2019005293 (P.T.A.B. May. 18, 2021)

Ghosh, Rishab Aiyer. et al.

Patent Trials and Appeals BoardMay 18, 2021

2019005293 (P.T.A.B. May. 18, 2021)

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. 13/161,812 06/16/2011 Rishab Aiyer Ghosh 4860P22863USX1 6217 45217 7590 05/18/2021 WOMBLE BOND DICKINSON (US) LLP/ APPLE INC. Attn: IP Docketing P.O. Box 7037 Atlanta, GA 30357-0037 EXAMINER YEN, SYLING ART UNIT PAPER NUMBER 2166 NOTIFICATION DATE DELIVERY MODE 05/18/2021 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): FIP_Group@bstz.com PTO.MAIL@BSTZ.COM PTO.MAIL@BSTZPTO.COM PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte RISHAB AIYER GHOSH and LUN TED CUI Appeal 2019-005293 Application 13/161,812 Technology Center 2100 Before CAROLYN D. THOMAS, IRVIN E. BRANCH, and SCOTT RAEVSKY, Administrative Patent Judges. RAEVSKY, Administrative Patent Judge. DECISION ON REQUEST FOR REHEARING Appeal 2019-005293 Application 13/161,812 2 INTRODUCTION Appellant filed a Request for Rehearing (“Req.”) of the Patent Trial and Appeal Board’s (“Board”) Decision mailed March 19, 2021 (“Decision”), in which we affirmed the rejection of claims 1–8 and 10–28 under 35 U.S.C. § 103. ANALYSIS In our Decision, we noted that Appellant argued that Scott does not teach the claimed “edges of the citation graph are citations” recited in claim 1. Dec. 4. We also noted that the Examiner relied on Card, not Scott, for this limitation. Id. at 3. And we found that Appellant belatedly addressed Card in its Reply Brief but did not explain why it did not raise this argument in its Appeal Brief. Id. at 4. So we sustained the Examiner’s rejection. Id. at 5. Appellant now argues that we overlooked its Appeal Brief argument that Card does not teach or suggest claim 1’s searching a citation graph using one or more search criteria, wherein nodes of the citation graph are citation graph subjects and citation graph objects, edges of the citation graph are citations, and each citation in the citation graph includes an opinion of one of the citation graph objects from one of the citation graph subjects. Req. 3. Appellant points to pages 16 and 17 of its Appeal Brief, which argue that Card does not teach that edges are citations: Appellant respectfully submits that Card discloses that a directed graph edge of Card’s citation graph indicates that Di references Dj and that Dj contains a citation from Di. Thus, Appellant respectfully submits that Card discloses that the node Dj contains the actual citation, not the edge connecting the nodes Di and Dj. Instead, Card’s graph edge discloses is an Appeal 2019-005293 Application 13/161,812 3 indication of where the citation is, but not the citation itself, as Card’s citation resides in the nodes itself ( e.g., node Dj). Thus, Appellant respectfully submits that Card’s graph edge cannot be properly equated to Appellant's claimed citation graph edge. Id. at 3–4 (citing Appeal Br. 16–17). Appellant states that it made this argument in a section of the Appeal Brief addressing the Examiner’s rejection over Scofield, Arora, and Card—a rejection which the Examiner later withdrew. Id. at 4; Ans. 4. It was “for the sake of brevity,” Appellant contends, that it did not repeat this argument in its later section addressing the rejection over Scofield, Scott, and Card on the same claims. Id. Appellant points us to the following statement in the Scofield, Scott, and Card section, referring back to this argument: “As per above, neither Scofield nor Card teaches or suggests the claim element.” Id. at 5 (citing Appeal Br. 19). Thus, Appellant submits that the Board misapprehended its Reply Brief argument against Card as too late. Id. Appellant is partially correct. The Examiner withdrew the rejection over Scofield, Arora, and Card, so the section of the Appeal Brief addressing that particular rejection became irrelevant to our decision. See Ans. 4. In that section, Appellant did argue that Card does not disclose the claimed “edges of the citation graph are citations.” See Appeal Br. 16–17. And Appellant referred back to that argument in the later section addressing Scofield, Scott, and Card, although cryptically. Yet Appellant’s Request misses something significant, even in its original argument against Card. The crux of Appellant’s original argument is that “Card discloses that the node Dj contains the actual citation, not the edge connecting the nodes Di and Dj.” Appeal Br. 17. In so stating, Appellant appears to be referring to Card’s disclosure in column 8, line 63 Appeal 2019-005293 Application 13/161,812 4 through column 9, line 7, as cited by the Examiner. See Final Act. 46. But that is not the only Card passage the Examiner cites. The Examiner also cites Card column 6, line 59 through column 7, line 13. Id. There, Card refers to an “operator c” that “represents an operation ‘citation.’” Card 6:64–65. The Examiner’s Final Rejection finds this teaching significant: In FIG. 4, a box 420, denoted CR.sup.1, is the set of the contents of all the documents referred to in R.sup.0. The operator c, in this case, represents an operation “citation,” and this portion of FIG. 4 means that “R.sup.0 is a citation for CR.sup.1.” Final Act. 46. Despite the Examiner emphasizing this teaching by underlining this text, the Appeal Brief does not address it. See Appeal Br. 16–17. It is only the Reply Brief that addresses this finding. See Reply Br. 3. Appellant’s new Reply argument is thus untimely, so we properly did not consider it in our Decision. See Ex parte Borden, 93 USPQ2d 1473 (BPAI 2010) (informative). Nonetheless, we exercise our discretion to review Appellant’s Reply argument. Appellant contends that Card’s “operation c” in Figure 4 is not a citation: . . . Card clearly discloses that R0 is the citation, not the operation c, because Card discloses that “R0 is a citation for CR1.” Furthermore, if one of ordinary skill in the art would interpret Figure 4 as a citation graph, this person would recognize the R0 is a node, not an edge. Thus, Appellant respectfully submits that Card does not teach or suggest that “edges of the citation graph are citations” as asserted by the Examiner. Reply Br. 3–4. We disagree. This argument contradicts Card’s express teaching that “[t]he operator c, in this case, represents an operation ‘citation.’” Card 6:64–65. We find Appeal 2019-005293 Application 13/161,812 5 that one of ordinary skill in the art would find that Figure 4 below depicts operation “c” as an edge in a graph connecting two nodes 410, 420: In other words, Figure 4 depicts a graph including nodes 410, 420 connected by an edge c—the “operator c,” which represents a citation. See Card 6:64– 65; 8:59–60. Appellant’s Reply then argues that Card “teaches away from Figure 4 being interpreted as a citation graph” because Card “does not refer to the illustration in Figure 4 as a graph.” Reply Br. 4. Yet Appellant overlooks Card’s reference to “the graphs of, e.g., FIGS. 4 and 5.” Card 8:59–60. Thus, Card teaches or suggests “edges of the citation graph are citations,” as recited in claim 1. We deny Appellant’s Request for Rehearing. Appeal 2019-005293 Application 13/161,812 6 CONCLUSION Outcome of Decision on Rehearing: Claims 35 U.S.C. § Reference(s)/Basis Denied Granted 1–8, 10, 14– 20, 24–28 103 Scofield, Scott, Card 1–8, 10, 14–20, 24–28 11–13, 21– 23 103 Scofield, Scott, Card, Tseng 11–13, 21–23 Overall Outcome 1–8, 10– 28 Final Outcome of Appeal after Rehearing: Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1–8, 10, 14– 20, 24–28 103 Scofield, Scott, Card 1–8, 10, 14–20, 24–28 11–13, 21– 23 103 Scofield, Scott, Card, Tseng 11–13, 21–23 Overall Outcome 1–8, 10– 28 No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. § 1.136(a)(1)(iv). DENIED