Ex Parte Adler et al

Patent Trial and Appeal Board

Aug 26, 2014

10193572 (P.T.A.B. Aug. 26, 2014)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
10/193,572 07/11/2002 Marc Stephen Adler A01126 8960
7590 08/28/2014
Stephen E. Johnson
1497 Stuckert Road
Warrington, PA 18976
EXAMINER
ROBINSON, GRETA LEE
ART UNIT PAPER NUMBER
2169
MAIL DATE DELIVERY MODE
08/28/2014 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 MARC STEPHEN ADLER and STEPHEN E. JOHNSON
____________

Appeal 2012-005365
Application 10/193,572
Technology Center 2100
____________

Before ELENI MANTIS MERCADER, MICHAEL J. STRAUSS,
and MICHELLE N. WORMMEESTER, Administrative Patent Judges.

WORMMEESTER, Administrative Patent Judge.

DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 30–39, which constitute all the claims pending in this
application. Claims 1–29 have been cancelled. We have jurisdiction under
35 U.S.C. § 6(b).
We affirm.

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STATEMENT OF THE CASE
Introduction
Appellants’ invention relates to a data processing system and method
for managing intellectual property. (See Spec. 1:3–4.) Exemplary
independent claim 36 reads as follows:
36. A data processing system for automatically maintaining
an electronic laboratory records system, the data processing
system comprising:
an input device for entering information into an
electronic document which is part of the electronic laboratory
records stored in a memory;
first output means for outputting a first request for
requesting a first signature from at least one first user to be
input into the electronic document, wherein the at least one first
user is an inventor;
first receiving means for receiving the first signature
input by the at least one first user and affixing it to the
electronic document;
first time stamping means for automatically attaching a
first time stamp to the electronic document which corresponds
to the time when the first signature was input;
automatic locking means for automatically locking the
information in the stamped electronic document with the first
signature such that the information cannot be altered;
means for automatically forwarding the locked electronic
document to at least one second user, wherein the at least one
second user is a witness;
means for displaying the information to the at least one
second user;
second outputting means for outputting a second request
for requesting a second signature from the at least second user
to be input in the electronic document;
second receiving means for receiving the second
signature input by the at least second user and affixing it to the
electronic document;
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second time stamping means for automatically attaching
a second time stamp to the electronic document which
corresponds to the time when the second signature was input,
providing a refined set of electronic documents, meeting
evidentiary requirements in a legal proceeding and providing
electronic documents that a limited number of authorized users
can securely share or access over a secure computing network
or receive in a fixed form;
wherein the electronic laboratory records system has a
custodian that (a) manages, stores, maintains, authenticates, and
distributes at least one system that is electronically bound to the
at least one inventor, authorizing the inventor to enter, amend,
edit, affix and sign electronic documents including data, text,
notes in an electronically fixed form and (b) authorizes the at
least one witness to read and witness the inventor's electronic
documents; and
wherein the electronic laboratory records system securely
stores and maintains the records in an electronically bound and
unaltered fixed form that meets evidentiary requirements.

Applied Prior Art
The Examiner relies on the following prior art in rejecting the claims
on appeal:
Lee US 2002/0138297 A1 Sept. 26, 2002
Barney et al. (Barney) US 6,556,992 B1 Apr. 29, 2003
Ginter et al. (Ginter) US 2009/0030768 A1 Jan. 29, 2009

Rejections
Claims 30–34 and 36–39 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Lee and Ginter. (See Ans. 5–11.)
Claim 35 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Lee, Ginter, and Barney. (See Ans. 11.)
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ANALYSIS
1. Claims 36–39 1
Appellants argue the Examiner has erred in rejecting independent
claim 36 because the applied prior art fails to teach five features: (1) an
electronic laboratory records system; (2) requesting a signature from a user
for input into an electronic document, where the user is an inventor;
(3) providing electronic documents that meet evidentiary requirements and
that authorized users can access; (4) a custodian that (a) manages, stores,
maintains, authenticates, and distributes a system that is electronically bound
to the inventor who can enter, amend, edit, affix, and sign electronic
documents and (b) authorizes a witness to read and witness the inventor’s
electronic documents; and (5) storing and maintaining records that meet
evidentiary requirements. (See App. Br. 12–27.) We disagree with
Appellants.
a. an electronic laboratory records system
In finding the applied prior art teaches an electronic laboratory records
system, the Examiner cites Lee for discussing storing information in a
database, (see Ans. 5–6; see also Lee ¶¶ 15–16), where the information is
“segmented into data records with each data record corresponding to a single
intellectual property,” (see Ans. 12; see also Lee ¶ 17.) The Examiner also
cites Lee for discussing using an electronic computer to input the
information. (See Ans. 12; see also Lee ¶¶ 12, 20.) We note the cited
portions of Lee further discuss that the information contains technical

1
Appellants assert claim 38 depends from claim 36. (See App. Br. 22.) We
note, however, claim 38 is an independent claim. As claims 36 and 38 recite
similar features, our analysis with respect to claim 36 applies to claim 38.
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papers, (see Lee ¶¶ 15, 17; see also App. Br. 14), invention disclosures, lab
notebooks, and documentation of conception and reduction to practice, (see
Lee ¶ 36; see also App. Br. 12). Based on the cited portions of Lee, we
agree with the Examiner that Lee’s computer database and data records
storing information related to intellectual property, including lab notebooks,
teaches or suggests an electronic laboratory records system.
Further, while we agree that Lee’s system is directed to maintaining
the disputed electronic laboratory records system, the latter is not positively
recited and is not part of the invention defined by claim 36. In particular,
claim 36 recites a data processing system, an intended use of which is for
automatically maintaining an electronic laboratory records system. That is,
claim 36 claims the data processing system, not an electronic laboratory
records system. Neither does the structure of the electronic laboratory
records system recited in the wherein clauses of claim 36 result in the
definition of any structural aspect of the claimed data processing system.
Rather, the electronic laboratory records system is merely part of a
description of an intended use of the claimed data processing system.
Therefore, because a recitation of an intended use of a claimed invention
must result in a structural difference between the claimed invention and the
prior art in order to patentably distinguish the claimed invention from the
prior art
2
, the disputed electronic laboratory records system is not to be given
patentable weight. Instead, if the prior art structure is capable of performing

2
“[A]pparatus claims cover what a device is, not what a device does.”
Hewlett-Packard Co. v. Bausch & Lomb, Inc., 909 F.2d 1464, 1468 (Fed.
Cir. 1990).
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the intended use, then it meets the claim. For these additional reasons,
Appellants’ arguments are not persuasive of Examiner error.
Arguing that Lee does not teach an electronic laboratory records
system, Appellants contend the reference fails to describe “a system that
stores and maintains invention disclosures in the form of electronic
documents, which are submitted by inventors, witnessed by others and
which are in an electronically bound and unaltered fixed form that meets
evidentiary requirements.” (See App. Br. 13.) In particular, Appellants
argue Lee’s “information related to intellectual property stored in a
database” fails to teach or suggest “that the information is a database of
laboratory records.” (App. Br. 14.) We disagree. Other than contending
error, Appellants fail to explain why Lee’s storage of information related to
intellectual property fails to teach a database of laboratory records. Further,
because the information stored does not affect the structure or functioning of
the claimed data processing system, it is not entitled to patentable weight.
Accordingly, we are unpersuaded of error in the Examiner’s finding that Lee
teaches or suggests an electronic laboratory records system.
b. requesting a user signature, where the user is an inventor
In finding the applied prior art teaches requesting a signature from an
inventor for input into an electronic document, the Examiner cites Lee for
describing tracking user identities through digital signatures. (See Ans. 13;
see also Lee ¶ 32.) Appellants contend, however, Lee does not describe an
inventor at all. (See App. Br. 15.) We find this contention unpersuasive.
Apparatus claims must be distinguished from the prior art in terms of
structure. See In re Schreiber, 128 F.3d 1473, 1477–78 (Fed. Cir. 1997).
Whether the user is an inventor is immaterial to the structure of the data
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processing system recited in claim 36. We nonetheless note the Examiner
explains that Lee’s discussion of a user contemplates an attorney user or
other specific end user, which the Examiner finds includes an inventor. (See
Ans. 13–14; see also Lee ¶ 32.) As discussed above, Lee also describes user
input of invention disclosures and documentation of conception and
reduction to practice. (See Lee ¶¶ 20, 36.) Given Lee’s discussions, we
agree with the Examiner that Lee suggests an inventor user.
Appellants present further arguments distinguishing Lee from
Appellants’ invention. In particular, Appellants contend Lee does not
describe “an inventor inputting an invention disclosure in the electronic
laboratory records system.” (See App. Br. 15.) Appellants also contend
Appellants’ system does not contemplate a public user as does Lee’s system.
(See id.) Finally, Appellants contend Lee discusses data input and data
output in the context of computer hardware related to a server. (See App.
Br. 16.) As Claim 36 does not recite these argued features or define the
context in which data input and data output take place, however, Appellants’
additional arguments are not commensurate in scope with the claim.
Accordingly, we are unpersuaded of error in the Examiner’s finding that the
applied prior art teaches or suggests requesting a signature from an inventor
for input into an electronic document.
c. providing electronic documents that meet evidentiary
requirements and that authorized users can access
In finding the prior art teaches providing electronic documents that
meet evidentiary requirements and that authorized users can access, the
Examiner cites portions of Lee that discuss tracking user identities through
digital signatures or other secured identification. (See Ans. 7; see also Lee
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¶¶ 32, 42.) Appellants argue without explanation that the Examiner
misapplies Lee, which Appellants contend fails to teach the recited feature.
(See App. Br. 12.) However, absent sufficient evidence or argument
explaining why the Examiner erred, we are unpersuaded of error in the
Examiner’s finding that the applied prior art teaches or suggests providing
electronic documents that meet evidentiary requirements and that authorized
users can access. See In re Lovin, 652 F.3d 1349, 1357 (Fed. Cir. 2011)
(holding “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 a naked assertion that the corresponding elements were not
found in the prior art”).
3

d. a custodian
Arguing the applied prior art fails to teach a custodian that
(a) manages, stores, maintains, authenticates, and distributes a system that is
electronically bound to the inventor who can enter, amend, edit, affix, and
sign electronic documents and (b) authorizes a witness to read and witness
the inventor’s electronic documents, (see App. Br. 16–17), Appellants
contend without explanation that “[n]o custodian of electronic documents,
no custodian’s claimed functions, no witness and no witnessing of an
inventor[’]s disclosure is found in the Lee reference,” (see App. Br. 17). We
find Appellants’ contentions unpersuasive. Cited portions of Lee discuss
storing information in a database, (see Lee ¶¶ 15–16), displaying or
otherwise outputting the information, (see id. ¶¶ 21–22), retaining and

3
Should prosecution be continued, we leave to the Examiner to consider
whether the requirement that the records meet evidentiary requirements is
indefinite under 35 U.S.C. § 112 ¶ 2.
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organizing the information, (see id. ¶ 23), and tracking user identities
through digital signatures, (see id. ¶ 32). Lee also discusses annotating
documents and identification data for the user’s own use or for group use.
(See id. ¶ 23.) Therefore, in the absence of sufficient rebuttal to persuade us
of error, we find the Examiner’s conclusion that Lee teaches or suggests the
disputed custodian to be reasonable. (See Ans. 7–8, 14.)
Moreover, even though the Examiner identifies in Lee discussions of
the recited functions, we note that apparatus claims like claim 36 must be
distinguished from the prior art in terms of structure, not function. See
Schreiber, 128 F.3d at 1477–78. We also note that whether the user is an
inventor or a witness or any other person is immaterial to the structure of the
data processing system recited in claim 36. Finally, we note that claim 36
does not recite witnessing an inventor’s disclosure. Appellants’ contention
with respect to this argued feature is therefore not commensurate with the
scope of the claim. Without further explanation from Appellants, we are
unpersuaded of error in the Examiner’s finding that the applied prior art
teaches or suggests the claimed custodian. See Lovin, 652 F.3d at 1357.
e. storing and maintaining records that meet evidentiary
requirements
In finding the prior art teaches storing and maintaining records in a
form that meets evidentiary requirements, the Examiner points out Ginter
discusses an electronic system that provides for archiving, notarizing, and
witnessing documents. (See Ans. 15; see also Ginter, at [57], Fig. 127,
¶¶ 62, 552, 580, 675.) According to the Examiner, these discussions suggest
meeting evidentiary requirements. (See Ans. 15.) As the Specification does
not define what is required by the disputed limitation to meet evidentiary
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requirements other than referencing sections of the Federal Rules of
Evidence by way of example, and as claim 36 does not define evidentiary
requirements, we find reasonable the Examiner’s finding that Ginter’s
archiving, notarizing, and witnessing teaches or suggests the disputed
limitation. We also find reasonable the Examiner’s explanation that Ginter’s
discussions suggest modifying Lee’s system to provide for electronically
notarizing and witnessing documents in order to obtain a “higher degree of
integrity of the document[s].” (See Ans. 8.)
Disagreeing with the Examiner’s findings, Appellants contend
Ginter’s example of notarizing a contract, (see Ginter ¶ 675), is distinct from
reviewing, understanding, and witnessing an inventor’s disclosure. (See
App. Br. 20.) Appellants also contend Ginter fails to describe evidentiary
standards under Rule 75 of the Federal Rules of Evidence. (See id.) As
claim 36 does not recite these features, however, Appellants’ arguments are
not commensurate in scope with the claim. Accordingly, we are
unpersuaded of error in the Examiner’s finding that the applied prior art
teaches or suggests storing and maintaining the records in a form that meets
evidentiary requirements.
In view of the foregoing, we sustain the Examiner’s § 103 rejection of
claims 36–39.
2. Claims 30–34
Appellants argue the Examiner has erred in rejecting claim 30 because
the applied prior art fails to teach three features: (1) a relevancy filter that
filters a search result using relevancy criteria and outputs a filtered search
result of prior art; (2) a statutory analyzer that assesses an innovation with
respect to patentability or infringement of the innovation; (3) and outputting
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the assessment and providing electronic documents that meet evidentiary
requirements and that authorized users can access. We disagree with
Appellants.
a. a relevancy filter
In arguing the applied prior art fails to teach a relevancy filter that
filters a search result using relevancy criteria and outputs a filtered search
result of prior art, Appellants contend the terms “relevancy filter” and
“relevancy criteria” do not appear in Lee. (See App. Br. 21.) Appellants
also contend Lee fails to describe the recited functions of the relevancy
filter. (See id.). We find Appellants arguments unpersuasive. Although the
Examiner does not identify any portion of Lee that recites the terms
“relevancy filter” or “relevancy criteria,” these terms are not required to
show the applied prior art teaches the recited relevancy filter. Moreover,
apparatus claims like claim 30 must be distinguished from the prior art in
terms of structure, not function. See Schreiber, 128 F.3d at 1477–78. We
nonetheless note the Examiner finds that Lee discusses searching for and
retrieving data on a particular intellectual property, following links from the
given intellectual property data record, and determining product data records
relevant to the given intellectual property data. (See Ans. 9; Lee ¶ 26.) We
also note cited portions of Lee discuss data records as containing prior art
search results. (See Lee ¶ 18.) Based on Lee’s discussions, agree with the
Examiner that Lee’s product information relevant to the given patent data
records teaches or suggests the claimed relevancy filter. (See Ans. 9.)
Accordingly, we are unpersuaded of error in the Examiner’s finding that Lee
teaches or suggests a relevancy filter that filters a search result using
relevancy criteria and outputs a filtered search result of prior art.
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b. a statutory analyzer
In arguing the applied prior art does not teach a statutory analyzer that
assesses an innovation with respect to patentability or infringement of the
innovation, Appellants contend Lee fails to describe any patent statutes.
(See App. Br. 22.) Appellants also contend Lee fails to describe assessing
the patentability of an innovation from factual information input by an
inventor. (See id.) We find Appellants’ arguments unpersuasive. First,
claim 30 does not recite either of these features. Appellants’ arguments
therefore are not commensurate in scope with the claim. Second, although
the Examiner does not identify in Lee any discussion about patent statutes,
cited portions of Lee refer to legal conclusions based on the application of
law to facts, including “infringement/non-infringement determination[s].”
(See Lee ¶ 18.) Such reference in Lee suggests the application of patent
statutes. Finally, claim 30 recites in the alternative “patentability or
infringement.” Because the Examiner finds Lee teaches analysis of
infringement, (see Ans. 15), there is no need for the Examiner to also
address patentability. Accordingly, we are unpersuaded of error in the
Examiner’s finding that the applied prior art teaches or suggests a statutory
analyzer that assesses an innovation with respect to patentability or
infringement of the innovation.
c. outputting a patentability or infringement assessment,
meeting evidentiary requirements, and authorizing user
access
Referring to Appellants’ previous arguments with respect to Ginter,
Appellants argue without further explanation that the applied prior art fails
to teach outputting a patentability or infringement assessment and providing
electronic documents that meet evidentiary requirements and that authorized
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users can access. (See App. Br. 22.) We note Appellants’ previous
arguments with respect to Ginter focus on meeting evidentiary requirements.
(See id. at 20.) As discussed above, the Examiner identifies in Lee
discussions that suggest meeting evidentiary requirements. We note, as
discussed above, the Examiner also identifies in Lee discussions that teach
outputting information and tracking user identities through digital signatures.
Having no further explanation from Appellants to consider, we are
unpersuaded of error in the Examiner’s finding that the applied prior art
teaches or suggests outputting a patentability or infringement assessment and
providing electronic documents that meet evidentiary requirements and that
authorized users can access. See Lovin, 652 F.3d 1349 at 1357.
In view of the foregoing, we sustain the Examiner’s § 103 rejection of
claims 30–34.
3. Claim 35
Appellants argue the Examiner has erred in rejecting claim 35 because
the applied prior art fails to teach analyzing a comparison to assess an
innovation with respect to patentability or infringement of the innovation.
(See App. Br. 23.) As the Examiner points out, however, Barney discusses
calculating an estimated rating for a patent, where the results may be
reported as statistical probabilities of the patent being litigated, abandoned,
or reissued. (See Ans. 16; see also Barney, col. 6, ll. 38–46.) Barney’s
ratings are generated by using a database of patent information and
comparing various characteristics of a patent to a statistically-determined
distribution of the same characteristics within a given patent population.
(See Barney, at [57]; see also Ans. 16.) Therefore, we find reasonable the
Examiner’s finding that Barney’s calculating step Appellants’ claimed
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analyzing step. We also find reasonable the Examiner’s conclusion of
obviousness, explaining that one of ordinary skill in the art would have
modified Lee’s method to incorporate Barney’s calculating step in order to
provide further techniques for analyzing intellectual property information.
(See Ans. 16.)
Disagreeing with the Examiner’s findings, Appellants contend Barney
does not teach determining patentability of an innovation based on an
inventor’s input of facts relating to the innovation. (See App. Br. 25.) As
claim 35 does not recite this feature, however, Appellants’ arguments are not
commensurate in scope with the claim. Moreover, claim 35 recites in the
alternative “patentability or infringement.” Since the Examiner addresses
infringement, there is no need for the Examiner to also address patentability.
(See Ans. 16 (citing Barney, col. 6, ll. 38–46 (litigated patents)); see also
App. Br. 24 (citing Barney, col. 6, ll. 58–59 (successfully litigated patents
associated with being found valid and infringed)).) Accordingly, we are
unpersuaded of error in the Examiner’s finding that the prior art teaches or
suggests analyzing a comparison to assess an innovation with respect to
patentability or infringement of the innovation.
In view of the foregoing, we sustain the Examiner’s § 103 rejection of
claim 35.

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DECISION
The Examiner’s decision rejecting claims 30–39 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)(2011).

AFFIRMED

ELD