment of
the litigation.
App. Br. 19-20. See also Reply Br. 10.
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We agree with the Appellants and find that claim 8 is not insolubly
ambiguous. Only when a claim remains insolubly ambiguous without a
discernible meaning after all reasonable attempts at construction must a
court declare it indefinite. Exxon Research & Eng'g Co. v. United States,
265 F.3d 1371, 1375 (Fed. Cir. 2001).
Accordingly, we find that the Examiner has not established that
claims 5-12 are indefinite under 35 U.S.C. § 112, second paragraph for
failing to particularly point out and distinctly claim the subject matter which
the Appellants regard as the invention.

The rejection of claims 5-12 under 35 U.S.C. § 101 as being directed to non-
statutory subject matter.
The Examiner rejected claims 1-2 under § 101 as being directed to
non-statutory subject matter because 1) the claimed subject matter does not
fall into one of the four recognized statutory classes of invention (Answer
42-45) and 2) the claimed invention does not produce a useful, concrete, and
tangible result (Answer 45-64). The Appellants respond that the claims
recite a “tool” is clearly an apparatus. App. Br. 20-22 and Reply Br. 10-12.
As discussed above with regards to the rejection of claims 5-12 under
35 U.S.C. § 112, second paragraph, we find that claim 5 is directed to a
machine (i.e., apparatus) which is one of the four statutory classes of
invention. Accordingly, we find that the rejection of claims 5-12 under 35
U.S.C. § 101 as being directed to non statutory subject matter is overcome.

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The rejection of claims 5-12 under 35 U.S.C. § 112, first paragraph for
failing to enable one of ordinary skill in the art to make and use the claimed
invention.
The Examiner rejected claims 5-12 as failing to comply with the
enablement requirement. Answer 4-11. See also Answer 17-35. The
Appellants traverse this rejection. See App Br. 12-14 and Reply Br. 3-6.
We find that the Examiner has not established a prima face showing
that one of ordinary skill in the art would not be enabled to make and use the
claimed invention. “[T]o be enabling, the specification of a patent must
teach those skilled in the art how to make and use the full scope of the
claimed invention without [‘]undue experimentation.[‘]” In re Wright, 999
F.2d 1557, 1561 (Fed. Cir. 1993) (citation omitted). Some experimentation,
even a considerable amount, is not “undue” if, e.g., it is merely routine, or if
the specification provides a reasonable amount of guidance as to the
direction in which the experimentation should proceed. In re Wands, 858
F.2d 7631, 737 (Fed. Cir. 1988). Factors to consider include:
(1) the quantity of experimentation necessary, (2)
the amount of direction or guidance presented, (3)
the presence or absence of working examples, (4)
the nature of the invention, (5) the state of the prior
art, (6) the relative skill of those in the art, (7) the
predictability or unpredictability of the art, and (8)
the breadth of the claims.[]
Wands, 858 F.2d at 737 (footnote omitted). While the Examiner argues that
undue experimentation would be required to make and use the invention
(For example, see Answer 9), the Examiner does not address the Wands
factors above to support their argument. Accordingly, we find that the
Examiner has not established a prima facie case that claims 5-12 fail to
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enable one of ordinary skill in the art to make and use the claimed invention
under 35 U.S.C. § 112, first paragraph, and we reverse this rejection.

The rejection of claims 5-12 under 35 U.S.C. § 102(e) as being anticipated
by Newell.
The Appellants argue that the Examiner fails to make a prima facie
showing of anticipation and ignores some limitations of claim 5 including,
the limitations regarding the weighting values and assessor. App. Br. 24-25
and Reply Br. 14-15. In rejecting claim 5 under 35 U.S.C. § 102(e), the
Examiner states that given the rejection of claim 5 under 35 U.S.C. § 112,
second paragraph, “the claims are construed and the art is applied as much
as practically possible” (Answer 16, emphasis omitted), but makes no
findings or mention of theses limitations (See Answer 17). Further, when
responding to the Appellants’ argument, the Examiner also does not address
these limitations. See Answer 69-71. Given this, we find that the Examiner
has failed to establish a prima facie showing of anticipation in rejecting
claim 5. It is well settled that in order for the Examiner to establish a prima
facie case of anticipation, each and every element of the claimed invention,
arranged as required by the claim, must be found in a single prior art
reference, either expressly or under the principles of inherency. See
generally, In re Schreiber, 128 F.3d 1473, 1477 (Fed. Cir. 1997);
Diversitech Corp. v. Century Steps, Inc., 850 F.2d 675, 677-78 (Fed. Cir.
1988); Lindemann Maschinenfabrik GMBH v. American Hoist and Derrick,
730 F.2d 1452, 1458 (Fed. Cir. 1984). Accordingly, we find that the
Appellants have overcome the rejection of claim 5, and claims 6-12,
dependent thereon, under 35 U.S.C. § 102(e) as anticipated by Newell.
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NEW GROUND OF REJECTION
Pursuant to 37 C.F.R. 41.50(b), we enter a new ground of rejection
under 35 U.S.C. § 103(a) on claims 5-12.
For this rejection, we make the following findings of fact (FF) are
supported by at least a preponderance of the evidence. Ethicon, Inc. v.
Quigg, 849 F.2d 1422, 1427 (Fed. Cir. 1988) (explaining the general
evidentiary standard for proceedings before the Office).
1. Figure 1A and 1B of the instant application are prior art and depict a
flowchart of the methodology involved in making an assessment in an
employment lawsuit. Specification [00003] and [00016].
2. Figure 1A depicts steps of gathering information, such as “Obtain
Palintiff’s Medical Release of Records for Compensatory Analysis”
and “On-site Investigation.”
3. Figure 1B includes a step of “Analyze: Success/Vunerability of Case
and Damage Ratings.
4. Figure 1B includes a step of “Present Analysis and Recommendation
to Client.”
5. The Specification states: “Each of the data values includes a particular
value which is then used in a weighted analysis as derived by an
experienced lawyer.” Specification [00034]. See also Specification
[00029],
6. Newell teaches that computer based tools that store litigation
information in databases are known. Newell [0004] and [0103].
7. Newell teaches using a computer based user interface for accessing
litigation information. Newell [0006] and [0101].
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Claims 5-12 are rejected under 35 U.S.C. § 103(a) over admissions in
Appellants’ Specification and Newell. A claimed invention is unpatentable
if the differences between it and the prior art are “such that the subject
matter as a whole would have been obvious at the time the invention was
made to a person having ordinary skill in the art.” 35 U.S.C. § 103(a)
(2000); KSR Int’l v. Teleflex Inc., 550 U.S. 398, 399 (2007); Graham v. John
Deere Co., 383 U.S. 1, 13-14 (1966).
Taking claim 5 as representative, as discussed above claim 5
encompasses an apparatus. The apparatus includes “interfaces for gathering
selected information relevant to the decision” and “storage for gathered
selected information.” Claim 5 also recites an analyzer and a
recommendation element for using the gathered information, weighted
values, and resultant values to determine a recommended litigation decision.
In as much as these limitations may be reasonably construed to encompass
structures that perform the recited functions, we find that one of ordinary
skill would have been led by admissions in the Appellants’ Specification and
Newell to an apparatus having the claimed structure.
The Appellants’ Specification describes a prior art manual method
(FF 1) which includes steps of gathering information (FF 2), a step of
analyzing litigation information to determine a result (FF 3) and a step of
presenting a recommendation to a client (FF 4). The Appellants also admit
that it is within the general knowledge of an experienced lawyer to derive a
weighted analysis. FF 5. However, the Appellants’ Specification does not
describe that it is known to implement the prior art manual method in an
apparatus, such as a computer, having interfaces and storage.
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However, “… it is well settled that it is not “invention” to broadly provide a
mechanical or automatic means to replace manual activity which has
accomplished the same result. In re Rundell, 18 CCPA 1290, 48 F.2d 958, 9
USPQ 220[, 221] [“Appellant argues that his rejected claims rest upon an
automatic mechanism. The mere statement that a device is to be operated
automatically instead of by hand, without a claim specifying any particular
automatic mechanism, is not the statement of an invention. Marchand v.
Emken, 132 U. S. 195; In re Gill, 17 C. C. P. A. (Patents) 700, 36 F. (2d)
128.”]” In re Venner, 120 USPQ 192, 194 (CCPA 1958). Cf. Leapfrog
Enterprises Inc. v. Fisher-Price Inc., 485 F.3d 1157 (Fed. Cir. 2007) (One of
ordinary skill in the art would have found it obvious to combine an old
electromechanical device with electronic circuitry “to update it using
modern electronic components in order to gain the commonly understood
benefits of such adaptation, such as decreased size, increased reliability,
simplified operation, and reduced cost. . . . The combination is thus the
adaptation of an old idea or invention . . . using newer technology that is
commonly available and understood in the art.” Id at 1163.). We note that
Newell teaches that computers having interfaces and storage are known in
the art. FF 6-7.
We find that given the teachings of the admission of the Appellants’
Specification and the teaching of Newell, one of ordinary skill in the art
would have been led to the tool of claim 5. Accordingly, we reject claims 5-
12, under 35 U.S.C. § 103(a) as being unpatentable over the admission in the
Appellant’s Specification and Newell.

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DECISION
The decision of the Examiner to reject claims 1-4 is affirmed and to
reject claims 5-12 is reversed. We enter a new ground of rejection on claims
5-12 under 35 U.S.C. § 103(a).
This decision contains a new ground of rejection pursuant to
37 C.F.R. § 41.50(b) (effective September 13, 2004, 69 Fed. Reg. 49960
(August 12, 2004), 1286 Off. Gaz. Pat. Office 21 (September 7, 2004)). 37
C.F.R. § 41.50(b) provides “[a] new ground of rejection pursuant to this
paragraph shall not be considered final for judicial review.”
37 C.F.R. § 41.50(b) also provides that the Appellants, 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 proceeding will be remanded to the examiner . . . .
• (2) Request rehearing. Request that the proceeding be reheard under
§ 41.52 by the Board upon the same record . . . .

AFFIRMED-IN-PART; 37 C.F.R. § 41.50(b)

mev

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WONG, CABELLO, LUTSCH, RUTHERFORD & BRUCCULERI, L.L.P.
20333 SH 249 6th Floor
HOUSTON TX 77070