Ex Parte Kloppers

Patent Trial and Appeal Board

Apr 22, 2016

12332011 (P.T.A.B. Apr. 22, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/332,011 12/10/2008 Cornelius Petrus (Peter) Kloppers
68242 7590 04/26/2016
FIALA & WEA VER P.L.L.C.
C/O CPA GLOBAL
P.O. BOX 52050
MINNEAPOLIS, MN 55402
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.
2007.0025US 3687
EXAMINER
COPPOLA, JACOB C
ART UNIT PAPER NUMBER
3621
NOTIFICATION DATE DELIVERY MODE
04/26/2016 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):
DOCKETING@CPAGLOBAL.COM
docketing@fwiplaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte CORNELIUS PETRUS (PETER) KLOPPERS
Appeal2013-009035
Application 12/332,011
Technology Center 3600
Before ANTON W. PETTING, TARA L. HUTCHINGS, and
MATTHEWS. MEYERS, Administrative Patent Judges.
PETTING, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE1
Cornelius Petrus (Peter) Kloppers (Appellant) seeks review under
35 U.S.C. § 134 of a final rejection of claims 15-24, the only claims pending
in the application on appeal. We have jurisdiction over the appeal pursuant
to 35 U.S.C. § 6(b).
1 Our decision will make reference to the Appellant's Appeal Brief ("Br.,"
filed March 27, 2013) and the Examiner's Answer ("Ans.," mailed April 16,
2013), and Final Action ("Final Act.," mailed February 27, 2012).
Appeal2013-009035
Application 12/332,011
The Appellant invented an automated system for document submission
that mitigates intervention from a practitioner. Specification 1: Technical
Field.
An understanding of the invention can be derived from a reading of
exemplary claim 15, which is reproduced below (bracketed matter and some
paragraphing added).
15. A computer system comprising:
[ 1] a client machine with a processor unit in communication
with memory;
[2] a request manager in communication with the memory,
the request manager to monitor a submission deadline
of at least one patent related electronic document
for a patent application
to a patent electronic filing application;
[3] an integration manager in communication with the request
manager and responsive to receipt of a communication from the
request manager
indicating the submission deadline prior to the deadline,
the integration manager to:
[ 4] receive a compilation of at least one document
in an electronic format acceptable
from a storage device
and
in communication with the processor;
[5] extract account information associated with the
retrieved document;
[6] request login into an electronic account
associated with the document with the extracted
account information,
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Application 12/332,011
and
including submission of a digital certificate
and an associated valid password for the
account to the recipient server;
[7] responsive to a successful login request,
automatically extract case details from the
compiled document
and
populate appropriately marked fields of a
patent submission application executing on a
recipient server
with the extracted case details from
the compiled document;
[8] a receipt generated and electronically returned to a client
machine in communication with the recipient server responsive
to completion of the case detail extraction and population, and
valid submission of the compiled document to the patent
submission application.
The Examiner relies upon the following prior art:
Grainger US 2002/0059076 Al May 16, 2002
What you need to know about EFS-Web, AIPLA Online Program (March
24, 2006) (hereinafter "EFS").
Claims 15-24 stand rejected under 35 U.S.C. § 112, first paragraph, as
not enabling a person of ordinary skill in the art to make and use the claimed
subject matter from the original disclosure.
Claims 15-24 stand rejected under 35 U.S.C. § 112, second paragraph,
as failing to particularly point out and distinctly claim the invention.
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Appeal2013-009035
Application 12/332,011
Claims 15----24 stand rejected under 35 U.S.C. § 103(a) as unpatentable
over Grainger and EFS.
ISSUES
The issues of written description and indefiniteness tum primarily on
whether the Appellant expressed limitations as a nonce word plus function
and if so, whether the Specification contains adequate structural support.
The issues of obviousness tum primarily on whether it was predictable for a
patent office to use automation tools that someone submitting an application
to the patent office would use.
FACTS PERTINENT TO THE ISSUES
The following enumerated Findings of Fact (FF) are believed to be
supported by a preponderance of the evidence.
Facts Related to the Prior Art
Grainger
01. Grainger is directed to facilitating the patent preparation and
filing process. Grainger, para. 6.
02. Grainger describes a smart, electronic invention disclosure form
to be filled out by the inventor. The filled-out invention
disclosure is transmitted in electronic form to a person designated
to review the invention disclosure. An electronic file is created
using information from the invention disclosure either when the
disclosure is started by a user (e.g., inventor) or when it is
submitted for consideration. The smart disclosure form may
actively prompt an inventor to provide information related to best
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Application 12/332,011
mode, enablement, and inventor identification. The completed
smart disclosure form may be converted to a patent application or
defensive (or technical) publication by placing information from
pre-selected fields in the invention disclosure form to pre-selected
locations in the patent application, or defensive publication,
template. The patent application, or defensive publication, may be
submitted electronically to the appropriate agency, e.g., the patent
office or publisher, and such submission may trigger automatic
calendaring of various reminders and deadlines. Grainger, para. 7.
03. Grainger describes scanning papers received from technology
developers, patent attorneys, and patent offices into a computer-
readable format using optical character recognition ("OCR")
software to create two versions of the document: an image version
and a text version created by the OCR software. The OCR
software is calibrated to recognize particular fields within
common Patent Office forms to capture data from those forms so
that appropriate data (e.g., due dates, Examiner's name, Applicant,
application number, etc.) can be parsed and entered into a
database. The scanned fields of various Patent Office forms then
are mapped along with the document type (as determined from a
form recognition sequence) to enable the system to determine
appropriate docketing deadlines. Once scanned into a computer-
readable format, communication between the IP data processing
system and technology developers can proceed in a manner that,
from the standpoint of a technology developer, seems entirely
paperless. Grainger, para. 146.
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Application 12/332,011
04. Grainger describes populating specific fields of the form as
appropriate. For example, if the user is working on a filing for a
particular case and creates a Transmittal Form for that filing,
creation of the Transmittal Form Document Entity within the
context of that case and that filing will cause the inventor, Patent
Office Application Number, external and/or internal docket
number, invention title, filing date, art unit, and Examiner name
fields to be populated from the attributes of the case. The
underlying document file is also created for further preparation
and finalization by the user. The system will prompt the user for
specific information for unpopulated fields or confirmation (and
validation) of populated fields. Grainger, para. 154.
05. Grainger describes creating a new docket entry for each deadline
or due date that reflects the action that needs to be resolved by the
deadline. When documents are received electronically by the
system, appropriate docket entries are created automatically.
Grainger, para. 164.
06. Grainger describes routing rules previously entered through a
setup process determine what sequence of events are triggered
once the invention disclosure is entered. For example, according
to one possible set of routing rules, where an inventor who fills
out the invention disclosure lists several other co-inventors, the
invention disclosure is given a unique identification number and
routed to each inventor for approval or modification, as well as to
an appropriate engineering manager. Once approved by each of
these parties, a copy of the disclosure is archived, date-stamped
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Application 12/332,011
EFS
and locked to prevent further changes. In one embodiment
discussed in more detail below, IP data processing system 100
tracks the history of all versions of the invention disclosure data
entered by each inventor or participant. The invention's history
may then be tracked for purposes of establishing conception and
diligence in reduction to practice which may be useful information
in subsequent prosecution or interference proceedings. The
completed disclosure data may then be forwarded to an in-house
attorney for review and, once attorney approval is obtained,
automatically converted into a provisional application, non-
provisional application, or defensive publication. Non-provisional
applications may be automatically filed in the USPTO using the
currently established electronic filing procedure; other
applications may be filed by mail. For provisional applications,
an appropriate message may then be routed to the patent lawyer
assigned to prepare the non-provisional application. Grainger,
para. 168.
07. EFS is directed to the USPTO Electronic Filing System. EFS
Introduction.
08. EFS describes the USPTO sending a filing receipt to the
applicant. EFS 5.
09. EFS describes entering a digital certificate as an identifier along
with a password to login to the system. EFS 19.
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Application 12/332,011
ANALYSIS
Claims 15-24 rejected under 35 U.S. C. § 112, first paragraph, as not
enabling a person of ordinary skill in the art to make and use the claimed
subject matter from the original disclosure
The Examiner rejected the claims for reciting claim limitations as
means-plus-function without providing sufficient detail in the Specification.
The proper rejection is under 35 U.S.C. § 112, second paragraph.
Claims 15-24 rejected under 35 U.S. C. § 112, second paragraph, as failing
to particularly point out and distinctly claim the invention
The Examiner rejects the claims on the basis that the claims invoke 35
U.S.C. § 112, sixth paragraph, but there is no corresponding structure for
such limitations in the Specification. Final Act. 3---6. Appellant argues the
limitations do not invoke 35 U.S.C. § 112, sixth paragraph, and the
Specification supports such structure in any event. App. Br. 5-8.
The limitations at issue are the request manager and integration manager
of claim 15. Each is followed by a functional rather than structural
recitation. The first issue is whether these limitations invoke 35 U.S.C.
§ 112, sixth paragraph.
The standard is whether the words of the claim are understood
by persons of ordinary skill in the art to have a sufficiently
definite meaning as the name for structure. When a claim term
lacks the word "means," the presumption can be overcome
and§ 112, para. 6 will apply if the challenger demonstrates that
the claim term fails to "recite sufficiently definite structure" or
else recites "function without reciting sufficient structure for
performing that function."
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Williamson v. Citrix Online, LLC, 792 F.3d 1339, 1349 (2015) (citations
omitted). Here the word "manager" like the word "module" in Williamson,
imparts no meaning of structure. Indeed a manager is simply one who
performs the function of managing. The term "manager"
is simply a generic description for software or hardware that
performs a specified function." Generic terms such as
"mechanism" "element" "device " and other nonce words that
' ' '
reflect nothing more than verbal constructs may be used in a
claim in a manner that is tantamount to using the word "means"
because they "typically do not connote sufficiently definite
structure" and therefore may invoke § 112, para. 6.
Id. at 1350. The prefixes "request" and "integration" do not impart structure
into the term "manager." These words do not describe a sufficiently definite
structure. Although the "request manager" and "integration manager" are
described in a certain level of detail in the written description, the written
description fails to impart any structural significance to the term. At bottom,
we find nothing in the Specification or prosecution history that might lead us
to construe that expression as the name of a sufficiently definite structure as
to take the overall claim limitation out of the ambit of 35 U.S.C. § 112, sixth
paragraph. Id. at 1351.
Appellant does not argue that the word "manager" connotes structure,
but instead argues that Figure 5 shows that both managers reside in memory
and memory is sufficient structure to avoid 35 U.S.C. § 112, sixth paragraph.
Appellant has this syllogism backwards. It is the words of the claim that
must connote sufficient structure and if not, then structure must be shown in
the Specification. An implementation in the Specification that by such
implementation happens to include structure cannot be the mechanism for
showing the supposed nonce word itself connotes structure.
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We are not persuaded by Appellant's argument that the memory
described in the Specification is sufficient structural support under 35 U.S.C.
§ 112, sixth paragraph. App. Br. 7. The functions are performed by some
algorithm implemented in hardware or software. Spec. 13.
For means-plus-function limitations where the disclosed
structure is a computer programmed to implement an algorithm,
the patent must disclose enough of an algorithm to provide the
necessary structure under 35 U.S. C. § 112 i-f 6. See Finisar
Corp. v. DirecTV Grp., Inc., 523 F.3d 1323, 1340 (Fed. Cir.
2008). The patentee may express this algorithm in any
understandable manner, including as a flowchart, so long as
sufficient structure is disclosed. Id.; see, e.g., AllVoice
Computing PLC v. Nuance Commc 'ns, Inc., 504 F.3d 1236,
1245 (Fed. Cir. 2007). "This court does not impose a lofty
standard in its indefiniteness cases." Finisar, 523 F.3d at 1341.
Sufficient structure must simply "permit one of ordinary skill in
the art to know and understand what structure corresponds to
the means limitation" so that he may "perceive the bounds of
the invention." Id. at 1340-41.
In re Aoyama, 656 F.3d 1293, 1297-98 (Fed. Cir. 2011). There must be at
least one structure actually disclosed, not merely implied, as being obvious
to one of ordinary skill. Simply pointing to parts of a generic computer such
as the memory that holds the algorithm is insufficient. WMS Gaming, Inc. v.
Int'l Game Tech., 184 F.3d 1339, 1349 (Fed. Cir. 1999). We cannot look
beyond the portions of the Specification pointed to by the Appellant for such
supporting structure. In re Aoyama, 656 F.3d at 1298.
Thus, we conclude that the request and integration managers do invoke
35 U.S.C. § 112, sixth paragraph, and that no supporting structure for
describing the function is described in the Specification.
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Appeal2013-009035
Application 12/332,011
Claims i5-24 rejected under 35 U.S.C. § i03(a) as unpatentable over
Grainger and EFS
We are not persuaded by the Appellant's argument that the "recited steps
positively recites [sic] automatically login into an electronic account based
on extracted account information." App. Br. 10. As Appellant contends, the
pertinent limitations are "integration manager to: ... extract account
information associated with the retrieved document; request login into an
electronic account associated with the document with the extracted account
information, including submission of a digital certificate and an associated
valid password for the account to the recipient server." Id. The word
"automatically" is not in the limitation. No implementation for requesting
login is recited or narrowed. The limitations only request a login; they do
not perform the login. The limitations do not require a computer to copy the
actual bit stream extracted from the document into a login procedure.
The limitations do recite that when the login occurs, the digital
certificate and password are submitted. EFS shows that these fields are
indeed part of the login procedure. But claim 15 only recites that the data
for those fields is submitted, not where the submission comes from or how
the submission is executed. No implementation for how the login is
performed with the information is recited and the information is not recited
as being a machine produced copy from the extraction results, only that the
content be the same. The claim does not require that the digital certificate
and password be part of the extracted information, and indeed the
Specification describes retrieving those data items instead based on an
extracted customer number. Spec. para. 160.
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The precursor limitation of "the integration manager to" does no more
than require some manner of influence, so simply bringing up a login screen
is within the scope. It is not even required that the login screen be brought
up without human intervention. All that is required is that the logic that
brings up the login screen be thought of as part of an integration manager.
And finally, even were the limitation construed to require automatically
performing the login without human intervention, it is generally obvious to
perform a known manual procedure automatically where the technology for
doing so is already known. Our reviewing court stated in Leapfrog
Enterprises Inc. v. Fisher-Price Inc., 485 F.3d 1157, 1163 (Fed. Cir. 2007)
that one of ordinary skill in the art would have found it obvious to combine
an old electromechanical device with electronic circuitry
to update it using modem electronic components in order to gain the
commonly understood benefits of such adaptation, such as decreased size,
increased reliability, simplified operation, and reduced cost. ... The
combination is thus the adaptation of an old idea or invention ... using
newer technology that is commonly available and understood in the art. We
are not persuaded by the Appellant's argument that Grainger only extracts
data for docketing and not for patent office forms. App. Br. 11. The only
limitation in the claim for which this is relevant is in limitation [7] reciting
populating fields on a recipient server, which is not necessarily the same
recipient server as in limitation [ 6] because limitation [7] does not narrow
which recipient server is recited. We note, therefore, that the referral to the
recipient server in limitation [8] cannot be used to narrow the construction of
the server in limitation [7] because limitation [8] does not recite which of the
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servers in limitations [6] and [7] is being referred to. Thus, Grainger's
docketing server is within the scope of limitation [7].
In any event, as Grainger already describes the benefits and
implementation mechanisms for such data extraction, the parallel context
within a patent office would be reason enough for one of ordinary skill to
see those same benefits and use the known technology. The only difference
argued is the context, not the steps or structure. The U.S. Patent and
Trademark Office (USPTO) is staffed with those of at least ordinary skill
who would readily see the benefits described by Grainger.
To the extent Appellant is arguing the specific data Grainger extracts is
not what the USPTO would use, we find that at least Grainger's extracted
inventor, Patent Office Application Number, external and/or internal docket
number, invention title, filing date, art unit, and Examiner name fields would
be used by the US PTO.
We are not persuaded by the Appellant's argument that because
"Grainger discloses preparing form based document file for further
preparation and finalization by the user and discloses prompting the user for
specific information for unpopulated fields, Grainger teaches away from the
recited claim." App. Br. 11. Appellant appears to be arguing that because
Grainger populates some fields based on user input, Grainger teaches away
from using extracted data. But the use of two modes of data entry, manual
input and automated extraction, does not teach away from either mode.
Instead, such a use describes both modes as complementary with each other.
The claims do not preclude such complementary data entry.
We are not persuaded by Appellant's argument that the references
cannot be combined because there is no suggestion to automatically login
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with extracted data (App. Br. 11-12) for the same reasons we found the
arguments regarding automatic login unpersuasive supra.
CONCLUSIONS OF LAW
The rejection of claims 15-24 under 35 U.S.C. § 112, first paragraph, as
not enabling a person of ordinary skill in the art to make and use the claimed
subject matter from the original disclosure is improper.
The rejection of claims 15-24 under 35 U.S.C. § 112, second paragraph,
as failing to particularly point out and distinctly claim the invention is
proper.
The rejection of claims 15-24 under 35 U.S.C. § 103(a) as unpatentable
over Grainger and EFS is proper.
DECISION
The rejection of claims 15-24 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). See 37 C.F.R.
§ 1.136(a)(l)(iv) (2011).
AFFIRMED
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