Ex Parte Tabuchi

Patent Trial and Appeal Board

Nov 17, 2014

10911305 (P.T.A.B. Nov. 17, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte KEIZO TABUCHI
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Appeal 2012-004491
Application 10/911,305
Technology Center 2100
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Before CARL W. WHITEHEAD JR., JOHNNY A. KUMAR, and
CATHERINE SHIANG, Administrative Patent Judges.

KUMAR, Administrative Patent Judge

DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134(a) from a final rejection of
claims 1, 4–9, 12–17, 19–21, and 23–25. Claims 2, 3, 10, 11, 18, 22, and
26–29 have been cancelled. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.

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STATEMENT OF THE CASE
According to Appellant, the invention relates to information search
system for performing an information search for a database. Spec. 1, ll. 3–4.

Claim 1 is illustrative with disputed elements highlighted:
1. An information processing apparatus comprising:
at least one processor for executing actions relative to
one or more units;
a text holding unit for holding text obtained through a
predetermined user e-mail activity;
a keyword extracting unit for analyzing a pattern of the
user e-mail activity to select at least one e-mail and specify a
method of automatically extracting a keyword from the at least
one selected e-mail to be used for a database search based on
the analysis result, for extracting the keyword from the text held
by the text holding unit by the specified extracting method by
performing a morphological analysis of the text held by the text
holding unit, and for providing the keyword to a search unit for
use in a database search; and
an output control unit for outputting the result of the
database search using the keyword extracted by the keyword
extracting unit.

Rejections
The Examiner rejected claims 1, 4–9, 12–17, 19–21, and 23–25 under
35 U.S.C. § 102(e) as anticipated by Evans (US 6,915,308 B1, July 5, 2005).
Ans. 5–12.

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ANALYSIS
We have reviewed the Examiner’s rejections in light of Appellant’s
arguments that the Examiner has erred. We disagree with Appellant’s
conclusions.
Independent claims 9, 12, 17, and 20 (argued together with claim 1)
also recite the disputed elements (keyword extracting unit, text holding unit,
and output control unit). Br. 11–12. Appellants did not provide separate
arguments for dependent claims.
The Examiner rejected pending claims 1, 4–9, 12–17, 19–21, and 23–
25 under 35 U.S.C. § 102(e) over Evans. We specifically find the Examiner
has articulated how the disputed elements are met by Evans (Ans. 13–15
(citing Evans, col. 5, ll. 25–49, col. 6, ll. 4–25, 48–67, col. 7, ll. 1–14, 51–
67, col. 8, ll. 1–13, col. 11, ll. 54–67, col. 12, ll. 1–2)). We agree with and
accordingly adopt the Examiner’s findings of fact and analysis, and reach
the same legal conclusions as in the Examiner’s Answer. Id. Appellant did
not rebut the Examiner’s above findings in a Reply Brief.
We also note Appellant’s arguments in the Brief (pages 11–14)
amount to no more than reciting the claim features and generally alleging
that Evans is deficient. Merely pointing out certain claim features recited in
independent claim 1 and asserting that Evans fails to disclose such features
does not amount to a separate patentability argument. See 37 C.F.R.
§ 41.37(c)(vii) (“A statement which merely points out what a claim recites
will not be considered an argument for separate patentability of the claim.”);
see also In re Lovin, 652 F.3d 1349, 1357 (Fed. Cir. 2011) (“[W]e hold that
the Board reasonably interpreted Rule 41.37 to require more substantive
arguments in an appeal brief than a mere recitation of the claim elements and
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Application 10/911,305

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a naked assertion that the corresponding elements were not found in the
prior art.”); cf. In re Baxter Travenol Labs., 952 F.2d 388, 391 (Fed. Cir.
1991) (“It is not the function of this court to examine the claims in greater
detail than argued by an appellant, looking for [patentable] distinctions over
the prior art.”). On this record, we find Appellant has failed to present
substantive arguments and supporting evidence persuasive of Examiner error
regarding the aforementioned disputed elements in claims 1, 9, 12, 17, and
20, and dependent claims 4–8, 13–16, 19, 21, and 23–25 not argued
separately.

CONCLUSION
The Examiner did not err in rejecting claims 1, 4–9, 12–17, 19–21,
and 23–25 under 35 U.S.C. § 102(e) as anticipated by Evans.

DECISION1
The Examiner’s rejection of claims 1, 4–9, 12–17, 19–21, and 23–25
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).

1 We note claim 20 recites a computer readable medium. However,
Appellant’s Specification does not define medium to exclude transitory
media. Should there be further prosecution of this application (including
any review for allowance), 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.
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AFFIRMED

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