Ex Parte Dettinger et al

Patent Trial and Appeal Board

May 16, 2016

12771086 (P.T.A.B. May. 16, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
121771,086 04/30/2010
46797 7590 05/18/2016
Patterson & Sheridan, LLP
24 Greenway Plaza, Suite 1600
Houston, TX 77046
FIRST NAMED INVENTOR
Richard D. Dettinger
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.
ROC920100084US1 1961
EXAMINER
MAHMOOD, REZWANUL
ART UNIT PAPER NUMBER
2164
NOTIFICATION DATE DELIVERY MODE
05/18/2016 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):
Pair_eOfficeAction@pattersonsheridan.com
IBM@P ATTERSONSHERIDAN.COM
rociplaw@us.ibm.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte RICHARD D. DETTINGER, FRED A. KULACK,
and KEVIN G. PATERSON
Appeal2014-006501
Application 12/771,0861
Technology Center 2100
Before JOSEPH L. DIXON, JEFFREY A. STEPHENS, and
JAMES W. DEJMEK, Administrative Patent Judges.
DIXON, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from a rejection of claims
1-21. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
The claims are directed to improving the quality and durability of
citations used within research documents. A method and apparatus may be
used to enhance the ability of researchers to collaborate (or to simply be
1 Appellants indicate that International Business Machines Corporation is the
real party in interest. (Br. 3).
Appeal2014-006501
Application 12/771,086
alerted) when the substance of a reference cited in one research document
changes in a way that may conflict with how that reference is used in the
citing document. For example, changes in cited reference may undermine
(or enhance) the conclusions of a research paper stored in the managed
repository. (Abstract). Claim 1, reproduced below, is illustrative of the
claimed subject matter:
1. A computer-implemented method of storing a document
in a managed research domain, comprising:
receiving a primary research document to store m a
repository provided by the managed research domain;
extracting one or more links from the primary research
document, wherein each extracted link references a cited
document;
for each cited document, evaluating content of the cited
document using a set of one or more annotators to derive a first
collection of one or more assertions regarding the content of the
cited document;
evaluating content of the primary research document
using the set of one or more annotators to derive a second
collection of one or more assertions of the content of the
primary research document; and
storing the primary research document, the first
collection of assertions, and the second collections of assertions
in the repository provided by the managed research domain.
REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Dettinger et al.
Kothari et al.
US 2007/0112819 Al
US 2007 /0143322 Al
2
May 17, 2007
June 21, 2007
Appeal2014-006501
Application 12/771,086
Rollins et al.
Hill et al.
US 2008/0320579 Al
US 7,493,333 B2
REJECTIONS
The Examiner made the following rejections:
Dec. 25, 2008
Feb. 17,2009
Claims 8-14 stand rejected under 35 U.S.C. § 101 because the
claimed invention is directed to non-statutory subject matter.
Claims 1---6, 8-13, and 15-20 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over Rollins in view of Hill and Kothari.
Claims 7, 14, and 21 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Rollins, Hill, Kothari and further in view of Dettinger.
ANALYSIS
35 U.S.C. § 101 2
The Notice of Appeal indicates that Appellants "appeal[] to the Patent
Trial and Appeal Board from the last decision of the examiner." (Notice of
Appeal 1 ). Appellants' Appeal Brief provides no response to the
Examiner's rejection under 35 U.S.C. § 101.3 The Examiner has not
withdrawn the lack of statutory subject matter rejection in the Examiner's
2 As an initial matter, we note that should there be further prosecution of
this application (including any review for allowance), the Examiner may
wish to review the claims for compliance under 35 U.S.C. § 101 in light of
the 2014 Interim Guidance on Patent Subject Matter Eligibility, 79 Fed. Reg.
74,618 (Dec. 16, 2014) (updated July 2015, May 2016), which supplements
the "Preliminary Examination Instructions in view of the Supreme Court
Decision in Alice Corporation Pty. Ltd. v. CLS Bank International, et al."
Memorandum to the Examining Corps, June 25, 2014. We additionally note
that the originally filed Specification at paragraphs 24--26 indicates that a
signal embodiment is disclosed.
3 We note that Appellants' proposed amendment to the claims, filed August
19, 2013, was denied entry in the Advisory Action, mailed August 27, 2013.
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Application 12/771,086
Answer. The Examiner maintains: "Every ground of rejection set forth in
the Office action dated 06/17 /13 from which the appeal is taken is being
maintained by the examiner except for the grounds of rejection (if any) listed
under the subheading 'WITHDRAWN REJECTIONS'." (Ans. 2). The
Examiner's Answer contains no subheading "WITHDRAWN
REJECTIONS." Consequently, the non-statutory subject matter rejection is
before us, and we summarily sustain the rejection of independent claim 8
and dependent claims 9-14 because Appellants did not present any
arguments relating thereto. Moreover, Appellants have not filed a Reply
Brief to further respond to the Examiner's rejections.
35 U.S.C. § 103(a)
Claims 1, 8, and 15
With respect to independent claims 1, 8, and 15, Appellants contend
the system of the Rollins reference is used to validate the accuracy of
citations made in a document where the reference accurately identifies the
referenced document. (Br. 9-10). We note the Examiner relied upon the
Hill reference to teach or suggest deriving collections of assertions and the
Examiner relied upon the Kothari reference to teach or suggest using an
annotator for deriving information. (Final Act. 7-8).
Appellants contend:
Rollins discloses evaluating the citations made in one document
to determine whether each such citation is valid or invalid. The
content of the cited reference is not evaluated, or would even be
useful to the process of Rollins. Plainly, the citation validation
system of Rollins in no way "evaluates the set of cited reference
or the content of the cited document" as suggested by the
Examiner.
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Application 12/771,086
Further, Applicants note that claim 1 recites "evaluating
content of the cited document ... to derive a first collection of
one or more assertions regarding the content of the cited
document." In discussing claim 1, the Examiner breaks the
limitation in two and argues that the citation validation system
of Rollins discloses "for each cited document, evaluating
content of the cited document" but then concedes that Rollins
does not disclose the function of the evaluation - "to derive a
first collection of one or more assertions regarding the content
of the cited document."
(Br. 12). While we agree with Appellants that the Rollins reference is
directed mainly to evaluation of the citations in a reference, the Examiner
has relied upon the Hill and Kothari references to teach and suggest utilizing
an ontology analysis of content of documents. (Ans. 4--10). As a result, we
agree with the Examiner that Appellants are arguing the references
individually rather than what would have been taught or suggested by the
combination of references to those skilled in the art at the time of the
invention. (Ans. 8).
Appellants dispute the Examiner's reliance upon two separate
references to teach and suggest the claimed "evaluating content of the cited
document ... to derive a first collection of one or more assertions regarding
the content of the cited document." (Br. 12). Appellants further argue:
the "multi-relational ontologies" of Hill would in no way be
useful to identify "highly relevant information" related to the
accuracy of a citation or the existence of a research paper
referenced in a citation. Further, as demonstrated above,
Rollins does not disclose evaluating the content of a cited
reference, but instead, provides a tool used to verify that a
citation to an external paper is accurate. The "multi-relational
ontologies" of Hill would in no way improve the ability of
citation validation system of Rollins to evaluate a citation in a
paper.
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Appeal2014-006501
Application 12/771,086
Nothing in Kothari address the deficiencies of the
rejection discussed above. For all the foregoing reasons,
Applicants submit that the combination of Rollins, Hill, and
Kothari does not render claim 1 obvious. Respectfully
therefore, Applicants request that the Board vacate the rejection
based of claims 1, 8, and 15.
(Br. 13). We disagree with Appellants and find Appellants are evaluating
the references individually rather than the rejection as set forth by the
Examiner. Consequently, we find Appellants' argument to be unpersuasive
of error in the Examiner's conclusion of obviousness of independent claim
1. As a result, we sustain the rejection of independent claim 1 and
independent claims 8 and 15 and their respective dependent claims not
argued separately.
Claims 4, 11, and 18
With respect to dependent claims 4, 11, and 18, Appellants contend:
However, nothing in this passage describes comparisons
used to identify conflicting assertions made by a "primary
research document" and a "cited document" cited by the
"primary research document." That is, neither Rollins nor Hill
teaches or suggests "comparing the assertions in the first
collection of assertions and the assertions in the second
collection of assertions to identify any conflicts between the
first collection of assertions and the second collection of
assertions," as claimed.
Nothing in Kothari address the deficiencies of the
rejection discussed above. In addition to the limitations
discussed above regarding independent claims 1, 8, and 15.
(Br. 14).
We find the Hill reference discloses "[w]eakly evidenced assertions
may include opinions and observations based on evidence from one
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Appeal2014-006501
Application 12/771,086
publication and/or where there may be conflicting evidence." (See Hill: Col.
14, lines 14--17; see also Br. 14 ). Hence, we disagree with Appellants and
find the fact that the Hill reference acknowledges the use of labels
concerning "conflicting evidence," evidences that there is a comparison of
assertions to identify such a conflict. Consequently, Appellants' general
argument does not show error in the Examiner's conclusion of obviousness
of dependent claim 4 and dependent claims 11 and 18 not specifically
argued.
Claims 7, 14, and 21
With respect to dependent claims 7, 14, and 21, Appellants rely upon
the arguments advanced with respect to the corresponding parent claims.
(Br. 15). Because we found no deficiency in the Examiner's conclusion of
obviousness of independent claim 1, we similarly sustain the rejection of
dependent claims 7, 14, and 21.
CONCLUSIONS
The Examiner did not err in rejecting claims 8-14 based upon a lack
of statutory subject matter. The Examiner did not err in rejecting claims 1-
21 based upon obviousness.
DECISION
For the above reasons, we sustain the Examiner's statutory subject
matter rejection of claims 8-14, and we sustain the Examiner's obviousness
rejection of claims 1-21.
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Appeal2014-006501
Application 12/771,086
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).
AFFIRMED
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