Ex Parte Grainger et al

Board of Patent Appeals and Interferences

Jun 2, 2009

09919768 (B.P.A.I. Jun. 2, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte JEFFRY J. GRAINGER, JAMES R. SHAY,
and CECILY ANNE SNYDER
____________

Appeal 2008-005163
Application 09/919,768
Technology Center 3600
____________

Decided:1 June 2, 2009
____________

Before MURRIEL E. CRAWFORD, JOSEPH A. FISCHETTI, and BIBHU
R. MOHANTY, Administrative Patent Judges.

CRAWFORD, Administrative Patent Judge.

DECISION ON APPEAL

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, begins to run from the decided date
shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Date (electronic delivery).

Appeal 2008-005163
Application 09/919,768

STATEMENT OF THE CASE
This is an appeal from the final rejection of claims 1-12, 14-19 and
21-222. We have jurisdiction to review the case under 35 U.S.C. §§ 134 and
6.
The claimed invention is directed to systems and methods for
automatically generating information disclosure statements associated with
obtaining and maintaining intellectual property rights such as patent rights
(Spec. p. 1, ll. 24-27).
Claim 1, reproduced below, is further illustrative of the claimed
subject matter.
1. A computer implemented method of
processing documents received on a server system
comprising:
storing a plurality of references on the server
system, wherein the plurality of references are
electronic documents, the plurality of references
comprising a first reference comprising a set of
reference information to be disclosed to a patent
office;
receiving a citation document on the server
system, wherein the citation document is an
electronic document including citation information
for one or more prior art reference documents;
providing communication between the
server system and a client system, wherein the
client system is configured to provide interaction
between a user and the server system;
displaying the citation information in the
citation document to a user of a client system, in a
first display section; and

2 Unlike the reference to independent claims 21 and 22 on pages 3-4 of the
Examiner’s Answer, dependent claim 20 has not been addressed as having
been rejected over the prior art.
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displaying, in a second display section, an
identifier corresponding to the first reference; and
providing an interface element associated
with the identifier, wherein the interface element is
configured to receive, from the user, input
pertaining to the first reference, the input
comprising information about a relationship
between at least some of the citation information in
the citation document and the first reference.

The references of record relied upon by the Examiner as evidence of
obviousness are:
Porcari US 2001/0037460 A1 Nov. 1, 2001

Rivette et al. US 2003/0046307 A1 Mar. 6, 2003

Claims 1-12, 14, 16-19 and 21-22 stand rejected under 35 U.S.C.
§ 102(e) as anticipated by Porcari; claim 12 stands rejected under 35 U.S.C.
§ 103(a) as unpatentable over Porcari; and claim 15 stands rejected under
35 U.S.C. § 103(a) as unpatentable over Porcari in view of Rivette.
We AFFIRM.

ISSUES
Did the Appellants show the Examiner erred in finding that Pocari
discloses a server system that stores both a plurality of references and a
citation document as recited in independent claims 1, 21 and 22, where the
citation document is an electronic document including citation information
for one or more prior art reference documents that is received by the server
system?

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Did the Appellants show the Examiner erred in finding that Pocari
discloses displaying the citation information in the citation document to a
user of a client system as recited in independent claims 1, 21 and 22?
Did the Appellants show the Examiner erred in finding that Pocari
discloses displaying the citation information in the citation document to a
user of a client system, in a first display section and displaying, in a second
display section, an identifier corresponding to the first reference as recited in
independent claims 1, 21, and 22?
Did the Appellants show the Examiner erred in finding that the mouse
and keyboard of Pocari correspond to an interface element as recited in
independent claims 1, 21 and 22, where the specification discloses that
interface elements include graphical user interfaces, such as radio button,
check boxes, and the like?

FINDINGS OF FACT
Specification
The claimed invention is directed to systems and methods for
automatically generating information disclosure statements associated with
obtaining and maintaining intellectual property rights, such as patent rights
(Spec. p. 1, ll. 24-27).

Pocari
Pocari discloses an on-line invention disclosure system 10 that
includes web server 12, user computer 14, directory server 16 and database
system 18. Database system 18 may contain both docketing information and
disclosure information ([0025]).
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While entering the on-line invention disclosure on system 10, other
documents may be attached to the disclosure as file attachments, for
example, word processing documents, CAD files, prints, flow charts,
presentation documents or various other types of documents. These
documents are stored on system 10 with the disclosure ([0033], [0039]).
The system may include an on-line invention disclosure and a prior art
search function that searches portions of the invention disclosure, various
on-line search engines and various search vendors. The results of the search
are presented to the inventor at step 204 and stored together with the
disclosure ([0045]).
As the USPTO requires disclosure of relevant references, system 10
may also include a system to reference prior art documents and a method to
hyperlink to the stored references. The system may include an Information
Disclosure Statement including hyperlinks to documents identified in the
Information Disclosure Statement ([0056]).
The docketing system records the prior art reference through either a
citation system such as patent number (country, number, kind) or through a
uniform citation system as are commonly used in technical journals. The
docketing system prepares an information disclosure statement where the
citation system links to a repository on the internet that contains the
referenced document ([0058]).
System 10 inherently includes a keyboard such that the user can enter
their user ID at step 102 and fill in invention data at step 106 via user
computer 14.

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PRINCIPLES OF LAW
Claim Construction
During examination of a patent application, a pending claim is given
the broadest reasonable construction consistent with the specification and
should be read in light of the specification as it would be interpreted by one
of ordinary skill in the art. In re American Academy of Science Tech Center,
367 F.3d 1359, 1364 (Fed. Cir. 2004).
While the specification can be examined for proper context of a claim
term, limitations from the specification will not be imported into the claims.
CollegeNet, Inc. v. ApplyYourself, Inc., 418 F.3d 1225, 1231 (Fed. Cir.
2005).
A claim containing a recitation with respect to the manner in which a
claimed apparatus is intended to be employed does not differentiate the
claimed apparatus from a prior art apparatus” if the prior art apparatus
teaches all the structural limitations of the claim. Ex parte Masham, 2
USPQ2d 1647, 1648 (Bd. Pat. App. & Inter. 1987).

ANALYSIS
Server System
We are not persuaded of error on the part of the Examiner by
Appellants’ argument that Pocari does not disclose a server system that
stores both a plurality of references and a citation document as recited in
independent claims 1, 21 and 22, where the citation document is an
electronic document including citation information for one or more prior art
reference documents that is received by the server system (App. Br. 16).

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Regarding the plurality of references, claims 1, 21 and 22 recite that
the plurality of references are electronic documents, the plurality of
references comprising a first reference comprising a set of reference
information to be disclosed to a patent office. The Appellants assert that the
“plurality of references” are limited to prior art patent documents.
However, no such limitation is set forth in the claims. See CollegeNet, Inc.,
418 F.3d at 1231.
Pocari discloses that system 10 stores on-line disclosure documents
with file attachments. The prior art search function searches on-line search
engines, as well as the invention disclosure and attachments for relevant
prior art documents. Since the prior art search function searches the
invention disclosure and attachments, it follows that the invention disclosure
and attachments are being searched because they contain relevant prior art
documents and information. As Pocari discloses that relevant references
must be disclosed to the USPTO, the invention disclosure and attachments
of Pocari are a plurality of references as recited in the claims.
Pocari also discloses that system 10 receives and stores prior art
search results, for example, from on-line search engines. These results are
the recited citation document, as the prior art search results include citation
information for one or more prior art reference documents as recited in the
claims.
Accordingly, system 10 of Pocari stores both a plurality of references
and a received citation document as recited in independent claims 1, 21 and
22.

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Citation Information
We are not persuaded of error on the part of the Examiner by
Appellants’ argument that Pocari does not discloses displaying the citation
information in the citation document to a user of a client system as recited in
independent claims 1, 21 and 22 (App. Br. 16-17). As set forth above, the
prior art search results comprise a citation document. The prior art search
results include citation information for references found in the disclosure,
various on-line search engines and various search vendors. The prior art
search results are presented to the inventor in step 204 at user computer 14.

First and Second Display Sections
We are not persuaded of error on the part of the Examiner by
Appellants’ argument that Pocari discloses displaying the citation
information in the citation document to a user of a client system, in a first
display section and displaying, in a second display section, an identifier
corresponding to the first reference as recited in independent claims 1, 21,
and 22 (App. Br. 17-18). The Appellants assert that the first and second
display sections of the claims 1, 21 and 22 are non-overlapping, mutually-
exclusive display sections set forth on the same screen. However, no such
limitation is set forth in the claims. See CollegeNet, Inc., 418 F.3d at 1231.
As set forth above, the prior art search results are a citation document
that is presented to the inventor in a first display section in step 204. The
prior art search results include citation information for multiple prior art
references, any one of which is an identifier corresponding to the first
reference as recited in independent claims 1, 21, and 22. Accordingly, the
portion of the prior art search results that includes just the identifier is a
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smaller, overlapping display section that is nevertheless a second display
section under a broadest reasonable interpretation. See In re American
Academy of Science Tech Center, 367 F.3d at 1364.

Interface Element
We are not persuaded of error on the part of the Examiner by
Appellants’ argument that the mouse and keyboard of Pocari do not
correspond to an interface element as recited in independent claims 1, 21
and 22, where the specification discloses that interface elements include
graphical user interfaces, such as radio button, check boxes, and the like
(App. Br. 18-19). The Appellants assert that the recited interface element is
a graphical interface element. However, no such limitation is set forth in the
claims. See CollegeNet, Inc., 418 F.3d at 1231.
All independent claims 1, 21 and 22 recite is that the interface element
is configured to receive, from the user, input pertaining to the first reference,
the input comprising information about a relationship between at least some
of the citation information in the citation document and the first reference.
By using the word “configured,” all the reference requires is a corresponding
structure capable of performing the recited action, regardless of whether the
corresponding structure is disclosed as actually performing the recited
action. See Ex parte Masham, 2 USPQ2d at 16483. As the keyboard in
Pocari has been “provided” and is capable of receiving all types of

3 While Ex parte Masham is normally applied to apparatus claims, because
independent claims 1, 21 and 22 merely recite providing the interface
element, it is also relevant here.
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informational input, including the information set forth in the claim, the
claim recitation for interface element is met.

Other Claims
We sustain the rejection of independent claim 1 for the reasons set
forth above. As claims 2-12 and 14-19 depend from independent claim 1
and are not argued separately, we also sustain the rejections of those claims.

CONCLUSION
The Appellants have failed to show that the Examiner erred in
rejecting claims 1-12, 14-19, and 21-22.

AFFIRMED

JRG

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