Ex Parte Goodwin et al

Board of Patent Appeals and Interferences

Oct 27, 2009

10341591 (B.P.A.I. Oct. 27, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte JAMES P. GOODWIN, CARL J. KRAENZEL, ANDREW L.
SCHIRMER, JEFF REAGEN, and DAVID L. NEWBOLD
____________________

Appeal 2009-003696
Application 10/341,591
Technology Center 2100
____________________

Decided: October 28, 2009
____________________

Before HOWARD B. BLANKENSHIP, THU A. DANG, and CAROLYN
D. THOMAS, Administrative Patent Judges.

DANG, Administrative Patent Judge.

DECISION ON APPEAL

I. STATEMENT OF THE CASE
Appellants appeal from the Examiner’s final rejection of claims 1-18
and 20 under 35 U.S.C. § 134 (2002). Claim 19 has been canceled. We
have jurisdiction under 35 U.S.C. § 6(b) (2002).

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A. INVENTION
According to Appellants, the invention relates generally to knowledge
management systems and more particularly to mapping knowledge data
based on the user’s affinity to knowledge (Spec. 1, ll. 21-23).

B. ILLUSTRATIVE CLAIMS
Claims 1 and 20 are exemplary and are reproduced below:
1. A system for knowledge mapping comprising:

a gathering module that gathers documents from one or
more user selectable data repositories;

a content processing module that groups the gathered
documents into one or more clusters and assigns categories to
the one or more clusters of gathered documents, wherein
grouping the gathered documents into one or more clusters
comprises (i) defining a multi-dimensional space by assigning a
word or phrase found in the gathered documents to each of the
dimensions in the multi-dimensional space, (ii) determining, for
each document, a number of instances of each of the words
and/or phrases that have been assigned to a dimension in the
multi-dimensional space, (iii) determining a vector for each
document in the multi-dimensional space using the
numbers of instance as the coordinates for each dimension, (iv)
geometrically grouping the vectors in the multi-dimensional
space into one or more vector groups, and (v) grouping the
gathered documents into one or more clusters based on the one
or more vector groups; and

a map creation module that maps the gathered documents
in each of the one or more clusters to the assigned categories.
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20. A method for knowledge mapping comprising:

gathering information from one or more user selectable
data repositories, wherein the information describes the one or
more user's activities with one or more documents, wherein the
activities are associated with a weighted value;

determining an affinity between the gathered information
and the one or more users, wherein the affinity is determined by
accruing a sum of weighted values associated with each of the
activities; and

creating a map between the gathered information and at
least a portion of the one or more users having the affinity to
the gathered information.

C. PRIOR ART
The prior art relied upon by the Examiner as evidence in rejecting the
claims on appeal is:
Appleman US 6,226,648 B1 May 01, 2001
Robertson US 6,269,369 B1 Jul. 31, 2001
Gillis US 6,523,026 B1 Feb. 18, 2003

D. REJECTION
Claims 1, 2, 4-8, 10-14, 16-18, and 20 stand rejected under 35 U.S.C.
§ 103(a) over the teachings of Robertson in view of Gillis.
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Claims 3, 9, and 15 stand rejected under 35 U.S.C. § 103(a) over the
teachings of Robertson, Gillis, and further in view of Appleman.

E. SUMMARY OF DECISION
We REVERSE and enter a new ground of rejection regarding claims
1-18 as permitted by 37 C.F.R. § 41.50(b), and AFFIRM the rejection of
claim 20.

II. ISSUES
The issues before us are whether:
1) Instant claims 1-18 particularly point out and distinctly claim the
subject matter which Applicants regard as the invention; and
2) Appellants have shown that the Examiner erred in finding that
Robertson in view of Gillis discloses or would have suggested “gathering
information from one or more user selectable data repositories” and affinity
“determined by accruing a sum of weighted values” (claim 20).

III. FINDINGS OF FACT
The following Findings of Fact (FF) are shown by a preponderance of
the evidence.
Robertson
1. Robertson discloses maintaining and updating a set of user
information which is stored in a relational database on a networked
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server (Abstract), wherein the information includes information
specifying users’ contacts that are permitted to access respective
datum of their user information (Id.).
Gillis
2. Gillis discloses a set of preliminary term vectors which consist of
randomly assigned component values in each of the dimensions of a
high dimensionality vector space (col. 35, ll. 63-67).
3. The vectors corresponding to compound structures are calculated from
the individual term vectors by summing (col. 34, ll. 13-15), wherein
all the term vectors assigned to the individual search domain records
and multi-term queries are added up (col. 41, ll. 21-38).
4 Frequency related weightings to terms are applied in the computation
of summary vectors for records and queries (col. 41, ll. 39-46).

IV. PRINCIPLES OF LAW
“A claim is indefinite if, when read in light of the specification, it
does not reasonably apprise those skilled in the art of the scope of the
invention.” Amgen Inc. v. Hoechst Marion Roussel, Inc., 314 F.3d 1313,
1342 (Fed. Cir. 2003).
The function of claims is (1) to point out what the invention is in such
a way as to distinguish it from the prior art; and (2) to define the scope of
protection afforded by the patent. In re Vamco Machine & Tool, Inc., 752
F.2d 1564, 1577 n.5 (Fed. Cir. 1985). “The legal standard for definiteness is
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whether a claim reasonably apprises those of skill in the art of its scope.” In
re Warmerdam, 33 F.3d 1354, 1361 (Fed. Cir. 1994). The inquiry is
“merely to determine whether the claims do, in fact, set out and circumscribe
a particular area with a reasonable degree of precision and particularity.” In
re Moore, 439 F.2d 1232, 1235 (CCPA 1971).
“When the claims become so ambiguous that one of ordinary skill in
the art cannot determine their scope absent speculation, such claims are
invalid for indefiniteness.” S3 Inc. v. NVIDIA Corp., 259 F.3d 1364,
1372 (Fed. Cir. 2001) (citing In re Steele, 305 F.2d 859, 862-63 (CCPA
1962). See also IPXL Holdings, L.L.C. v. Amazon.com, Inc., 430 F.3d 1377,
1384 (Fed. Cir. 2005). The analysis of a claim rejection based on prior art
should not be performed where it is necessary to engage in speculation as to
the meaning of claim terms and assumptions as to the scope of a claim. See
In re Steele, 305 F.2d at 862.
"[T]he PTO gives claims their 'broadest reasonable interpretation.'"
In re Bigio, 381 F.3d 1320, 1324 (Fed. Cir. 2004) (quoting In re Hyatt, 211
F.3d 1367, 1372 (Fed. Cir. 2000)). "Moreover, limitations are not to be read
into the claims from the specification." In re Van Geuns, 988 F.2d 1181,
1184 (Fed. Cir. 1993) (citing In re Zletz, 893 F.2d 319, 321 (Fed. Cir.
1989)). Our reviewing court has repeatedly warned against confining the
claims to specific embodiments described in the specification. Phillips v.
AWH Corp., 415 F.3d 1303, 1323 (Fed. Cir. 2005) (en banc).
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When descriptive material is not functionally related to the substrate,
the descriptive material will not distinguish the invention from the prior art
in terms of patentability. In re Ngai, 367 F.3d 1336, 1339 (Fed. Cir. 2004).
Cf. In re Gulack, 703 F.2d 1381, 1385 (Fed. Cir. 1983).

V. ANALYSIS
Claims 1-18
35 U.S.C. § 103(a)
Appellants contend that “the claim language provided above recites
defining the dimensions of a multi-dimensional space by assigning a word or
phrase to each of the dimensions” (App. Br. 9) and that “in the
characterization of the cited portions of Gillis, the Examiner has not even
addressed the particular technique for determining the coordinates of vectors
corresponding to documents recited in the claimed invention” (App. Br. 12).
We reverse the outstanding rejection of claims 1-18 under 35 U.S.C.
§ 103(a), pro forma, because we conclude that at least independent claims 1,
7, and 13 are indefinite under 35 U.S.C. § 112, second paragraph, as detailed
under new grounds of rejection, infra. That is, claims 1-18 on appeal must
be reasonably understood without resorting to speculation to thereby prevent
the rejections of the claims over prior art from being based on speculation
and assumptions as to the scope of the claims. See In re Steele, 305 F.2d at
862. Presently, the claims on appeal do not adequately reflect what the
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disclosed invention is. We are therefore declining from utilizing speculation
and conjecture in an attempt to ascertain the scope of the claims.
35 U.S.C. §112, Second Paragraph
New Ground of Rejection
We find that independent claims 1, 7, and 13 on appeal are so abstract
in recitation that the claims are deemed indefinite. That is, we cannot
determine the metes and bounds of the claims as required to ascertain the
scope of the respective claim. In particular, we are unclear as to what the
phrase “using the numbers of instance as the coordinates for each
dimension” is to include, mean or represent in step (iii). Though a claim is
read in view of the specification, Appellants’ specification does not shed any
light as to the meaning of the phrase. In fact, we are unclear as to which
“dimension” or as to the “dimension” of what is being referenced. That is,
the multi-dimensional space is already defined in step (i), and thus, we are
unclear as to why or how coordinates are being defined to an already defined
multi-dimensional space.
Therefore, we find it unclear as to what the language of claims 1, 7,
and 13 is directed. When the claims become so ambiguous that one of
ordinary skill in the art cannot determine their scope absent speculation,
such claims are invalid for indefiniteness. In re Steele, 305 F.2d at 862-63.
Here, we conclude that each of claims 1, 7, and 13 do not reasonably
apprise those skilled in the art of its scope. Because we conclude that there
are significant ambiguities with respect to the independent claims and thus to
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each of the claims depending therefrom, we enter a new ground of rejection
under 35 U.S.C. § 112, second paragraph, against claims 1-18 on appeal,
pursuant to our authority under 37 C.F.R. § 41.50(b).
Claim 20
As to claim 20, Appellants argue that “[e]ven if the cited portions of
Gillis and Robertson provided above supported the assertions made by the
Examiner, ‘adding values’ is not analogous to ‘accruing a sum of weighted
values’” because “simply adding values would not entail weighting the
values being added” (App. Br. 15). Further, Appellants argue that “any
‘activity of the second user’ described in the cited section of Robertson is
not analogous to the activities recited in claim 20 at least because the
claimed activities are defined in claim 20 as being ‘activities with one or
more documents’” (Id.).
The Examiner finds that “Gillis discloses … that summary vectors in
a document are computed based on the frequency related weighting scheme”
and that “Robertson clearly discloses… that the second user’s activity is
associated with one or more documents” (Ans. 12-13).
Appellants’ argument that “‘adding values’ is not analogous to
‘accruing a sum of weighted values’” because “simply adding values would
not entail weighting the values being added” (App. Br. 15) is not
commensurate with the language of the claimed invention. That is, claim 20
does not recite any such step of “weighting the values being added” as
Appellants argue.
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Furthermore, we give the claims their broadest reasonable
interpretation and will not read limitations into the claims from the
Specification. See In re Bigio, 381 F.3d at 1324 and In re Van Geuns, 988
F.2d at 1184.
Claim 20 simply does not place any limitation on what the term
“weighted value” is to be, to represent, or to mean. As discussed, claim 20
does not even recite any weighting step but merely recites “gathering
information.” In fact, claim 20 is not even directed to weighting but instead
recites “gathering” of information. Furthermore, the label “weighted” in
“weighted value” does not change the functionality of or provide any
additional function to the claimed “value” but is merely as label describing
the value. Accordingly, we interpret “weighted value” as reading on any
value associated with the activities.
Furthermore, the phrase “the information describes the one or more
user’s activities” is nonfunctional descriptive material that is not functionally
related to the claimed steps of “gathering information” of claim 20. That is,
the phrase does not change the functionality of or provide an additional
function to the gathering step of claim 20 but is merely a description of the
information being gathered. When descriptive material is not functionally
related to the claimed embodiment, the descriptive material will not
distinguish the invention from the prior art in terms of patentability. See In
re Ngai at 1339 and In re Gulack at 1385. Thus, we interpret claim 20 as
merely requiring the steps of “gathering information.” That is, we find that
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the phrase “the information describes the one or more user’s activities” does
not further limit claim 20.
Accordingly, we will not read such “weighting” or “describes”
limitation into the claim. In view of these findings, we address whether the
combination of Robertson and Gillis teaches and/or would have suggested
the claimed limitations of “gathering information from one or more user
selectable data repositories” and affinity “determined by accruing a sum of
[weighted] values” (claim 20).
Robertson discloses gathering of user information in relational
databases (FF 1). An artisan would have understood Robertson’s user
relational databases to be user selectable data repositories. Accordingly, we
agree with the Examiner that Robertson in view of Gillis teaches and/or
would have suggested the claimed limitation of “gathering information from
one or more user selectable data repositories” as required by claim 20.
Furthermore, Robertson also discloses that the information includes
information specifying users’ access to data of other users’ information (Id.).
Thus, even if claim 20 were to require that the information “describes the
one or more user’s activities with one or more documents,” an artisan would
have understood such information specifying at least one user’s access to
data to be information describing a user’s activities with a document.
Additionally, Gillis discloses associating vectors with component
values (FF 2), wherein the vectors are summed while applying frequency
related weighting (FF 3-4). Thus, an artisan would have understood
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summing by Gillis to be “accruing a sum of [weighted] values” as required
by claim 20. In fact, even Appellants agree that the cited art teaches such
“adding” of “values” (App. Br. 15). As discussed above, we interpret
“weighted value” as reading on any value associated with the activities.
Thus, we agree with the Examiner that Robertson, in view of Gillis,
teaches or at the least would have suggested the limitations of claim 20.

VI. CONCLUSION OF LAW
We conclude that claims 1-18 are indefinite under 35 U.S.C. § 112,
second paragraph and therefore reverse, pro forma, the § 103(a) rejection of
those claims. Appellants have not shown that the Examiner erred in finding
claim 20 unpatentable over the teachings of Robertson in view of Gillis.

VII. DECISION
We reverse, pro forma, the Examiner's rejection of claims 1-18 and
affirm the Examiner’s rejection of claim 20 under 35 U.S.C. § 103(a).
In a new ground of rejection, we reject claims 1-18 under 35 U.S.C. §
112, second paragraph, as being indefinite.
This decision contains a new ground of rejection pursuant to
37 C.F.R. § 41.50(b) (2009). 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.”
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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. . . .

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

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

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