Ex Parte Scholz

Patent Trial and Appeal Board

Nov 18, 2014

12243051 (P.T.A.B. Nov. 18, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte MARTIN SCHOLZ
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Appeal 2012-009828
Application 12/243,051
Technology Center 2100
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Before MAHSHID D. SAADAT, ALLEN R. MacDONALD and
CAROLYN D. THOMAS, Administrative Patent Judges.

MacDONALD, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2012-009828
Application 12/243,051

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STATEMENT OF CASE1
Introduction
Appellant appeals under 35 U.S.C. § 134(a) from a final rejection of
claims 1, 2, 4–15, 17, and 20–22. We have jurisdiction under 35 U.S.C.
§ 6(b). We affirm-in-part.
Exemplary Claim
Exemplary claim 1 under appeal reads as follows:
A method of classifying an input data item, comprising:
providing a hierarchy of categories that includes a multi-
level arrangement of the categories;
using a classifier executing in a system having a
processor to identify, from a set of data items, neighboring data
items of the input data item; and
according to metric values relating the neighboring data
items to the input data item, determining, by the system,
whether at least one category is assignable to the input data
item from among the hierarchy of categories, wherein the
determining involves processing the hierarchy from more
specific categories to less specific categories, wherein at least a
given one of the more specific categories is at a different level
of the hierarchy than at least a given one of the less specific
categories.

Examiner’s Rejections
The Examiner rejected claims 1, 2, 4–15, 17, and 20–22 as being
unpatentable under 35 U.S.C. § 103(a) over the combination of Roder (US

1 Appellant and Examiner appear to agree that claims 3, 16, 18, and 19, have
been cancelled. We treat these claims as cancelled. However, we find no
actual cancellation in the record. Rather, Appellant by amendment after
final rejection (12/05/11) requested cancellation and entry of that
amendment was denied by Advisory Action (12/14/11).
Appeal 2012-009828
Application 12/243,051

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2007/0231921 A1; published Oct. 4, 2007) and Wei (US 2004/0193019 A1;
published Sept. 30, 2004). 2

Appellant’s Contentions 3
1. Appellant contends that the Examiner erred in rejecting claim 1
under 35 U.S.C. § 103(a) because:
Roder does not disclose providing a hierarchy of categories,
and more specifically, providing a hierarchy of categories that
includes a multi-level arrangement of the categories.
(App. Br. 9).
2. Appellant further contends that the Examiner erred in rejecting
claim 1 because:
Roder does not disclose determining whether at least one
category is assignable to the input data item from among the
hierarchy of categories that involves processing the hierarchy
from more specific categories to less specific categories.
(App. Br. 10).
3. Appellant further contends that the Examiner erred in rejecting
claim 1 because:
It is respectfully submitted that the subject matter of claim 1
noted above as missing from both Roder and Wei do not
constitute an "inherent or implied" feature of the kNN
classification algorithm.

2 Claim 4 depends from cancelled claim 3 and is separated from each of the
claims argued in the Appeal Brief. Therefore, Appellant has not argued that
the Examiner erred in rejecting claim 4. We affirm the rejection of claim 4
pro forma.
3 The arguments directed to claim 1 are applicable to all of claims 1, 2, 5–15,
17, and 20–22. Except for our final conclusion, we do not further address
the Examiner’s rejection of these claims under 35 U.S.C. § 103(a).
Appeal 2012-009828
Application 12/243,051

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(App. Br. 11).

Issue on Appeal
Did the Examiner err in rejecting claim 1 as being unpatentable under
35 U.S.C. § 103(a) because the cited Roder and Wei references fail to
disclose the argued limitations and the rejection fails to adequately explain
why the argued limitations are inherent to the system of Roder?

ANALYSIS
As to Appellant’s contentions reproduced above, we agree. The
Examiner has erred in finding the claims obvious over the applied
references.

CONCLUSIONS
(1) The Examiner did not err in rejecting claim 4 under 35 U.S.C.
§ 103(a).
(2) Appellant has established that the Examiner erred in rejecting
claims 1, 2, 5–15, 17, and 20–22 as being unpatentable under 35 U.S.C.
§ 103(a).
(3) On this record, claims 1, 2, 5–15, 17, and 20–22 have not been
shown to be unpatentable.
(4) Claim 4 is not patentable.
Appeal 2012-009828
Application 12/243,051

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DECISION 4
The Examiner’s rejection of claims 1, 2, 5–15, 17, and 20–22 is
reversed.
The Examiner’s rejection of claim 4 under 35 U.S.C. § 103(a) 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)(1)(iv).

AFFIRMED-IN-PART

tj

4 The Examiner rejected original claims 1 and 15 under 35 U.S.C. § 101 as
being directed to non-statutory subject matter. (Non-final Rej. 2). Appellant
amended the claims to render them statutory by adding the limitation of “a
processor.” (09/02/11). The Examiner withdrew the § 101 rejection. (Final
Rej. 2).
Subsequent to the close of prosecution before the Examiner, the
Supreme Court in Alice Corp. Pty. LTD., v. CLS Bank Inter., 134 S.Ct.
2347 (2014) set forth a two-part test to determine compliance of a claim with
§ 101. The Court held that a mere instruction to implement an abstract idea
on a computer cannot impart patent eligibility. 134 S.Ct. at 2357–59.
We instruct the Examiner to re-review all pending claims in light of
the Court’s Alice decision and any subsequent agency guidance.