Ex Parte Lundberg

Patent Trial and Appeal Board

Oct 30, 2017

13253811 (P.T.A.B. Oct. 30, 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.
13/253,811 10/05/2011 Steven W. Lundberg 3431.004US1 5265
21186 7590 11/01/2017
SCHWEGMAN LUNDBERG & WOESSNER, P.A.
P.O. BOX 2938
MINNEAPOLIS, MN 55402
EXAMINER
ALLEN, BRITTANY N
ART UNIT PAPER NUMBER
2169
NOTIFICATION DATE DELIVERY MODE
11/01/2017 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):
uspto@slwip.com
SLW @blackhillsip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte STEVEN W. LUNDBERG
Appeal 2017-011247
Application 13/253,811
Technology Center 2100
Before JOHN A. JEFFERY, BRUCE R. WINSOR, and
JUSTIN BUSCH, Administrative Patent Judges.
WINSOR, Administrative Patent Judge.
DECISION ON APPEAL
Appellant1 appeals under 35 U.S.C. § 134(a) from the final rejection
of claims 1—4 and 6—19 which constitute all the claims pending in this
application. We have jurisdiction under 35 U.S.C. § 6(b). Claim 5 is
cancelled. Final Act. 2.
We affirm and enter a new ground of rejection within the provisions
of 37 C.F.R. §41.50(b) (2015).
1 The real party in interest identified by Appellant is Black Hills IP
Holdings, LLC. App. Br. 2.
Appeal 2017-011247
Application 13/253,811
STATEMENT OF THE CASE
The Invention
Appellant’s disclosed invention “relates to document management,
[and] more particularly to . . . information disclosure statement [(IDS)]
management and prior art cross-citation control.” Spec. 12. Claim 1, which
is illustrative, reads as follows:
1. A method comprising:
maintaining a patent case database, wherein the database
includes data about each patent case in the patent case database,
receiving a reference document into the database;
associating the reference document with a first patent
case in the patent case database;
identifying a set of target patent cases including at least
one patent case related to the first patent case as potential
propagation target cases for cross-citation of the reference
document;
displaying the identity of the set of target patent cases
and a citation pathway between a respective target case of the
set of target patent cases and the reference document, the
citation pathway providing an identification of patent cases
between an original patent case in which the reference
document was originally cited and the respective of the set of
target cases;
associating the reference document with one or more of
the set of target patent cases based on:
comparing a priority date of the reference
document and a priority date of a target patent case of the
set of target patent cases; and
a ground of rejection on which the reference
document was cited by a patenting authority.
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The Prior Art
The Examiner relies on the following prior art in rejecting the claims:
Lundberg US 2005/0246194 A1 Nov. 3, 2005
(“Lundberg ’194”)
Lundberg et al. US 2006/0190449 A1 Aug. 24, 2006
(“Lundberg ’449”)
Rivette et al. US 2007/0208669 Al Sept. 6, 2007
(“Rivette”)
Casey US 2009/0282054 Al Nov. 12, 2009
The Rejections
Claims 1—4 and 6—19 stand rejected under 35 U.S.C. § 1012 as being
directed to non-statutory subject matter. See Ans. 2—7.
Claims 1—4 and 6—19 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Casey, Lundberg ’194, Lundberg ’449, and Rivette.
See Linal Act. 2—11.
The Record
Rather than repeat the arguments here, we refer to (1) the Briefs
(“App. Br.” filed Mar. 13, 2017; “Reply Br.” filed Aug. 30, 2017) and the
Specification (“Spec.” filed Oct. 5, 2011) for the positions of Appellant; and
(2) the Linal Office Action (“Linal Act.” mailed Apr. 11, 2016) and
Examiner’s Answer (“Ans.” mailed June 30, 2017) for the reasoning,
findings, and conclusions of the Examiner. Only those arguments actually
2 All rejections are under the provisions of 35 U.S.C. in effect prior to the
effective date of the Leahy-Smith America Invents Act of 2011.
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made by Appellant have been considered in this Decision. Arguments that
Appellant did not make in the Briefs have not been considered and are
deemed to be waived. See 37 C.F.R. § 41.37(c)(l)(iv).
Related Appeals
Appellant did not identify any related appeals. See App. Br. 3.
However, there are at least thirty-one (31) related appeals, which are:
Anneal No. Annlication No. Decided/Status
2009-005709 10/128,141 Decision mailed Mar. 23, 2010
2009-006404 10/874,486 Decision mailed Aug. 2, 2010
2011-009966 11/061,383 Decision mailed Jan. 31, 2014
2012-004166 11/061,312 Decision mailed Nov. 4, 2014
2015-000319 13/309,080 Decision mailed May 27, 2016
2015-000321 13/309,127 Decision mailed July 26, 2017
2015-003180 13/309,039 Decision mailed Sept. 23, 2016
2015-007422 13/309,146 Decision mailed June 1, 2016
2016-000912 13/309,060 Decision mailed Aug. 25, 2017
2016-001687 11/888,632 Decision mailed Jan. 19, 2017
2016-002121 13/309,200 Decision mailed Aug. 28, 2017
2016-002680 13/310,279 Decision mailed Aug. 30, 2017
2016-002792 12/605,030 Decision mailed Sept. 1, 2017
2016-006797 13/310,368 Decision mailed Aug. 30, 2017
2016-007186 13/573,803 Decision mailed July 28, 2017
2016-007415 13/464,598 Decision mailed July 31, 2017
2016-007623 13/408,877 Decision mailed Sept. 6, 2017
2016-007787 13/310,322 Decision mailed Sept. 20, 2017
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Application 13/253,811
2016-008030 13/253,936 Decision mailed Aug. 3, 2017
2017-000280 13/408,917 Decision mailed Sept. 12, 2017
2017-000386 11/098,761 Pending
2017-002337 14/010,376 Decision mailed Sept. 8, 2017
2017-003702 14/483,903 Decision mailed Sept. 25, 2017
2017-003815 14/094,542 Decision mailed Sept. 18, 2017
2017-004158 14/010,391 Pending
2017-004159 14/010,380 Decision mailed Sept. 27, 2017
2017-004188 14/010,400 Pending
2017-006390 13/409,189 Pending
2017-006642 13/310,452 Decision mailed Sept. 27, 2017
2017-011549 14/608,520 Pending
2017-011552 14/628,941 Pending
ISSUES
The issues presented by Appellant’s arguments are as follows:
Does the Examiner err in finding claims 1—4 and 6—19 are directed to
non-statutory subject matter under 35 U.S.C. § 101?
Does the Examiner err in finding Rivette, when combined with Casey,
Lundberg ’194, and Lundberg ’449, teaches or suggests
displaying the identity of the set of target patent cases and a
citation pathway between a respective target case of the set of
target patent cases and the reference document, the citation
pathway providing an identification of patent cases between an
original patent case in which the reference document was
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originally cited and the respective [target case3] of the set of
target cases
(the “citation pathway limitation”), as recited in claim 1?
Does the Examiner err in finding Lundberg ’449, when combined
with Casey, Lundberg ’ 194, and Rivette, teaches or suggests “associating the
reference document with one or more [target cases] of the set of target patent
cases based on ... a ground of rejection on which the reference document
was cited by a patenting authority” (the “association based on a ground of
rejection limitation”), as recited in claim 1?
ANALYSIS
Rejection under 35 U.S.C. § 101
In Mayo Collaborative Services v. Prometheus Laboratories, Inc., 566
U.S. 66, 71—73 (2012), the Supreme Court established an analytical
framework under § 101 to distinguish patents that claim patent-ineligible
laws of nature, natural phenomena, and abstract ideas—or add too little to
such underlying ineligible subject matter—from those that claim patent-
eligible applications of those concepts. To determine whether claims are
patent eligible under § 101, we apply the Supreme Court’s two-step test as
3 Although, as discussed infra regarding a new ground of rejection, we
conclude the citation pathway limitation is indefinite, for purposes of
considering Appellant’s argument, and in the interest of compact
prosecution, we presume the intended meaning is substantially as set forth
here.
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further articulated in Alice Corp. Pty. Ltd. v. CLS Bank International, 134 S.
Ct. 2347 (2014).
Alice Step One
According to Alice step one, “[w]e must first determine whether the
claims at issue are directed to a patent-ineligible concept,” such as an
abstract idea. Alice, 134 S. Ct. at 2355 (emphasis added). “[T]he ‘directed
to’ inquiry applies a stage-one filter to claims, considered in light of the
[Specification, based on whether ‘their character as a whole is directed to
excluded subject matter.’” Enfish, LLC v. Microsoft Corp., 822 F.3d 1327,
1335 (Fed. Cir. 2016) (quoting Internet Patents Corp. v. Active Network,
Inc., 790 F.3d 1343, 1346 (Fed. Cir. 2015)).
The Background section of the Specification discusses the problem to
be solved by the invention—that “[ujnder the laws and regulations of
various patenting authorities, patent applicants are required to disclose
various documents known to the applicant to be relevant to the patentability
of the patent application,” which may be time consuming for various
reasons. Spec. 13. According to the Specification, the inventor solved the
problem by providing embodiments directed to collecting patent cases and
reference documents, identifying patent cases related to a first patent case
associated with a reference document, and displaying the patent cases related
to the first patent case for user input. Id. H 16, 20—21, 26. By allowing a
user to select among the displayed patent cases related to the first patent
case, cross-citation of reference documents between cases is regulated and
controlled. Id. 119.
In light of the Specification discussed above, we agree with the
Examiner that claim 1 is directed to the abstract idea of collecting,
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analyzing, and displaying data, like the claim at issue in Electric Power
Group, LLC v. Alstom S.A., 830 F.3d 1350 (Fed. Cir. 2016). See Ans. 3.
Here, claim 1 requires, in essence, maintaining a database of patent cases
and reference documents, associating a reference document with a first
patent case, identifying target patent cases, and displaying the target patent
cases and a citation pathway. Appellant’s contention that the claims are
directed toward “patent case cross-citation management” (see Reply Br. 2—
6) involves the type of collecting, analyzing, and displaying data that
Electric Power found directed to an abstract idea. Thus, we find “[t]he focus
of the asserted claims ... is on collecting information, analyzing it, and
displaying [i.e., generating a report that presents] certain results of the
collection and analysis.” Electric Power, 830 F.3d at 1353.
Further, Appellant’s argument that the claims have an inventive
means for achieving a result because the claims describe the citation
pathway limitation does not demonstrate Examiner error. Reply Br. 3.
Similar to the claims in Electric Power,
the claims do not go beyond requiring the collection, analysis,
and display of available information in a particular field, stating
those functions in general terms, without limiting them to
technical means for performing the functions that are arguably
an advance over conventional computer and network technology.
The claims, defining a desirable information-based result and not
limited to inventive means of achieving the result, fail under
§101.
Electric Power, 830 F.3d at 1351. “Accordingly, we have treated collecting
information, including when limited to particular content (which does not
change its character as information), as within the realm of abstract ideas.”
Id. at 1353. Therefore, we find that the Examiner did not err in determining
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that the claims are directed to the abstract idea of receiving, analyzing, and
displaying information.
Alice Step Two
Turning to the second step of the Alice analysis, because we find that
claim 1 is directed to an abstract idea, we “consider the elements of each
claim both individually and ‘as an ordered combination’ to determine
whether the additional elements ‘transform the nature of the claim’ into a
patent-eligible application.” Alice, 134 S. Ct. at 2355 (quoting Mayo,
566 U.S. at 78). The Supreme Court describes the second step of this
analysis as “a search for an inventive concept—i.e., an element or
combination of elements that is sufficient to ensure that the patent in practice
amounts to significantly more than a patent upon the [ineligible concept]
itself.” Id. (brackets in original) (internal quotations omitted).
Appellant argues the Examiner fails to provide a discussion of the
claims as an ordered combination, as Bascom Global Internet Services, Inc.
v. AT&T Mobility LLC, 827 F.3d 1341, 1348 (Fed. Cir. 2016), suggests is
necessary for a proper analysis under step two of the Alice/Mayo test. Reply
Br. 2—3. We disagree. The Examiner explicitly states “the additional
elements, when considered both individually and as an ordered combination
do not amount to significantly more than the abstract idea.” Ans. 4
(emphases added). The Examiner explains as follows:
Looking at the limitations as an ordered combination adds
nothing that is not already present when looking at the elements
taken individually. There is no indication that the combination
of elements improves the functioning of a computer or improves
any other technology. Their collective functions merely provide
conventional computer implementation.
Id.
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Appellant further argues Bascom holds than an inventive concept is
found in an arrangement of elements known in the art, in general, and not
just for arrangements involving a filter action. Reply Br. 3. We disagree.
First, Bascom did not hold that merely having an arrangement of elements
known in the art was sufficient to satisfy the second step of Alice. Instead,
Bascom held that “an inventive concept can be found in the non-
conventional and non-generic arrangement of known, conventional pieces.”
Bascom, 827 F.3d at 1349-50. Second, the record here shows that the
claimed arrangement is entirely conventional. Appellant does not provide
any persuasive explanation of how the recited ordered combination of these
elements amounts to an inventive concept that converts an abstract idea into
patent-eligible subject matter.
Thus, “the claims at issue amount to ‘nothing significantly more’ than
an instruction to apply the abstract idea . . . using some unspecified, generic
computer.” Alice, 134 S. Ct. at 2360 (citing Mayo, 566 U.S. at 71).
Accordingly, we find the Examiner did not err in finding the additional
elements do not transform the nature of the claim into a patent-eligible
application of the abstract idea.
Summary
We conclude Appellant has not demonstrated that the Examiner erred
in rejecting claim 1 under § 101. Accordingly, we sustain the rejection of
claim 1 and claims 2—\ and 6—19, which are not argued separately with
particularity. See Reply Br. 7.
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Rejection under 35 U.S.C. § 103
Citation Pathway Limitation
Appellant contends as follows:
[T]he citation pathway [limitation] recites a definite start, the
reference document, and a definite end, the respective target case
of the set of target patent cases. . . . The citation pathway
[,limitation] is constructing a path between the target case and the
reference document through identification of patent cases.
Appellant’s citation pathway . . . identifies the specific patent
cases that connect the reference document and target case.
Appellant’s citation pathway provides a relationship chain
informing the user of the path between the target case and the
original patent case that is the source of the reference document.
... If any of the patent cases in the pathway are not cited by the
original patent case, then it is not a citation pathway.
App. Br. 11 (emphases in original and added in brackets); see also Reply
Br. 9. In support of these contentions, Appellant provides an example,
without directing attention to a section of Appellant’s Specification,
involving a citation pathway including a definite start labeled “Reference
Document,” a definite end labeled “Target Case,” and a finite number (three)
of patents between the definite start and the definite end. App. Br. 11.
We disagree because Appellant’s argument is not consistent with the
broadest reasonable interpretation of claim 1. Claim construction is an issue
of law that is reviewable de novo. See Cordis Corp. v. Boston Scientific
Corp., 561 F.3d 1319, 1331 (Fed. Cir. 2009). Arguments must be
commensurate in scope with the actual claim language. In re Self, 671 F.2d
1344, 1348 (CCPA 1982).
The citation pathway limitation of claim 1 recites:
displaying the identity of the set of target patent cases and a
citation pathway between a respective target case of the set of
target patent cases and the reference document, the citation
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pathway providing an identification of patent cases between an
original patent case in which the reference document was
originally cited and the respective of the set of target cases.
App. Br. 15 (Claims App’x). Contrary to Appellant’s contentions
(App. Br. 11; Reply Br. 9), the Examiner finds, and we agree, that (1)
“[njowhere does the claim language require a ‘definite start’ and a ‘definite
end” (Ans. 10); (2) “[tjhere is no indication in the claim language that any
patent case has any relevance over another” (id.); (3) and “[t]he claims . . .
do not specify that the patent cases must be cited by the original patent case”
(id. at 11).
Appellant further contends Rivette’s branching tree, as illustrated in
Figure 65 of Rivette, does not teach the citation pathway limitation. App.
Br. 9-10. In particular, Appellant argues that although patent 1 cites patents
2—\ and patents 2-4 cite patents 5—12, “PATENTS 5—12 have no direct
relation to PATENT 1 and thus none are a reference document that was
originally cited.'1'’ Id.
Appellant’s contention regarding Rivette’s shortcomings pertaining to
the citation pathway limitation do not demonstrate error. Notably, the
Examiner’s rejection is not based on Rivette standing alone, but rather the
Examiner relies on the collective teachings of Casey and Rivette to teach or
suggest the citation pathway limitation. See Final Act. 3—6 (citing (1) Casey
1128—29, 33—34, Figs. 1—2, 5; and (2) Rivette 1946, Fig. 65). One cannot
show nonobviousness by attacking references individually where the
rejections are based on combinations of references. See In re Merck & Co.,
Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986); see also In re Keller, 642 F.2d
413,426 (CCPA1981).
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We agree with the Examiner’s findings in the Final Office Action and
adopt them as our own.
Casey is generally directed “to tracking] information about patent
cases and the references that have been and will be cited therein.” Casey,
Abstract. Casey’s patent application is associated with a reference either
submitted by a user or considered by an examiner. Id. 28—29. Thus, in
that sense, then, Casey at least suggests identifying a patent application (the
claimed “original patent case”) in which a reference (the claimed “reference
document”) was originally cited.
The Examiner finds Rivette teaches displaying a citation pathway
between cases. Final Act. 3—6 (citing Rivette 1946, Fig. 65). Figure 65 of
Rivette is illustrative and is reproduced below:
6502 ^
PATENT 5
PffiM 2 H PATENT 6
V'-'S'I PATENT 7
\j PAToj S j
I PATENT I
PMM PATENT 9
FIG.65
Rivette’s Figure 65 illustrates a two-level “patent citation report.”
Rivette 1946.
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As illustrated in Figure 65 of Rivette, “patents 2-A are cited in source patent
1[,] . . . patents 5—8 are cited in patent 2, patent 9 is cited in patent 3, and
patents 10-12 are cited in patent 4.” Id. 1946.
In other words, the person of ordinary skill in the art would have
learned from Casey to identify a patent application in which a reference was
originally cited, and would have learned from Rivette to present citation
relationships among patents in the form of a pathway.
Thus, the Examiner finds, and we agree, the combination of Rivette
and Casey teaches or suggests replacing Rivette’s patent 1 with Casey’s
patent application in which a reference was originally cited. Thus, the
combination of Rivette and Casey teaches or suggests a two-level patent
citation report (the claimed “citation pathway”) providing an identification
of patents 2-4 (the claimed “patent cases”) between patent 1 (Casey’s patent
application associated with a reference as discussed above; the claimed
“original patent case in which the reference document was originally cited”)
and patents 5—12 (the claimed “respective [target case] of the set of target
cases”). See Final Act. 3—6.4
4 We are mindful that the Examiner gives an alternative mapping in the
Answer. See Ans. 9. We do not rely on that alternative mapping in the
Answer, but rather the contested aspects of the final rejection under
35 U.S.C. § 103(a). The fact that we rely on fewer than all of the
Examiner’s explanations does not, in itself, warrant a new ground of
rejection. Cf. In re Bush, 296 F.2d 491, 496 (CCPA 1961). “The Board of
Patent Appeals and Interferences shall, on written appeal of an applicant,
review adverse decisions of examiners upon applications for patents.”
35 U.S.C. § 6. The appeal brief shall contain “arguments of appellant with
respect to each ground of rejection, and the basis therefor, with citations of
the statutes, regulations, authorities, and parts of the Record relied on.”
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Therefore, Appellant’s arguments regarding Rivette’s individual
shortcomings in this regard do not show nonobviousness where, as here, the
rejection is based on the cited references’ collective teachings.
Association Based on a Ground of Rejection Limitation
The Examiner relies on Lundberg ’449, when combined with Casey,
Lundberg ’194, and Rivette, to teach or suggest “associating the reference
document with one or more of the set of target patent cases based on: ... a
ground of rejection on which the reference document was cited by a
patenting authority,” as recited in claim 1. Final Act. 5 (citing Lundberg
’449 1178-80, 84—85).
Appellant asserts “[associating the reference documents based on the
ground of rejection, [sic] provides a pertinent association and information
that shows significance to the user.” App. Br. 13 (emphasis added).
Appellant argues “nowhere in Lundberg [’]449 are the documents associated
with the client matter based on the grounds of rejection. The documents
listed in the IDS are merely listed because they may have been cited in a
rejection, not based on the grounds of rejection.” Id. at 12 (emphasis in
original and added).
We are not persuaded of error. At the outset, we note Appellant does
not direct our attention to, nor do we find, any passage of the Specification
or other evidence that would lead us to a construction of “based on” other
37 C.F.R. § 41.37(c)(l)(iv) (emphasis added). “If an appellant fails to
present arguments on ... a particular rejection — the Board will not, as a
general matter, unilaterally review those uncontested aspects of the
rejection.” See Ex parte Frye, 94 USPQ2d 1072, 1075-76 (BPAI 2010)
(precedential) (emphasis added).
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than the plain meaning of “based”—“to find a base or basis for,” Merriam-
Webster’s Collegiate Dictionary 94 (vi. def. 2) (10th ed. 1999); “base,”
in turn, means “the fundamental part of something,” id. (n. def. 3a), while
“basis” means “something on which something else is established” id. at 95
(n. def. 3 a).
Lundberg ’449’s management of IDS citations includes automatically
relating an IDS with related cases and files. Lundberg ’449 1 83. Lundberg
’449 teaches or suggests that art cited during prosecution may originate from
the United States Patent and Trademark Office (USPTO) using applicable
legal statues, such as 35 U.S.C. §§ 102, 103(a). Id. 1 84. In other words,
Lundberg ’449 teaches that the art cited may be cited in a ground of
rejection (i.e., pursuant to 35 U.S.C. §§ 102, 103(a)). Lundberg ’449’s
management system maintains the cited art that originated from the USPTO
in an “information disclosure document” that is copied from a first client
matter to a second client matter {id. 1 85) and identifies the art as related to a
rejection {id. 1 84). Thus, Lundberg ’449 teaches or suggests associating the
cited art (the claimed “reference document”) with a first or second client
matter (the claimed “one or more of the set of target patent cases”) based on
a ground of rejection on which the cited art was cited by the USPTO (the
claimed “patenting authority”) because Lundberg ’449’s information
document is established, at least in part, from grounds of rejection cited by
the USPTO. We note that nothing in the claim precludes associating
additional documents, not cited in a ground of rejection, with the target
cases.
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Summary
Appellant has not established that the Examiner erred in rejecting
claim 1 under § 103. Accordingly, we sustain the rejection of claim 1 and
claims 2—4 and 6—19, which are not argued separately with particularity. See
App. Br. 13.
New Ground of Rejection under 35U.S.C.§ 112, 2nd paragraph,
within 37 C.F.R. § 41.50(b)
Claims 1—4 and 6—19 are rejected on a new ground of rejection under
35U.S.C. § 112, second paragraph, as indefinite for failing to particularly
point out and distinctly claim the subject matter which the Appellant regards
as the invention.
During prosecution, “[a] claim is indefinite when it contains words or
phrases whose meaning is unclear.” Manual of Patent Examining Procedure
(MPEP) § 2173.05(e), 9th ed., Rev. 7, Nov. 2015. Language in a claim is
unclear if it is “ambiguous, vague, incoherent, opaque, or otherwise unclear
in describing and defining the claimed invention . . .,” In re Packard, 751
F.3d 1307, 1311 (Fed. Cir. 2014), or if it is “is amenable to two or more
plausible claim constructions . . . ,” Ex parte Miyazaki, 89 USPQ2d 1207,
1211 (BPAI 2008) (precedential).
The USPTO is justified in using a lower threshold showing of
ambiguity to support a finding of indefmiteness under 35 U.S.C.
§ 112, second paragraph, [than that used in litigation] because the
applicant has an opportunity and a duty to amend the claims
during prosecution to more clearly and precisely define the metes
and bounds of the claimed invention and to more clearly and
precisely put the public on notice of the scope of the patent.
Id. at 1211-12.
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Claim 1
Claim 1 recites a citation pathway providing an identification of
patent cases between an original patent case in which a reference document
was originally cited and “the respective of the set of target cases.” The
phrase “the respective of the set of target cases” imparts ambiguity to the
claim. More specifically, it is unclear as to what the phrase “the respective
of’ refers. Therefore, the phrase “the respective of the set of target cases”
renders claim 1 indefinite.
Claims 14—16
Independent claims 14—16 recite the terms and phrases discussed
above regarding claim 1. We conclude these terms and phrases render
claims 14—16 indefinite for the same reasons they render claim 1 indefinite.
Dependent Claims
We have entered new grounds of rejection for independent claims 1
and 14—16 for indefmiteness. Claims 2-4, 6—13, and 17 depend, directly or
indirectly, from claim 1 and are indefinite at least because they depend from,
and incorporate, an indefinite claim. Similarly, (1) claim 18 depends from
claim 15; and (2) claim 19 depends from claim 16, and are indefinite at least
because they depend from, and incorporate, an indefinite claim. We note
that we have not reviewed claims 1—4 and 6—19 to ascertain if there are
additional words or phrases whose meaning is unclear.
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DECISION* 1 * 3 * 5
The Examiner’s decision to reject claims 1—4 and 6—19 under
35 U.S.C. §§ 101, 103(a) is affirmed.
We enter a new ground of rejection for claims 1—4 and 6—19 under
§ 112, second paragraph pursuant to 37 C.F.R. § 41.50(b).
Regarding the affirmed rejection(s), 37 C.F.R. § 41.52(a)(1) provides
“Appellant may file a single request for rehearing within two months from
the date of the original decision of the Board.”
In addition to affirming the Examiner’s rejection(s) of one or more
claims, this decision contains new grounds of rejection pursuant to 37
C.F.R. § 41.50(b). Section 41.50(b) provides “[a] new ground of rejection
pursuant to this paragraph shall not be considered final for judicial review.”
Section 41.50(b) also provides that Appellant, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
5 In the event of further prosecution, the Examiner may wish to consider
whether independent claim 15 meets the requirements of 35 U.S.C. § 112,
first and sixth paragraphs. In particular, the Examiner may wish to consider:
(1) whether or not the phrase “at least one module . . . to” (claim 15) is a
generic placeholder for “means for” and invokes 35 U.S.C. § 112, sixth
paragraph, see MPEP § 2181(1); (2) if the Examiner determines the at least
one module invokes 35 U.S.C. § 112, sixth paragraph, whether “one or more
computer processors” (claim 15) is a sufficient structural modifier, id.', and
(3) if the Examiner determines the “one or more computer processor” (claim
15) is not a sufficient structural modifier, whether claim 15 is a single means
claim and subject to an enablement rejection under 35 U.S.C. § 112, first
paragraph. See MPEP § 2164.08(a). Although the Board is authorized to
reject claims under 37 C.F.R. § 41.50(b), no inference should be drawn
when the Board elects not to do so. See MPEP § 1213.02.
19
Appeal 2017-011247
Application 13/253,811
the following two options with respect to the new grounds 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 prosecution 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.
Should Appellant elect to prosecute further before the Examiner
pursuant to 37 C.F.R. § 41.50(b)(1), in order to preserve the right to
seek review under 35 U.S.C. §§ 141 or 145 with respect to the affirmed
rejection, the effective date of the affirmance is deferred until
conclusion of the prosecution before the Examiner unless, as a mere
incident to the limited prosecution, the affirmed rejection is overcome.
If Appellant elects prosecution before the Examiner and this does not
result in allowance of the application, abandonment or a second appeal, this
case should be returned to the Patent Trial and Appeal Board for final
action on the affirmed rejection, including any timely request for rehearing
thereof.
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). See 37 C.F.R.
§§ 41.50(f), 41.52(b).
AFFIRMED
37 C.F.R, $ 41.50(b)
20