Ex Parte Milton et al

Patent Trial and Appeal Board

Oct 19, 2016

13652994 (P.T.A.B. Oct. 19, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/652,994 10/16/2012
59582 7590 10/20/2016
DICKINSON WRIGHT PLLC
2600 WEST BIG BEA VER ROAD
SUITE 300
TROY, MI 48084-3312
FIRST NAMED INVENTOR
Harold W. Milton JR.
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
35322-22 6656
EXAMINER
TAN,ALVINH
ART UNIT PAPER NUMBER
2172
MAILDATE DELIVERY MODE
10/20/2016 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte HAROLD W. MILTON, Jr. and JACOB ALLEN
Appeal2015-007554
Application 13/652,994
Technology Center 2100
Before ST. JOHN COURTENAY III, CAROLYN D. THOMAS, and
JEFFREYS. SMITH, Administrative Patent Judges.
THOMAS, Administrative Patent Judge.
DECISION ON APPEAL
Appellants seek our review under 35 U.S.C. § 134(a) of the
Examiner's Final Rejection of claims 1-9, all the pending claims in the
present application. See App. Br. 4. We have jurisdiction over the appeal
under 35 U.S.C. § 6(b).
We AFFIRM.
The present invention relates generally to a method for drafting a
claim set in a patent application. See Abstract.
Appeal2015-007554
Application 13/652,994
Claim 1 is illustrative:
1. A method of drafting a claim set in preparing a patent
application using a computer program by a user comprising the steps
of:
running a software macro in a word processing program
to present a Tool bar having an Add Claim option,
presenting in the word processing program a format for a
picture claim including a preamble and a "characterized by" clause,
selecting by the user in a first sequential order a plurality
of first claim recitations as prior art limitations to describe and
identify the recitations as prior art,
inserting the first claim recitations as prior art limitations
into the picture claim between the preamble and the "characterized
by" clause in the first sequential order to designate and identify the
first claim recitations as prior art limitations for describing the prior
art,
selecting by the user in a second sequential order a
plurality of second claim recitations as novel limitations being absent
in the prior art,
inserting the second claim recitations as novel limitations
into the picture claim after the characterized by clause in the second
sequential order to designate the second claim recitations as being
absent in the prior art,
selecting the Add Claim option in the Tool bar,
automatically presenting by and in the word processing
program a first independent claim reciting the preamble and
characterized by clause of the picture claim in response to selecting
the Add Claim option in the Tool bar,
automatically presenting by and in the word processing
program a first set of sequentially numbered dependent claims after
the first independent claim with each claim of the first set of claims
reciting a different one of the second claim recitations from the
picture claim as novel limitations being absent in the prior art and
following the second sequential order of the second claim recitations,
automatically presenting by and in the word processing
program a second set of sequentially numbered dependent claims after
the first set of dependent claims with each claim of the second set of
claims reciting a different one of the first claim recitations from the
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Application 13/652,994
picture claim as prior art limitations and following the first sequential
order of the first claim recitations,
selecting at least one claim recitation from the first set of
dependent claims as a user defined novel limitation of the invention,
and
placing the user defined novel limitation in the first
independent claim after the "characterized by" clause.
Appellants appeal the following rejections:
RI. Claims 1-3 and 5-9 are rejected under 35 U.S.C. § 102(b) as
being anticipated by Petruzzi (US 6,049,811, Apr. 11, 2000) or, in the
alternative, under 35 U.S.C. § 103(a) as being unpatentable over Petruzzi
and Sheldon, How to Write a Patent Application (2005) (Final Act. 4--23).
R2. Claim 4 is rejected under 35 U.S.C. § 103(a) as being
unpatentable over Petruzzi, Sheldon, and Eckert (Dialog Boxes, Feb. 2007)
(id. at 23-30).
ANALYSIS
Claims 1-9
Issue: Did the Examiner err in finding that Petruzzi alone anticipates
representative claim 1, or alternatively, the combination of Petruzzi and
Sheldon collectively teaches or suggests the contested limitations as set forth
in representative claim 1, under §103(a)?
Appellants contend "[t]he combination of Petruzzi and Sheldon would
only result in a computer program that, in response to selecting an add claim
icon, allows a user to manually draft a claim. . .. does not result in .. .
automatically separating and reversing ... existing subparagraphs .. .
representing a first set of dependent claims (App. Br. 5).
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Application 13/652,994
We find that Appellants' aforementioned contentions are merely
conclusory statements. Unfortunately, mere attorney arguments and
conclusory statements that are unsupported by factual evidence are entitled
to little probative value. In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir.
1997). Here, Appellants have not presented any substantive arguments with
respect to the claims. See In re Lovin, 652 F.3d 1349, 1357 (Fed. Cir. 2011)
("[T]he Board reasonably interpreted Rule 41.37 to require more substantive
arguments in an appeal brief than a mere recitation of the claim elements and
a naked assertion that the corresponding elements were not found in the
prior art."). Although the Examiner has cited numerous portions of both
Petruzzi and Sheldon to support the prima facie case of obviousness (see
Final Act. 4--8), Appellants fail to provide any rebuttal, i.e., factual evidence,
specifically directed to such findings. Appellants also fail to rebut the
Examiner's specific findings regarding Eckert.
For example, the Examiner finds "Petruzzi discloses that a user
creates a list of features such that features from the list may be selected for
insertion into a claim when drafting the claim ... Further, Sheldon provides
... the term 'characterized by' as a transitional clause in a claim" (see Ans.
5) (citations omitted). Appellants fail to provide any meaningful analysis
that explains why the Examiner erred and instead presents a mere recitation
of the claim elements and a naked assertion that the corresponding elements
were not found in the prior art (see App. Br. 5-10).
For at least these reasons, Appellants have not persuaded us the
Examiner erred in finding that Petruzzi (considered alone) discloses and thus
anticipates the contested limitations recited in representative independent
claim 1. Independent claims 5, 9, and dependent claims 2, 3, and 6-8 are
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Application 13/652,994
not separately argued with specificity, and therefore fall with claim 1. See 37
C.F.R. § 41.37 (c)(l)(iv). Accordingly, on this record, Appellants have not
shown the Examiner erred in rejecting claims 1-3 and 5-9 as being
anticipated under 35 U.S.C. § 102(b).
Regarding the rejection under§ 103, "anticipation is the epitome of
obviousness." Jones v. Hardy, 727 F.2d 1524, 1529 (Fed. Cir. 1984). See
also In re Fracalossi, 681 F.2d 792, 794 (CCPA 1982); In re Pearson, 494
F.2d 1399 (CCPA 1974). Furthermore, we note that a claimed invention is
not patentable if it merely automates a prior art process. Broadly providing
an automatic way to replace a manual activity accomplishing the same result
is not sufficient to distinguish an automated process over the prior art. In re
Venner, 262 F.2d 91, 95 (CCPA 1958). An improved product in the art is
obvious if that "product [is] not [one] of innovation but of ordinary skill and
common sense." KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007).
Nor do Appellants (App. Br. 7-8) advance a separate substantive
argument regarding independent claim 4, which the Examiner rejected only
under§ 103(a). (See Final Act. 23-30). See In re Lovin, 652 F.3d at 1357.
Therefore, on this record, Appellants have not shown the Examiner erred in
rejecting claims 1-9 under 35 U.S.C. § 103(a).
DECISION
We affirm the Examiner's rejection of claims 1-3 and 5-9 under
35 U.S.C. § 102(b).
We affirm the Examiner's rejection of claims 1-9 under§ 103(a).
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Appeal2015-007554
Application 13/652,994
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). See 37
C.F.R. § 41.50(±).
AFFIRMED
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