Ex Parte Albrecht et al

Patent Trial and Appeal Board

Mar 31, 2016

11532092 (P.T.A.B. Mar. 31, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
111532,092 09/14/2006
43831 7590 03/31/2016
BERKELEY LAW & TECHNOLOGY GROUP, LLP
17933 NW Evergreen Parkway, Suite 250
BEAVERTON, OR 97006
Paul Albrecht
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.
023.P018 2239
EXAMINER
MEROUAN,ABDERRAHIM
ART UNIT PAPER NUMBER
2619
MAILDATE DELIVERY MODE
03/31/2016 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 PAUL ALBRECHT, PAUL GRIMSHAW,
JOSEPH G. HADZIMA JR., and HOO-MIND. TOONG
Appeal2014-003271
Application 11/532,092
Technology Center 2600
Before MAHSHID D. SAADAT, JOHNNY A. KUMAR, and
JON M. JURGOV AN, Administrative Patent Judges.
SAADAT, Administrative Patent Judge.
DECISION ON APPEAL
.6. .... ,1 .... ,....,-TTr'l.r-"\l\-1,....Al/'\.r'" C- "1 • ,• r'" Appeuants' appeal unaer j) u.~.L. s lj4~aJ rrom a nna1 reJecuon or
claims 1, 3, 5-11, 13, 15-19, 21, 23-26, 28, 30-36, 38, 40-44, 46, 48-51,
53, 55---61, 63, 65---69, 71, and 73-82, which are all the pending claims in
this application.2 We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
1 According to Appellants, the real party in interest is Technology Enabling
Co., LLC (Br. 4).
2 Claims 2, 4, 12, 14, 20, 22, 27, 29, 37, 39, 45, 47, 52, 54, 62, 64, 70, and 72
have been canceled.
Appeal2014-003271
Application 11/532,092
STATEMENT OF THE CASE
Introduction
Appellants' invention relates to creating a graphic representation that
depicts relationships among a set of elements (Spec. 2:2-3). Claim 1 is
illustrative of the invention and reads as follows:
1. A method comprising:
displaying a graphic depicting a family relationship
among intellectual property (IP) assets substantially in
accordance with signal data from one or more sources, wherein
said displaying includes a client browser processing on a
computing device said signal data from one or more sources, at
least with respect to said family relationship, to display said
graphic.
The Examiner's Rejections
Claims 1, 3, 5, 6, 8, 11, 13, 15, 18, 19, 21, 23, 26, 28, 30, 31, 33, 36,
38,40,43,44,46,48,51,53,55,56, 58,61,63,65, 68,69, 71, 73, 76-79,
and 82 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Davies
(US 2003/0172020 Al; Sept. 11, 2003) and Toub (US 6,674,450B1; Jan. 6,
2004) (see Ans. 2-11).
Claims 7, 32, and 57 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Davies, Toub, and Grainger (US 2002/0093528 Al; July
18, 2002) (see Ans. 11-12).
Claims 9, 16, 24, 34, 41, 49, 59, 66, and 74 stand rejected under
35 U.S.C. § 103(a) as unpatentable over Davies, Toub, and Rivette (US
2003/0046307 Al; Mar. 6, 2003) (see Ans. 12-13).
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Appeal2014-003271
Application 11/532,092
Claims 10, 17, 25, 35, 42, 50, 60, 67, and 75 stand rejected under
35 U.S.C. § 103(a) as unpatentable over Davies, Toub, Rivette, and
Delahunty (US 6,275,236 Bl; Aug. 14, 2001) (see Ans. 14--15).
Claim 80 stands rejected under 35 U.S.C. § 103(a) as unpatentable
over Davies, Toub, and Sowizral (US 2002/0063713 Al; May 30, 2002) (see
Ans. 15-16).
Claim 81 stands rejected under 35 U.S.C. § 103(a) as unpatentable
over Davies, Toub, and Bauerle (US 2006/0036639 Al; Feb. 16, 2006) (see
Ans. 16).
ANALYSIS
We have reviewed the Examiner's rejections in light of Appellants'
contentions that the Examiner erred. We disagree with Appellants'
conclusions. We highlight and address specific findings and arguments for
emphasis as follows.
Claim 1
Issue: Did the Examiner err by finding the combination of
Davies and Taub teaches "a client browser processing on a
computing device said signal data from one or more sources, at
least with respect to said family relationship, " as recited in
independent claim 1?
The Examiner finds Davies teaches displaying a graphic for depicting
a family relationship among intellectual property assets (Ans. 2-3 and 17-
19), and finds Toub teaches a client browser processing on a computing
device signal data to display a graphic (id.). Appellants contend Toub's
client browser processing is a conventional browser rendering and not the
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Application 11/532,092
claimed processing method, which requires the client processing to have
recursive analytic functionality that reduces communication latency between
the client and server (Br. 18-19). We are not persuaded of Examiner error,
because Appellants' argument is not commensurate with the scope of claim
1, which does not recite any processing that corresponds to "recursive
analytic functionality." We further agree with the Examiner's finding that
the broadest reasonable interpretation of "a client browser processing"
includes Toub's browser rendering that displays a graphic depiction of data
(Ans. 18-19 (citing Toub, col. 3, 11. 60-66 and col. 5, 11. 24--30)). In fact,
Appellants' claims and Specification do not preclude such an interpretation.
Appellants further contend that Toub does not teach processing data
with respect to a family relationship among intellectual property assets (Br.
19-20), and contend that Davies does not teach signal processing by a client
(Br. 23). Appellants' contentions do not persuade us of Examiner error
because nonobviousness cannot be established by attacking the references
individually when the rejection is predicated upon a combination of prior art
disclosures (see In re Keller, 642 F.2d 413, 425 (CCPA 1981) and In re
Merck & Co. Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986)). The Examiner
relied upon the combination of Davies and Toub to reject claim 1 as obvious
(Ans. 2-3). In that regard, the Examiner properly found that Davies teaches
displaying a graphic depicting a family relationship among intellectual
property assets (Ans. 17-18 (citing Davies i-f 206)), and that Toub teaches a
client browser processing signal data to display a graphic as discussed
above.
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Appeal2014-003271
Application 11/532,092
Claim 6
Issue: Did the Examiner err by finding the combination of
Davies and Taub teaches the "signal data to construct said
graphic is obtained by traversing links of said one or more
sources, " as recited in claim 6?
Appellants contend the Examiner erred because obtaining data by
traversing links requires executing software on a computing device that
sequentially clicks hyperlinks to collect the data (Br. 32-34). Appellants'
argument is not commensurate with the scope of claim 6, which does not
require any specific method of "traversing links," and, therefore, we are not
persuaded of Examiner error. The Examiner finds, and we agree, that the
system of Davies accesses multiple patent databases to collect intellectual
property data, and finds the broadest reasonable interpretation of "traversing
links" includes accessing (i.e., linking to) and searching these databases
(Ans. 4 and 22-23 (citing Davies i-f 168)).
Claim 8
Issue: Did the Examiner err by finding the combination of
Davies and Taub teaches "signal data inconsistencies or
anomalies in the family relationship are depicted differently
than other aspects of the family relationship, " as recited in
claim 8?
The Examiner finds the system of Davies identifies conflicts related to
a patent family (e.g., licensing or litigation issues), and allows a user to
reference these conflicts using the graphical relationship mapping
application, which includes an option to display the patent information in
different colors (Ans. 5 and 23-24 (citing Davies i-fi-1227-28 and Fig. 12a)).
Appellants contend identifying a patent conflict does not teach
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Application 11/532,092
inconsistencies or anomalies in the family relationship being depicted
differently than other aspects of the family relationship, because
"inconsistencies or anomalies" include inconsistent parent-child patent
application data, such as a missing parent-child link (Br. 35-37).
Based on the Examiner's claim interpretation and findings,
Appellants' contentions do not persuade us of Examiner error. Claim 8 does
not require inconsistent or missing parent-child application data. We agree
with the Examiner's finding that an "anomaly" in the patent relationship
includes a licensing or litigation conflict, and such a conflict can be
displayed differently by using the various display options (e.g., different
color) in the mapping application of Davies (Ans. 5 and 23-24).
Claim 76
Issue: Did the Examiner err by finding the combination of
Davies and Toub teaches ''processing document markup
language signal data to identify one or more family
relationships," as recited in claim 76?
Appellants contend Toub does not teach identifying one or more
family relationships when processing document marking language data (Br.
44--45). Appellants attack the Toub reference individually when the
rejection is predicated upon the combination of Davies and Toub (Ans. 10),
therefore, we are not persuaded of Examiner error (see In re Keller, 642 F.2d
at 425 and In re Merck & Co. Inc., 800 F.2d at 1097). We agree with the
Examiner's finding that Toub teaches processing document marking
language signal data (Ans. 24--25 (citing Toub, col. 5, 11. 9-18)), and Davies
teaches displaying a graphic depicting a family relationship among
intellectual property assets (Ans. 17-18 (citing Davies i-f 206)).
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Claim 78
Issue: Did the Examiner err by finding the combination of
Davies and Taub teaches "tracing relationship signal data, " as
recited in claim 78?
Appellants contend Davies does not teach tracing relationship data to
render the graphic, because providing mere hyperlinks is not sufficient to
meet the claim limitations (Br. 53-54). We are not persuaded. The
Examiner finds, and we agree, that the broadest reasonable interpretation of
"tracing relationship signal data" includes Davies' accessing of patent family
relationship data within various patent databases (i.e., data tracing) in order
to render a graphic displaying the relationship between applications (Ans. 3
and 25-26 (citing Davies i-f 168 and Fig. 12c)).
Claim 79
Issue: Did the Examiner err by finding the combination of
Davies and Taub teaches the ''family relationship is
substantially in accordance with continuity relationships for
said patents," as recited in claim 79?
Appellants contend the mere recognition in Davies that an asset may
be a parent asset is not sufficient to meet the limitation of a family
relationship substantially in accordance with continuity relationships (Br.
59-60). We are not persuaded of Examiner error by Appellants' contention.
We agree with the Examiner's finding that Davies depicts continuity
relationships of a patent application family (Ans. 26 (citing Davies i1206
and Fig. 12c) ), which is all that is required in claim 79.
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Claim 7
Issue: Did the Examiner err by finding the combination of
Davies, Taub, and Grainger teaches "traversing continuity
links of the PAIR system, " as recited in claim 7?
Appellants contend Grainger does not teach executing software on a
computing device that traverses the links of the Patent Application
Information Retrieval (PAIR) system to collect data (Br. 65). Appellants
attack the Grainger reference individually when the rejection is predicated
upon the combination of Davies, Toub, and Grainger (Ans. 11-12),
therefore, we are not persuaded of Examiner error (see In re Keller, 642 F.2d
at 425 and In re Merck & Co. Inc., 800 F .2d at 1097). We agree with the
Examiner's finding that Davies and Toub teach traversing links of a patent
database to collect data, as discussed with respect to claim 6 above, and we
further agree with the Examiner's finding that Grainger teaches the PAIR
system is a well-known patent database that can be accessed to collect the
desired patent application family data (Ans. 11-12 and 27).
Motivation to Combine Davies and Taub
Issue: Did the Examiner err by failing to provide a rationale for
combining Davies and Taub?
Appellants contend there is no motivation to combine Davies and
Toub, because each reference works effectively for its intended purpose, and
the problems addressed by the claimed subject matter, such as reduced
server latency, are not recognized by the prior art references (Br. 73-76).
Appellants further contend there is no reason to combine Davies and Toub,
because the Examiner is using features of each reference in a manner
differently in combination than how they function separately, specifically
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Application 11/532,092
noting the data processing in T oub is performed on a server and not on the
client device (Br. 81-83).
As discussed with respect to claim 1 above, we agree with the
Examiner's finding that Toub teaches processing signal data on a client
(Ans. 18-19). The Examiner identifies yielding faster processing of data
and increased security and privacy as the motivation to combine the client
browser processing of Toub with the system of Davies (Ans. 28). Thus, we
are not persuaded of Examiner error by Appellants' contention of lack of
motivation to combine, because we find the Examiner has provided some
articulated reasoning with some rational underpinning to support the legal
conclusion of obviousness that is sufficient to justify the combination of
Davies and Toub. See KSR Int'! v. Teleflex, Inc., 550 U.S. 398, 417-18
(2007).
Motivation to Combine Grainger with Davies and Taub
Issue: Did the Examiner err by failing to provide a rationale for
combining Grainger with Davies and Taub?
The Examiner finds combining Grainger with Davies and Toub would
provide a patent family data system with access to the PAIR system,
allowing secure access to patent applications via the internet (Ans. 12).
Appellants contend the Examiner's motivation to combine Grainger with
Davis and Toub is not a rational one, because PAIR is already accessed
securely by customers (Br. 78). Appellants' contention is not persuasive of
Examiner error, because we find the Examiner's articulated rationale, i.e.,
increasing the data accessibility of the system of Davies and Toub to include
the PAIR system (Ans. 12), to be sufficient to justify the combination of
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Application 11/532,092
Davies, Toub, and Grainger. See KSR Int'! v. Teleflex, Inc., 550 U.S. at 417-
18 (2007).
Improper Hindsight Reconstruction
Issue: Did the Examiner rely on improper hindsight
reconstruction when combining Davies and Taub?
Appellants contend the Examiner has taken the motivation to combine
Davies and Toub from Appellants' Specification, which constitutes improper
hindsight reconstruction (Br. 7 6). We are not persuaded by Appellants'
contention, because as discussed above, the Examiner has provided some
rational underpinning to support the conclusion of obviousness that was
gleaned from the prior art and not solely from Appellants' Specification.
See In re McLaughlin, 443 F.2d 1392, 1395 (CCPA 1971).
Teaching A1AJay
Issue: Did the Examiner err by combining Davies and Taub
because the references teach away from the claimed subject
matter?
Appellants contend both Davies and Toub teach the use of a server to
perform data processing rather than a client browser, therefore, the
references would lead one of ordinary skill in a different direction than the
claimed data processing (Br. 69-72). We are not persuaded by Appellants'
contention. "A reference may be said to teach away when a person of
ordinary skill, upon reading the reference, would be discouraged from
following the path set out in the reference, or would be led in a direction
divergent from the path that was taken by the applicant" (In re Kahn, 441
F.3d 977, 990 (Fed. Cir. 2006) (citations and internal quotation marks
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Application 11/532,092
omitted)). As discussed above with respect to claim 1, we agree with the
Examiner's finding that Toub teaches a client browser processing signal data
(Ans. 18-19). Therefore, we find the use of a server for any additional data
processing would not discourage one of ordinary skill from using the client
browser of Toub in the graphic rendering method of Davies.
Remaining Claims
No separate arguments are presented for the rejection of claims 3, 5,
9-11, 13, 15-19,21,23-26,28,30-36,38,40-44,46,48-51,53, 55---61,63,
65-69, 71, 73-75, 77, and 80-82 (see Br. 67), therefore, we sustain their
rejections for the reasons stated with respect to independent claim 1.
DECISION
The decision of the Examiner to reject claims 1, 3, 5-11, 13, 15-19,
21,23-'26,28,30-'36,38,40-44,46,48-51,53,55---61,63,65---69, 71,and
73-82 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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