Ex Parte Simpson

Patent Trial and Appeal Board

Oct 17, 2016

13760661 (P.T.A.B. Oct. 17, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/760,661 02/06/2013
22045 7590 10/19/2016
BROOKS KUSHMAN P,C
1000 TOWN CENTER
TWENTY-SECOND FLOOR
SOUTHFIELD, MI 48075
FIRST NAMED INVENTOR
Justin Ryan Simpson
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.
PCT0105PUSA1 1031
EXAMINER
TORGRIMSON, TYLER J
ART UNIT PAPER NUMBER
2165
NOTIFICATION DATE DELIVERY MODE
10/19/2016 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):
docketing@brookskushman.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Exparte WSTIN RYAN SIMPSON
Appeal2015-005011
Application 13/760,661
Technology Center 2100
Before KEVIN C. TROCK, KARA L. SZPONDOWSKI, and
JOHN R. KENNY, Administrative Patent Judges.
SZPONDOWSKI, Administrative Patent Judge.
DECISION ON APPEAL
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner's
Final Rejection of claims 1-8 and 10, all pending claims in the application.
We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 Appellant identifies the real party in interest as Inovia Holdings Pty Ltd.
App. Br. 3.
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Application 13/760,661
STATEMENT OF THE CASE
Appellant's invention is directed to a computer system for providing
validations instructions to European attorneys in different countries relating
to the validation of granted European patent applications. Spec. i-f 2. Claims
1 and 2, reproduced below with the disputed limitations in italics, are
representative of the claimed subject matter:
1. A computer system for calculating a European patent
validation cost, the computer system having a central
processing unit and a memory, the memory having stored
thereon:
a patent identifier receiver comprising a set of
programmed instructions adapted to receive and store a patent
identifier;
a country selection receiver comprising a set of
programmed instructions adapted to receive and store an
electronic country selection;
a lookup table containing a plurality of country-specific
fee rule records including at least one country-specific
translation fee rule;
a fee rule engine comprising a set of programmed
instructions adapted to calculate European patent validation
fees with reference to said country-specific fee rule records;
a specification retriever comprising a set of programmed
instructions adapted to retrieve an electronic patent
specification file from a patent specification database; and
a word counter comprising a set of programmed
instructions adapted to count the number of words in an
electronic patent specification file;
wherein when the patent identifier receiver receives the
patent identifier and the country selection receiver receives the
electronic country selection, the computer system automatically
performs the following steps:
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Application 13/760,661
the specification retriever retrieves an electronic
patent specification file corresponding to the patent
identifier from the patent specification database;
the word counter counts a number of words in the
electronic patent specification file to return a word
count; and
the fee rule engine:
identifies from the lookup table at least one
country-specific translation fee rule corresponding
to the electronic country selection;
inserts the word count into the at least one
country-specific translation fee rule to produce a
country-specific translation cost; and
returns the country-specific translation cost.
2. The computer system of claim 1 wherein the electronic
patent specification file comprises a series of images
representing each page of the patent specification and wherein
the word counter further comprises a set of programmed
instructions adapted to count the number of words in the
electronic patent specification file by first performing an
optical character recognition (OCR) process on the series of
images to produce a text version of each page of the
specification document and then counting the number of words
in the text version.
REJECTIONS
Claim 1 stands rejected under 35 U.S.C. § 103(a) as unpatentable over
the combination of Simpson (Australian Patent Application No. 2003244578
Al; published Sept. 25, 2003) and Scanlan (US 2005/0246156 Al;
published Nov. 3, 2005).
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Application 13/760,661
Claim 2 stands rejected under 35 U.S.C. § 103(a) as unpatentable over
the combination of Simpson, Scanlan, and Brindisi (US 2005/0216828 Al;
published Sept. 29, 2005).
Claims 3, 4, and 10 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over the combination of Simpson, Scanlan, Brindisi, and Roy
SIMON, HYBRID FEE AGREEMENTS: OKAY OR NO-KAY?, NYPRR,
http://lazar-emanuel.com/Hybrid%20Fee%20Agreements%200kay
%200r%20Nokay (last visited July 29, 2013) (hereinafter "Simon"), and Lee
(US 7,016,851 B 1; issued Mar. 21, 2006).
Claims 5-8 stand rejected under 35 U.S.C. § 103(a) as unpatentable
over the combination of Simpson, Scanlan, and Lee.
ANALYSIS
After considering of each of Appellant's arguments, we agree with the
Examiner. We refer to and adopt the Examiner's findings and conclusions
as set forth in the Examiner's Answer and in the action from which this
appeal was taken. Ans. 2-9; Final Act. 2-15. Our discussions here will be
limited to the following points of emphasis.
Claim 1
Issue 1: Did the Examiner err in finding the combination of Simpson
and Scanlan teaches or suggests "a fee rule engine comprising a set of
programmed instructions adapted to calculate European patent validation
fees with reference to said country-specific fee rule records," as recited in
independent claim 1, and commensurately recited in independent claim 5?
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Application 13/760,661
Appellant contends "there is no information in Simpson which relates
to the validation of European patents in individual European countries."
App. Br. 5. Specifically, Appellant argues "[t]he teaching of calculating
national phase filing fees in Simpson could not possibly suggest calculating
European patent validation fees. The national phase of the PCT system and
the European validation process differ." Id. at 6 (emphasis omitted).
Appellant further contends "Simpson teaches away from a fee rule engine
adapted to calculate European validation fees because its teaching is specific
to the national phase filing process that its formulas and approach for
calculating national phase filing fees do not reasonably suggest the claimed
system for European patent validation fees." Id. at 7. Appellant argues
"[ n ]either Simpson nor Scanlan teaches calculating European patent
validation fees." Id. (emphasis omitted).
The Examiner finds:
[W]hile the combination of Simpson and Scanlan does not
explicitly disclose that the system is directed towards national
validation of a European patent application, Simpson deals with
national phase entry of PCT applications. The national
validation in the EPO system is nearly identical to the national
phase of the PCT system, and therefore it would have been
obvious to one of ordinary skill in the art that the system of
Simpson as modified by Scanlan could be directed towards
national validation under the EPO system. This would have
been advantageous as it would enable users of the system to be
able to seek national stage patent applications from either the
EPO or PCT systems, thereby making the system more
adaptable to user needs.
Final Act. 7. The Examiner further finds:
The rejection presented the position that this is [a] simple
substitution of a known element into the combination. Id.
Simpson dealt with PCT national stage cost calculation. EPO
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national validation cost calculation must have been known prior
to the [A ]ppellant' s claimed invention (otherwise how did
people perform national validation into the EPO member
countries prior to 2005). One of ordinary skill in the art clearly
could have substituted cost figures for entry under PCT with
those to the same country for EPO validation, and doing so
would have yielded a predictable system of providing EPO
validation costs.
Ans. 3.
We are not persuaded by Appellant's contentions and agree with the
Examiner's findings. See Final Act. 3-7; Ans. 2-3. Appellant's arguments
do not take into account what the teachings in Simpson and Scanlan would
have suggested to one of ordinary skill in the art and are, therefore,
ineffective to rebut the Examiner's prima facie case of obviousness. See In
re Keller, 642 F.2d 413, 425 (CCPA 1981). "Common sense teaches ...
that familiar items may have obvious uses beyond their primary purposes,
and in many cases a person of ordinary skill will be able to fit the teachings
of multiple patents together like pieces of a puzzle" since the skilled artisan
is "a person of ordinary creativity, not an automaton." KSR Int'! Co. v.
Teleflex, Inc., 550 U.S. 398, 420-421 (2007). We find that the Examiner has
articulated how the claimed features are met by the proposed combination of
the references with some rational underpinning, consistent with the
guidelines stated in KSR. See Final Act. 7; Ans. 3. Appellant has not
persuasively rebutted the Examiner's findings, nor has Appellant provided
evidence that combining such teachings was "uniquely challenging or
difficult for one of ordinary skill in the art," or that such a combination
"represented an unobvious step over the prior art." Leapfrog Enters., Inc. v.
Fisher-Price, Inc., 485 F.3d 1157, 1162 (Fed. Cir. 2007).
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Finally, arguing that Simpson's teaching is specific to the national
phase filing process is not sufficient to teach away from the limitation. See
In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004) (disclosure does not
teach away from the claimed subject matter unless the prior art reference
also criticizes, discredits, or otherwise discourages the solution claimed).
Instead, Appellant's argument does little more than contend that Simpson
does not teach the limitation, rather than showing that Simpson teaches away
from the limitation.
Accordingly, we are not persuaded the Examiner erred in finding the
combination of Simpson and Scanlan teaches or suggests the disputed
limitation.
Issue 2: Did the Examiner err in finding the combination of Simpson
and Scanlan teaches or suggests "a word counter comprising a set of
programmed instructions adapted to count the number of words in an
electronic patent specification file," as recited in claim 1?
Appellant argues "Scanlan does not suggest a word counter
comprising a set of programmed instructions adapted to count the number of
words in an electronic patent specification file." App. Br. 7. Appellant
further argues "Simpson also does not suggest a word counter that counts the
number of words in a patent specification" and the "Simpson method teaches
away from a word counter adapted to count words in a patent specification,
as it requires the instructing attorney to input the number of pages of a
specification of the PCT application." Id. at 7-8; see also App. Br. 10.
We are not persuaded by Appellant's arguments and agree with the
Examiner's findings. Final Act. 2-7; Ans. 3--4. Appellant's arguments
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attack the references in isolation, but do not substantively address the
combined teachings as relied upon by the Examiner. See In re Merck & Co.,
800 F.2d 1091, 1097 (Fed. Cir. 1986) (citation omitted). We agree with the
Examiner that the combination of Simpson's electronic patent specification
file and Scanlan's word count applying to any form of electronic
communication teaches or suggests the disputed limitation. See Ans. 4;
Final Act. 5---6 (citing Scanlan i-fi-1 80, Simpson p. 55). Further, we are not
persuaded Simpson's inputting the number of pages (as opposed to an
automatic word count) rises to the level of teaching away. See Galderma
Labs., L.P. v. Tolmar, Inc., 737 F.3d 731, 738 (Fed. Cir. 2013) ("A reference
does not teach away ... if it merely expresses a general preference for an
alternative invention but does not criticize, discredit, or otherwise discourage
investigation into the invention claimed.")
Accordingly, we are not persuaded the Examiner erred in finding the
combination of Simpson and Scanlan teaches or suggests the disputed
limitation.
Issue 3: Did the Examiner err in finding the combination of Simpson
and Scanlan teaches or suggests "a lookup table containing a plurality of
country-specific fee rule records including at least one country-specific
translation fee rule," as recited in claim 1?
The Examiner finds:
While Scanlan does not explicitly teach the use of a
lookup table containing a plurality of country-specific fee rule
records including at least one country-specific translation fee
rule, it does teach the use of flat rates for identified languages
as well as the use of multiple factors to determine a cost. It is
implicit that this information is stored somewhere, and it would
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have been obvious to one of ordinary skill in the art to store it
in a lookup table as this would offer the clear advantage of
allowing for greater ease in lookup and modification of the
relationships between cost and language. It would have further
been obvious to one of ordinary skill in the art in view of
Simpson to store information in the lookup table relating a
country to the translation language required so that users of the
system would not be required to determine what languages the
specification would need to be translated into in order to file in
a given jurisdiction. This would have been advantageous as it
would have been more user friendly.
Final Act. 6-7; see also Ans. 5---6. The Examiner further finds "[a]t the time
of the claimed invention, lookup tables were already ubiquitous data
structures within the computer art." Ans. 5.
Appellant argues "[t]he Examiner's rationale for considering the use
of a lookup table ... is merely conclusory and improper" and Appellant
"does not agree that [the] use of a lookup table as claimed is 'implicit."'
App. Br. 9. Appellant further argues because "[t]he lookup table is absent
from the cited art and is only present in Applicant's [S]pecification[,] [i]t
logically follows that use of a lookup table as claimed has been improperly
gleaned from Applicant's own [S]pecification and that the Examiner's
obviousness determination is an exercise of impermissible hindsight." Id.
We are not persuaded by Appellant's arguments and agree with the
Examiner's findings. See Final Act. 6-7; Ans. 5---6. Appellant has not
persuasively rebutted the Examiner's findings, nor has Appellant provided
evidence that using a lookup table was "uniquely challenging or difficult for
one of ordinary skill in the art," or that such a combination "represented an
unobvious step over the prior art." Leapfrog Enters., 485 F.3d at 1162.
Further, we also are not persuaded of error by i\.ppellanfs argument that the
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Application 13/760,661
Examiner improperly used hindsight As shown supra, the Examiner
provides miiculated reasoning with some rational underpinning to support
the obviousness determination. We note Appellant does not identify any
knowledge relied upon by the Examiner that was gleaned only from
Appellant's disclosure and that was not otherwise within the level of
ordinary skill in the art at the time of invention. For example, Appellant has
not persuasively rebutted the Examiner's findings that lookup tables were
ubiquitous in the art at the time of invention.
Accordingly, we are not persuaded the Examiner erred in finding the
combination of Simpson and Scanlan teaches or suggests the disputed
limitation.
Issue 4: Did the Examiner err in combining Simpson and Scanlan?
Appellant argues there is no motivation to combine the references
because Simpson uses page count only to determine the government
publication fees and none of the countries selectable in Simpson require
translation, and Scanlan relates to machine translations which are inaccurate
and would not be contemplated by one of skill in the art for translating a
patent specification. App. Br. 10. Appellant further contends combining
Simpson with Scanlan would render Simpson unsatisfactory for its intended
purpose because Simpson describes machine translation, and patent firms
and translation firms rely on human translators. Id.
We are not persuaded by Appellant's arguments and agree with the
Examiner's findings. See Final Act. 3-7; Ans. 2-8. The Examiner has
presented detailed findings articulating how the claimed features are met by
the proposed combination of the references with some rational underpinning
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(see Ans. 6-7), which Appellant does not persuasively rebut. Further, as the
Examiner points out, Scanlan teaches human translations. See id. at 7 (citing
Scanlan, Fig. 3, i-fi-158, 84).
Accordingly, we are not persuaded the Examiner erred in combining
Simpson and Scanlan. For the foregoing reasons, we sustain the Examiner's
35 U.S.C. § 103(a) rejection of independent claim 1, independent claim 5,
which recites similar limitations, and dependent claims 3, 4, 6-8, and 10,
which were not separately argued.
Claim 2
Issue 5: Did the Examiner err in finding the combination of Simpson,
Scanlan, and Brindisi teaches or suggests a word counter "performing an
optical character recognition (OCR) process on the series of images to
produce a text version of each page of the specification document and then
counting the number of words in the text version," as recited in dependent
claim 2?
The Examiner relies on Brindisi to teach or suggest the use of OCR in
a patent specification. Final Act. 8, citing Brindisi i-fi-f 14, 15; Ans. 8-9.
Appellant contends Brindisi does not use the OCR process to perform a
word count. App. Br. 11. Rather, Appellant argues Brindisi only performs
OCR on the diagram section of the patent specification, not the text of the
specification. Id.
We are not persuaded by Appellant's arguments and agree with the
Examiner's findings. Final Act. 8-9; Ans. 8-9. We find the Examiner has
presented detailed findings articulating how the combination of Simpson,
Scanlan, and Brindisi teaches or suggests the disputed limitation, which
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Appellant has not persuasively rebutted. For example, Appellant has not
identified why, given Brindisi's teaching of the use of OCR functionality to
OCR diagrams, it would have been challenging or difficult for one of
ordinary skill in the art to apply that teaching to perform OCR to the entire
Specification. See Leapfrog Enters., 485 F.3d at 1162.
Accordingly, we are not persuaded the Examiner erred and, therefore,
sustain the Examiner's 35 U.S.C. § 103(a) rejection of dependent claim 2.
DECISION
For the above reasons, the Examiner's rejection of claims 1-8 and 10
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
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