Ex Parte Lee

Patent Trial and Appeal Board

Apr 21, 2017

13603926 (P.T.A.B. Apr. 21, 2017)

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.
13/603,926 09/05/2012 Eugene M. Lee 113708.124_CONl 8567
23400 7590 04/25/2017
POSZ LAW GROUP, PLC
12040 SOUTH LAKES DRIVE
EXAMINER
NGUYEN, CINDY
SUITE 101
RESTON, VA 20191 ART UNIT PAPER NUMBER
2161
NOTIFICATION DATE DELIVERY MODE
04/25/2017 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):
mailbox@poszlaw.com
dposz@poszlaw.com
tvarndell @ poszlaw. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte EUGENE M. LEE
Appeal 2017-000588
Application 13/603,926
Technology Center 2100
Before JOSEPH L. DIXON, JAMES R. HUGHES, and ERIC S. FRAHM,
Administrative Patent Judges.
FRAHM, Administrative Patent Judge.
DECISION ON APPEAL
Appeal 2017-000588
Application 13/603,926
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134 from a rejection of claims
32, 34—38, 40, 42^46, 48 and 50-54. We have jurisdiction under 35 U.S.C.
§ 6(b).
We reverse.
The invention relates to formulating and facilitating searches for
intellectual property information (Spec. 1 5). Claim 34, reproduced below,
is illustrative of the claimed subject matter:
34. A method for formulating an intellectual property search,
comprising:
inputting, in a computer processor device, as a search
field, an identification of at least one classification in a
classification system;
retrieving, in the computer processor device, select
intellectual property documents that have the classification, that
was input as the search field, indicated as content of a
classification field, and returning the select intellectual property
documents as source grouping search results;
providing, in the computer processor device, intellectual
property documents which were returned as the source grouping
search results, to a thesaurus module to generate a list of elements
which are significant search elements found in the source
grouping search results;
providing, in the computer processor device, the list of
elements which are the significant search elements as a field-of-
search corresponding to the at least one classification which was
input, for further use as terminology;
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Appeal 2017-000588
Application 13/603,926
wherein the at least one classification is an enumerated
class in the classification system, and the classification system is
determined by a government patent or trademark office; and
providing, in the computer processor device, an analysis
of the list of elements in the source grouping search results, the
analysis includes frequency of occurrence of elements in the
select intellectual property documents in the source grouping
search results, wherein the elements are at least one of: a word,
a phrase, a concept, a number, a picture, a feature, a
representation, a graphic, and an identifier.
REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Turtle et al. US 5,488,725 Jan. 30, 1996
Rivette et al. US 6,339,767 Jan. 15,2002
REJECTION
The Examiner made the following rejection:
Claims 32, 36—38, 40, 44^46, 48, 50, and 52—54 stand rejected under
35 U.S.C. § 103(a) as being unpatentable over Rivette and Turtle.
ANALYSIS
The Examiner finds the combination of Rivette and Turtle discloses
all the limitations of independent claim 34, including that Turtle teaches
“providing, in the computer processor device, intellectual property
documents which were returned as the source grouping search results, to a
thesaurus module to generate a list of elements which are significant search
elements found in the source grouping search results” (Non-Final Action1 2—
1 The Non-Final Action dated November 20, 2015.
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Appeal 2017-000588
Application 13/603,926
4). Appellant contends Turtle does not teach providing documents from a
set of search results to a thesaurus module to generate search elements (App.
Br. 19). We agree with Appellant.
Turtle describes executing a search query on a set of legal documents
stored in a database (see Turtle, col. 9,1. 50-col. 10,1. 23). Further, Turtle
describes:
Thesauri are employed to identify words of similar or
related meaning, as opposed to synonyms having identical
meaning. The thesauri are used to suggest broader, narrower and
related terms to the researcher for inclusion in the search query.
These relationships can be drawn from the machine readable
dictionaries (such as Black’s Law Dictionary) encoded in
databases, or from manually recorded domain knowledge.
(Turtle, col. 13,11. 38-45). Here, Turtle discloses using thesauri, such as a
legal dictionary, to suggest an expanded set of search terms based on a
search query. In contrast, claim 34 recites retrieving a set of documents
based on an initial search, and using the retrieved documents as input to a
thesaurus module to generate search elements. The Examiner has not shown
Turtle teaches generating search elements from an initial search result set of
documents.
Accordingly, on the record before us, we find the Examiner erred in
rejecting independent claim 34, independent claims 35, 42, 43, 50, and 51
which recite commensurate limitations, and dependent claims 32, 36—38, 40,
44-46, 48, and 52—54 for similar reasons.
CONCLUSION
The Examiner erred in rejecting claims 32, 34—38, 40, 42-46, 48 and
50-54 under 35 U.S.C. § 103(a).
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Appeal 2017-000588
Application 13/603,926
DECISION
For the above reasons, the Examiner’s rejection of claims 32, 34—38,
40, 42-46, 48 and 50—54 is reversed.
REVERSED
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