Ex Parte Longo et al

Patent Trial and Appeal Board

Jul 31, 2017

14084799 (P.T.A.B. Jul. 31, 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.
14/084,799 11/20/2013 Deirdre S. Longo CA920120035USl_8150-0427 9329
73109 7590 08/02/2017
Cuenot, Forsythe & Kim, LLC
20283 State Road 7
Ste. 300
Boca Raton, EL 33498
EXAMINER
MOBIN, HASANUL
ART UNIT PAPER NUMBER
2168
NOTIFICATION DATE DELIVERY MODE
08/02/2017 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):
ibmptomail@iplawpro.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DEIRDRE S. LONGO, JENIFER SCHLOTFELDT,
MICHAEL F. PRIESTLEY, WEN KE XUE, and YI YAN ZHOU
Appeal 2017-004742
Application 14/084,799
Technology Center 2100
Before MAHSHID D. SAADAT, ALLEN R. MacDONALD, and
JOHN P. PINKERTON, Administrative Patent Judges.
SAADAT, Administrative Patent Judge.
DECISION ON APPEAL
Appellants1 appeal under 35 U.S.C. § 134(a) from the Examiner’s
Final Rejection of claims 1—20. We have jurisdiction under
35 U.S.C. § 6(b).
We affirm-in-part.
1 According to Appellants, the real party in interest is International Business
Machines Corporation (App. Br. 1).
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Application 14/084,799
STATEMENT OF THE CASE
Appellants’ invention relates generally to content management in a
data processing system, and more specifically to managing a classification
scheme and associated selection mechanism in the data processing system
(Spec. 119). Exemplary claims 1 and 3 under appeal read as follows:
1. A computer-implemented process for generating a wizard,
the computer-implemented process comprising:
receiving a scheme as an input source to form a received
scheme, wherein the received scheme is a taxonomy;
receiving a defined set of content files to form received
content files;
loading the received content files and the received scheme;
tagging the received content files using the received
scheme; and
generating, using a processor unit, a wizard using the
received scheme to create a generated wizard capable of use with
an application utilizing the scheme, wherein a change in the
received scheme is directly represented in the generated wizard.
3. The computer-implemented process of claim 1, wherein
receiving a scheme as an input source to form a received scheme
further comprises:
responsive to determination the set of schemes does not
exist, prompting a user for a definition of a scheme.
REFERENCES and REJECTIONS
Claims 1—4, 6—11, 13—18, and 20 stand rejected under
35 U.S.C. § 103(a) as unpatentable over Marleau (US 2010/0036789 Al;
published Feb. 11, 2010) (“Marleau”), and Ferrari et al.
(US 2007/0106658 Al; published May 10, 2007) (“Ferrari”).
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Application 14/084,799
Claims 5, 12, and 19 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Marleau, Ferrari, and Hennum et al.
(US 2006/0173821 Al; published Aug. 3, 2006) (“Hennum”).
PRINCIPLES OF LAW2
Regarding the prima facie case of a rejection:
As this court has repeatedly noted, “the prima facie case is
merely a procedural device that enables an appropriate shift of
the burden of production.” Hyatt v. Dudas, 492 F.3d 1365, 1369
(Fed. Cir. 2007) (citing In re Oetiker, 977 F.2d 1443, 1445
(Fed. Cir. 1992)). See also In re Piasecki, 745 F.2d 1468, 1472
(Fed. Cir. 1984). The Patent and Trademark Office (“PTO”)
satisfies its initial burden of production by “adequately
explaining] the shortcomings it perceives so that the applicant is
properly notified and able to respond.” Hyatt, 492 F.3d at 1370.
In other words, the PTO carries its procedural burden of
establishing a prima facie case when its rejection satisfies
35 U.S.C. § 132, in “notifying] the applicant... [by] stating the
reasons for [its] rejection, or objection or requirement, together
with such information and references as may be useful in judging
of the propriety of continuing the prosecution of [the]
application.” 35 U.S.C. § 132. That section “is violated when a
rejection is so uninformative that it prevents the applicant from
recognizing and seeking to counter the grounds for rejection.”
Chester v. Miller, 906 F.2d 1574, 1578 (Fed. Cir. 1990).
In re Jung, 637 F.3d 1356, 1362 (Fed. Cir. 2011).
Regarding adequate notice to an applicant:
Section 132 merely ensures that an applicant at least be informed
of the broad statutory basis for the rejection of his claims, so that
he may determine what the issues are on which he can or should
2 We disagree with Appellants’ conclusions regarding the Office’s
procedural burdens and requirements, found in Appellants’ proffered
“Principles of Law” section in Appellants’ Appeal Brief (see App. Br. 5—7),
to the extent that those conclusions are inconsistent with this section.
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Application 14/084,799
produce evidence.” Chester, 906 F.2d at 1578 (internal citation
omitted). As discussed above, all that is required of the office to
meet its prima facie burden of production is to set forth the
statutory basis of the rejection and the reference or references
relied upon in a sufficiently articulate and informative manner as
to meet the notice requirement of § 132. As the statute itself
instructs, the examiner must “notify the applicant,” “stating the
reasons for such rejection,” “together with such information and
references as may be useful in judging the propriety of
continuing prosecution of his application.” 35 U.S.C. § 132.
In re Jung, 637 F.3d at 1363.
Regarding obviousness, the Supreme Court has rejected the rigid
requirement of demonstrating a teaching, suggestion, or motivation to
combine references in order to show obviousness. See KSR Int’l Co., v.
Teleflex Co., 550 U.S. 398, 419 (2007). Instead, a rejection based on
obviousness only needs to be supported by “some articulated reasoning with
some rational underpinning” to combine known elements in the manner
required by the claim. Id. at 418.
ANALYSIS
Independent Claims 1, 8, and 15
Appellants contend the combination of cited references fails to teach
or suggest receiving a scheme as an input source to form a received scheme,
where the received scheme is a taxonomy (see App. Br. 9). More
specifically, Appellants contend Marleau fails to teach or suggest a scheme
being received because neither a facet classification, nor a classification
term, is a scheme (see App. Br. 9-11; see also Reply Br. 2—3).
This contention is not persuasive. As the Examiner correctly found,
Marleau discloses performing an analysis of information objects to
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determine content facets (each facet having a set of classification terms),
where the analysis includes content facet selection and taxonomy model
development, and where the analysis produces faceted taxonomies, facet
descriptions, and a metadata integration scheme that supports translation of
facets into a consistent metadata set, where the scheme comprises metadata
description and metadata application rules (pre-determined relationships
between facet values) (see Ans. 3^4 (citing Marleau ]Hf 49, 52, 53)). In light
of the absence of a definition of “scheme” in Appellants’ claim or
Specification (besides defining the claimed “scheme” as a “taxonomy”), the
claim as presently written does not preclude the Examiner’s interpretation of
the claimed “scheme” reading on Marleau’s classification term or facet.3
Appellants also contend the combination of cited references fails to
teach or suggest receiving a defined set of content files to form received
content files (see App. Br. 11). More specifically, Appellants contend
Marleau’s content facets are descriptions of information objects, and not
content files, and the Examiner’s interpretation of the claimed “content files”
as reading on Marleau’s content facets is not reasonable (see App. Br. 11—14;
see also Reply Br. 3—5).
We are not persuaded by Appellants’ contention. The Examiner
correctly found the broadest reasonable interpretation of the claimed
“content file” is a representation of content data (see Ans. 4—5). As the
Examiner also correctly found, Marleau discloses content facets used to
3 Even assuming arguendo that a single classification term, or a single facet,
may not be a scheme, Marleau teaches or suggests the claimed “scheme”
because Marleau discloses a metadata integration scheme that comprises
facets, where a facet comprises a set of classification terms (see Marleau
1149-53).
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describe an information object, where a facet provides a representation of a
particular perspective that is associated with an information object, and
where an information object is defined as an object important to an
organization and including all types of documents produced by software (see
id (citing Marleau H 6, 41, 52)). In light of the absence of a definition of
“content file” in Appellants’ claim or Specification, the broadest reasonable
interpretation of the claim does not preclude the Examiner’s interpretation of
the claimed “content file” reading on Marleau’s content facet.4
Appellants also contend the combination of cited references fails to
teach or suggest tagging the received content files using the received scheme
(see App. Br. 14). More specifically, Appellants contend Marleau merely
refers to tagging forms, and fails to teach or suggest tagging received content
files using a received scheme (see App. Br. 14—17; see Reply Br. 5—6).
This contention is also not persuasive. The Examiner further correctly
found the broadest reasonable interpretation of the claimed “tagging the
receiving content files using the received scheme” encompasses classifying
an information object using facets, where facets include classification terms,
as taught by Marleau (see Ans. 5—6 (citing Marleau H46, 52); see also
Marleau 149). In light of the absence of a definition of “tagging” in
Appellants’ claim or Specification, the claim as presently written does not
preclude the Examiner’s interpretation of the claimed “tagging” reading on
Marleau’s classifying an information object using facets.
4 Even assuming arguendo that a content facet may not be a content file,
Marleau’s information object teaches or suggests the claimed “content file”
because Marleau defines an information object as an object that has
importance to an organization and includes all types of documents produced
by software (see Marleau 16).
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Therefore, we sustain the rejection of claims 1, 8, and 15 under
35 U.S.C. § 103(a).
Claims 3, 10, and 17
Appellants contend the combination of cited references fails to teach
or suggest, responsive to a determination the set of schemes does not exist,
prompting a user for a definition for a scheme (see App. Br. 17). More
specifically, Appellants contend none of the cited passages of Ferrari
describe either a determination that a set of schemes does not exist, or
prompting a user for a definition of a scheme (see App. Br. 17—18; see also
Reply Br. 6—7).
We are persuaded by Appellants’ contention that the Examiner erred in
rejecting claims 3,10, and 17. We agree with Appellants that the Examiner
has not shown that Ferrari (or any other cited reference) discloses either a
determination that a set of schemes does not exist, or prompting a user for a
definition of a scheme. We therefore, do not sustain the rejection of claims
3, 10, and 17 under 35 U.S.C. § 103(a).
Remaining Claims
No separate arguments are presented for the remaining dependent
claims (see App. Br. 9). We therefore sustain their rejections for the reasons
stated with respect to independent claims 1,8, and 15.
DECISION
We affirm the Examiner’s rejection of claims 1—2, 4—9, 11—16, and
18-20 under 35 U.S.C. § 103(a).
We reverse the Examiner’s rejection of claims 3, 10, and 17 under
35 U.S.C. § 103(a).
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Application 14/084,799
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-IN-PART
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