Ex Parte Kim et al

Patent Trial and Appeal BoardOct 22, 2012

09912522 (P.T.A.B. Oct. 22, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE _____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD _____________ Ex parte JIN-KWAN KIM, JONG-SOO YOON, and YEA-SUN YOON _____________ Appeal 2010-000729 Application 09/912,522 Technology Center 2100 ______________ Before, DEBRA K. STEPHENS, ERIC S. FRAHM, and DAVID M. KOHUT, Administrative Patent Judges. KOHUT, Administrative Patent Judge. DECISION ON APPEAL Appeal 2010-000729 Application 09/912,522 2 This is a decision on appeal under 35 U.S.C. § 134(a) of the final rejection of claims 1, 3-7, 9-14, and 16-18.1 We have jurisdiction under 35 U.S.C. § 6(b). We reverse the Examiner’s rejection of these claims. INVENTION The invention is directed to a method and computer-based system for analyzing and utilizing intellectual property information through the use of a search strategy and by accessing Internet websites to search for and collect intellectual property information. Spec. 3-6. Claim 1 is representative of the invention and is reproduced below: 1. A method for analyzing and utilizing intellectual property (IP) information, comprising steps of: (a) registering search strategy formulas for extracting IP information into a IP information extraction unit; (b) accessing and searching Internet websites that provide IP information based on the registered search strategy formulas, and extracting first IP information according to the search; (c) converting the first IP information to a standard form and storing the first IP information, and transmitting the first IP information converted in the standard form to a research center analyzing unit; (d) discarding the first IP information upon a determination by the research center analyzing unit that the first IP information is not related to at least one project accessible by the research center analyzing unit; (e) if the first IP information is determined to include IP information that is related to the least one project, accessing the Internet websites and extracting second IP information corresponding to the first IP information upon a request for detailed information; and 1 Claims 2, 8, and 15 were previously cancelled. Appeal 2010-000729 Application 09/912,522 3 (f) converting the second IP information to the standard form and storing and transmitting the second IP information converted in the standard form to the research center analyzing unit, wherein the step (c) includes steps of: determining if third IP information has been received from the research center analyzing unit, the third IP information including technical analyses and opinion contents; and storing the third IP information upon receiving the third IP information; and wherein the IP information extraction unit stores a plurality of predetermined keywords. . REFERENCES Unger US 5,721,910 Feb. 24, 1998 Walker US 5,862,223 Jan. 19, 1999 Ohtsuka US 6,088,765 July 11, 2000 Adler US 2003/0033295 A1 Feb. 13, 2003 REJECTIONS AT ISSUE Claims 4-14 and 16-18 are rejected under 35 U.S.C. § 101 as being directed to non-statutory subject matter.2 Ans. 4-6. Claims 1 and 3 are rejected under 35 U.S.C. § 103(a) as being unpatentable over the combination of Unger and Adler. Ans. 6-11. 2 The Examiner’s statement of the rejection includes claim 15. Ans. 4. As this claim has been cancelled, we have removed it here. Appeal 2010-000729 Application 09/912,522 4 Claims 4-7, 9-14, 16, and 17 are rejected under 35 U.S.C. § 103(a) as being unpatentable over the combination of Unger, Adler, and Walker. Ans. 11-27. Claim 18 is rejected under 35 U.S.C. § 103(a) as being unpatentable over the combination of Unger, Adler, Walker, and Ohtsuka. Ans. 27-29. ISSUES Did the Examiner err in finding that claims 4-14 and 16-18 are directed to non-statutory subject matter? Did the Examiner err in finding that the combination of Unger and Adler teaches or suggests transmitting the first and second IP information converted in the standard form to a research center analyzing unit?3 ANALYSIS 35 U.S.C. § 101 rejection Claims 4-14 and 16-18 contain claim language that includes a variety of different “computer units” including a “research center analyzing unit.” Appellants argue that the claims contain statutory subject matter consistent with In re Bilski because the term “computer” associates hardware to the functionality of the “units.” App. Br. 9. The Examiner finds that there is nothing in Appellants’ Specification that defines the term “computer units.” Ans. 31. As such, the Examiner finds that, since a computer is required to execute software and a unit is software, the designation “computer unit” does not necessarily limit the units to hardware. Ans. 31. Instead, 3 Appellants make additional arguments with respect to claims 1, 3-7, 9-14, and 16-18. App. Br. 11-16. We will not address the additional arguments as this issue is dispositive of the appeal. Appeal 2010-000729 Application 09/912,522 5 “computer unit” can be interpreted broadly to encompass purely software. Ans. 5. We disagree. Appellants’ Specification, on page 11, requires the research center analyzing unit 500 to have a plurality of project duty PCs 510, i.e., personal computers, and a plurality of research center PCs 520. See also Figure 1. Therefore, while we agree the Examiner that the term “computer unit” can be interpreted to encompass software, we find that taking a broad, but reasonable, interpretation in light of Appellants’ Specification requires at least the research center analyzing unit to be interpreted as encompassing hardware. Thus, we agree with Appellants that the claim contains statutory subject matter and we cannot sustain the Examiner’s rejection of claims 4-14 and 16-18. 35 U.S.C. §103(a) rejections Claim 1 Claim 1 requires transmitting first IP information and second IP information to a research center analyzing unit after converting the information into a standard form. Independent claims 4 and 11 contain a similar limitation. Claims 3, 5-7, 9, 10, 12-14, and 16-18 depend upon one of independent claims 1, 4, and 11. Appellants argue that neither Unger nor Adler teaches this limitation because a research center analyzing unit is not the same as a graphical interface because a graphical interface does not analyze information, it simply displays information.. App. Br. 11. The Examiner interprets a “research analyzing unit” as “any ‘unit’ which would allow ‘analysis’ to be performed” and, thus, a graphical interface as taught by Unger. Ans. 33.However, we disagree. Taking the broad, but reasonable interpretation of “research center analyzing unit” in light of the Appeal 2010-000729 Application 09/912,522 6 Specification, we find that the “research center analyzing unit” classifies and analyzes IP information. The Examiner does not provide sufficient evidence, nor do we find, that Unger’s graphical interface performs any analysis or classification. The additional references were not cited to teach or suggest this limitation and we will not engage in any inquiry as to whether these additional references cure the noted deficiencies. As such, we cannot sustain the Examiner’s rejection of claims 1, 3-7, 9-14, and 16-18. CONCLUSION The Examiner erred in finding that claims 4-14 and 16-18 are directed to non-statutory subject matter. The Examiner erred in finding that the combination of Unger and Adler teaches or suggests transmitting the first and second IP information converted in the standard form to a research center analyzing unit. SUMMARY The Examiner’s decision to reject claims 4-14 and 16-18 under 35 U.S.C. § 101 and claims 1, 3-7, 9-14, and 16-18 under 35 U.S.C. § 103(a) is reversed. REVERSED tj