Ex Parte Musgrove et al

Patent Trial and Appeal Board

Jul 15, 2016

13208322 (P.T.A.B. Jul. 15, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/208,322
98804 7590
Reed Smith LLP
P.O. Box488
Pittsburgh, PA 15230
08/11/2011
07119/2016
FIRST NAMED INVENTOR
Timothy A. Musgrove
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.
10-353-US-C 7813
EXAMINER
ABRAHAM, AHMED M
ART UNIT PAPER NUMBER
2154
NOTIFICATION DATE DELIVERY MODE
07/19/2016 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):
ptoipinbox@reedsmith.com
mskaufman@reedsmith.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte TIMOTHY A. MUSGROVE and ROBIN HIROKO WALSH
Appeal2015-002100
Application 13/208,322
Technology Center 2100
Before ALLEN R. MacDONALD, ADAM J. PYONIN, and
NABEEL U. KHAN, Administrative Patent Judges.
MacDONALD, Administrative Patent Judge.
DECISION ON APPEAL
Appeal2015-002100
Application 13/208,322
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from a final rejection of
claims 1-20. We have jurisdiction under 35 U.S.C. § 6(b ).
Exemplary Claims
Exemplary claims 1 and 13 under appeal read as follows (emphasis
and formatting added):
1. A system for organizing information records in an ontology based
on a query, the system comprising:
[(A)] one or more processors; and
[(B)] one or more memories operatively coupled to at least one
of the one or more processors and having instructions stored thereon
that, when executed by at least one of the one or more processors,
cause at least one of the one or more processors to:
[(i)] receive a query, wherein the query specifies an
attribute condition;
[(ii)] search a taxonomy of information records for any
information records which satisfy the attribute condition,
[ (a)] wherein each information record in the
taxonomy is stored as a node and
[ (b)] wherein each node is also represented in an
ontology,
[(i)] the ontology being organized in
categories and subcategories which
are independent of the structure of
the taxonomy;
[(iii)] identify a plurality of result information records
which satisfy the attribute condition;
[(iv)] generate a new category in the ontology; and
[(v)] populate the new category in the ontology with a
plurality of result nodes corresponding to the plurality of result
information records.
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Application 13/208,322
13. A system for developing an ontology from a taxonomy of
information records, wherein each information record in the taxonomy
is stored as a node, the system comprising:
[(A)] one or more processors; and
[(B)] one or more memories operatively coupled to at least one
of the one or more processors and having instructions stored thereon
that, when executed by at least one of the one or more processors,
cause at least one of the one or more processors to:
[(i)] receive a categorization rule specifying an attribute
and a plurality of potential attribute values for the attribute;
[(ii)] identify one or more first information records in
the taxonomy which have an attribute value corresponding to a
first potential attribute value in the plurality of potential
attribute values;
[(iii)] identify one or more second information records
in the taxonomy which have an attribute value corresponding to
a second potential attribute value in the plurality of potential
attribute values; and
[(iv)] generate an ontology comprising a first category
and a second category
[(a)] wherein the first category includes one or
more first nodes corresponding to the one or
more first information records and the
second category includes one or more
second nodes corresponding to the one or
more second information records.
Rejections on Appeal
The Examiner rejected claims 1-20 under 35 U.S.C. § 102(e) as being
anticipated by Talib et al. (US 2001/0044758 Al).
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Appeal2015-002100
Application 13/208,322
Appellants ' Contentions 1
1. Appellants contend that the Examiner erred in rejecting claim 1
under 35 U.S.C. § 102(e) because:
Independent claims 1 and 7 also recite searching "a taxonomy
of information records for any information records which
satisfy the attribute condition, wherein each information record
in the taxonomy is stored as a node and wherein each node is
also represented in an ontology, the ontology being organized
in categories and subcategories which are independent of the
structure of the taxonomy."
As explained in the Application, the present systems
allows for customization or creation of an ontology that exists
on top of an underlying taxonomy and makes a clear distinction
between the taxonomy and the ontology.
App. Br. 6; Appellants' emphasis omitted, Panel's emphasis added.
2. Also, Appellants contend that the Examiner erred in rejecting
claim 13 under 35 U.S.C. § 102(e) because:
[The Examiner cited] sections of Talib do not disclose receiving
"a categorization rule specifying an attribute and a plurality of
potential attribute values for the attribute."
App. Br. 14.
3. Appellants contend that the Examiner erred in rejecting claim
13 under 35 U.S.C. § 102(e) because:
Talib does not disclose the recited identifying steps, as there is
no identification in Talib of "one or more first information
records in the taxonomy which have an attribute value
corresponding to a first potential attribute value" or "one or
more second information records in the taxonomy which have
an attribute value corresponding to a second potential attribute
value."
1 These contentions are determinative as to the rejection on appeal.
Therefore, Appellants' other contentions are not discussed herein.
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Application 13/208,322
App. Br. 15.
4. Appellants contend that the Examiner erred in rejecting claim
13 under 35 U.S.C. § 102(e) because:
[Paragraphs 93 and 98 of Talib] do not disclose generating "an
ontology comprising a first category and a second category,
wherein the first category includes one or more first nodes
corresponding to the one or more first information records and
the second category includes one or more second nodes
corresponding to the one or more second information records"
as recited in independent claim[ 13].
App. Br. 16.
Issue on Appeal
Did the Examiner err in rejecting claims 1 and 13 as being anticipated
under 35 U.S.C. § 102(e) because Talib fails to describe the argued
limitations?
ANALYSIS
We have reviewed the Examiner's rejections in light of Appellants'
arguments that the Examiner has erred.
As to Appellants' above contention 1, we agree. We do not sustain
the Examiner's rejection of independent claim 1, and independent claim 7
which recites limitations commensurate in scope.
As to Appellants' above contentions 2--4, we disagree. We deem
Appellants' arguments to be mere demands that the prior art disclose the
identical language of claim 13. However, there is no ipsissimis verb is test
within 35 U.S.C. § 102. Appellants' assertion that claim limitations are not
expressly recited in a reference does not evidence lack of prima facie
anticipation, but, rather, "begs the substantive question of whether there are
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Appeal2015-002100
Application 13/208,322
facial differences to be bridged." See Jn re Jung, 637 F.3d 1356, 1363 (Fed.
Cir. 2011 ). A reference does not have to satisfy an ipsissimis verb is test to
disclose a claimed element, therefore Appellants' demand for such an
exacting match is not persuasive of error. See In re Gleave, 560 F.3d 1331,
1334 (Fed. Cir. 2009).
Further as to Appellants' above contentions 2--4, except as noted
below, we adopt as our own (1) the findings and reasons set forth by the
Examiner in the action from which this appeal is taken and (2) the reasons
set forth by the Examiner in the Examiner's Answer in response to
Appellants' Appeal Brief. We concur with the conclusions reached by the
Examiner. We highlight the following additional points.
As to Appellants' above contention 2, Appellants overlook that their
Specification states that "[t]he rule may be attribute-based queries so that
rapid tree-based search can be performed ... "Spec 74. Contrary to
Appellants' position, an artisan would recognize Talib at i-f 27 (cited by the
Examiner (Final Act. 10)) shows such attribute-based queries in the form of
"a search based on certain intuitive characteristics, one being the 'type' of
clothing in electronic product catalog 1."
As to Appellants' above contention 3, contrary to Appellants'
position, an artisan would recognize Talib at i-f 93 (cited by the Examiner
(Final Act. 11 )) shows such an attribute-based query for "Pants/Shorts"
results in identifying multiple informational records each of which has an
attribute value corresponding to a potential attribute value;
As to Appellants' above contention 4, contrary to Appellants'
position, an artisan would recognize that Talib's Figure 4 (discussed in i-f 93)
shows an ontology comprising multiple categories, wherein each category
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Application 13/208,322
includes one or more first nodes and corresponds to respective information
records.
Thus, we sustain the Examiner's rejection of independent claim 13,
and independent claim 17 which recites limitations commensurate in scope.
CONCLUSIONS
(1) Appellants have established that the Examiner erred in rejecting
claims 1-12 as being anticipated by Talib under 35 U.S.C. § 102(e).
(2) The Examiner did not err in rejecting claims 13-20 as being
anticipated by Talib under 35 U.S.C. § 102(e).
(3) On this record, claims 1-12 have not been shown to be
unpatentable.
( 4) Claims 13-20 are not patentable.
DECISION
The Examiner's rejection of claims 1-12 as being anticipated under
35 U.S.C. § 102(e) is reversed.
The Examiner's rejection of claims 13-20 as being anticipated under
35 U.S.C. § 102(e) is affirmed.
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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