12978706 (P.T.A.B. Jun. 21, 2016)

Ex Parte Sharma et al

Patent Trial and Appeal BoardJun 21, 2016

12978706 (P.T.A.B. Jun. 21, 2016)

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. 12/978,706 12/27/2010 Sanjay Sharma 31547-271 / LEN0064PA 1687 24256 7590 06/22/2016 DINSMORE & SHOHL LLP 255 East Fifth Street, Suite 1900 CINCINNATI, OH 45202 EXAMINER LIN, SHEW FEN ART UNIT PAPER NUMBER 2166 MAIL DATE DELIVERY MODE 06/22/2016 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 SANJAY SHARMA, JOHN ALEXANDER DALESSIO, JEREMY JACOB MULDER, GAURAV MEHRA, MOLLY MILLER, MAHESH PENDYALA, TODD JOSEPH FRASCONE, DOUGLAS N. RITTER, and GORDON YIP ___________ Appeal 2014-009378 Application 12/978,706 Technology Center 2100 ____________ Before CARL W. WHITEHEAD JR, JEFFREY S. SMITH and MICHAEL M. BARRY, Administrative Patent Judges. WHITEHEAD JR., Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellants are appealing the Final Rejection of claims 1–19 under 35 U.S.C. § 134(a). Appeal Brief 4. We have jurisdiction under 35 U.S.C. § 6(b). We reverse. Introduction The invention is directed to introducing “research tools to help researchers quickly determine what avenues have been searched, what documents may be highly relevant, and what additional documents may be important to those already identified as important.” Specification, ¶ 5. Appeal 2014-009378 Application 12/978,706 2 Representative Claim (disputed limitations emphasized) 1. A computer-implemented method for creating a research tree, comprising: receiving, by a processor, a query, the query specifying a search parameter for searching a document repository; executing the query to search the document repository; storing, in the data repository, the query and a result of the query as a root node of a research tree; receiving, by the processor, a first request for a filter for the result of the query; storing the first filter and information identifying a plurality of documents matching the first filter as a first filter node connected to the root node; receiving a request to view a first document from the plurality of documents matching the first filter; and storing the request to view the first document as a first document node connected to the first filter node. Rejection on Appeal Claims 1–19 stand rejected under 35 U.S.C. § 102(b) as being anticipated by Hurst (US Patent Application Publication Number 2006/0271884 A1; published November 30, 2006). Final Rejection 2–7. ANALYSIS Rather than reiterate the arguments of Appellants and the Examiner, we refer to the Appeal Brief (filed March 24, 2014), the Reply Brief (filed September 3, 2014), the Answer (mailed July 9, 2014) and the Final Rejection (mailed September 9, 2013) for the respective details. We have considered in this decision only those arguments Appellants actually raised in the Briefs. Appellants argue that Hurst fails to disclose (1) “storing the query and a result of the query as a root node of a research tree in the data Appeal 2014-009378 Application 12/978,706 3 repository,” (2) “storing the first filter and information identifying a plurality of documents matching the first filter as a first filter node connected to the root node,” and (3) “storing the request to view the first document as a first document node connected to the first filter node,” as recited in independent claims 1, 14, and 16. Appeal Brief 17–19. The Examiner finds Hurst discloses in various figures and paragraphs all of the limitations in question. Final Rejection 2, 3, 6 and 7. We do not agree with the Examiner’s findings and find Appellants’ arguments persuasive. It is recognized by this panel that storing various types of data is well known in the technology. Further, Appellants’ Specification does not disclose anything associated with the storing of various types of data that would not be obvious and well within the purview of one of ordinary skill in the art. See, e.g., Specification ¶¶ 7, 42, and 43. However, under the anticipation standard, we are constrained by the record to reverse the Examiner’s anticipation rejection because we find Hurst does not explicitly or inherently disclose storing the query and query result as a root node, information identifying documents matching a first filter, and the request to review a first document as claimed by Appellants.1 1 “A claim is anticipated only if each and every element as set forth in the claim is found, either expressly or inherently described, in a single prior art reference.” Verdegaal Bros., Inc. v. Union Oil Co. of Cal., 814 F.2d 628, 631 (Fed. Cir. 1987). Appeal 2014-009378 Application 12/978,706 4 DECISION The Examiner’s anticipation rejection of claims 1–19 is reversed.2 REVERSED 2 Should there be further prosecution of this application, the Examiner may wish to review the claims for compliance under 35 U.S.C. § 101 in light of the recently issued preliminary examination instructions on patent eligible subject matter. See “Preliminary Examination Instructions in view of the Supreme Court Decision in Alice Corporation Pty. Ltd. v. CLS Bank International, et al.” Memorandum to the Examining Corps, June 25, 2014. Also, claims 14 and 15 recite “a computer-readable storage device.” The broadest reasonable interpretation of the “computer-readable storage device” language of claims 14 and 15, when read in light of Appellants’ Specification (paragraph 10), is inclusive of transitory propagating signals. See Ex parte Mewherter, 107 USPQ2d 1857, 1862 (PTAB 2013) (precedential).