Ex Parte LI et al

Patent Trial and Appeal BoardAug 12, 2014

11839692 (P.T.A.B. Aug. 12, 2014)

MOD PTOL-90A (Rev.06/08) APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. 11/839,692 08/16/2007 LI, JIN CA920070045US1 EXAMINER HOFFMAN WARNICK LLC 540 Broadway 4TH FLOOR ALBANY NY 12207 AHLUWALIA, NAVNEET ART UNIT PAPER NUMBER 2166 MAIL DATE DELIVERY MODE 08/14/2014 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. UNITED STATES DEPARTMENT OF COMMERCE U.S. Patent and Trademark Office Address : COMMISSIONER FOR PATENTS P.O. Box 1450 Alexandria, Virginia 22313-1450 www.uspto.gov UNITED STATES PATENT AND TRADEMARK OFFICE _____________________________________________________________________________________ UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________________ Ex parte JIN LI and DAVID K. MODIESKA ____________________ Appeal 2012-003175 Application 11/839,692 Technology Center 2100 ____________________ Before CARLA M. KRIVAK, JASON V. MORGAN, and PATRICK M. BOUCHER, Administrative Patent Judges. BOUCHER, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Introduction Appellants appeal under 35 U.S.C. § 134(a) from a final rejection of claims 1–20. We have jurisdiction under 35 U.S.C. § 6(b). We reverse and enter new grounds of rejection against claims 9–19. Appeal 2012-003175 Application 11/839,692 2 Illustrative Claim The claimed subject matter relates to displaying ranked categories of data in a Venn diagram (Abs.). Claim 1 is illustrative and is reproduced below with a key limitation emphasized: 1. A method of managing data, the method comprising: assigning each of a plurality of entries in the data to one of a plurality of categories based on at least one of a plurality of attributes of each entry; ranking, for each criterion in a set of criteria, the plurality of categories based on the criterion and a set of entries in each category, each criterion in the set of criteria using a unique set of the plurality of attributes distinct from the at least one of the plurality of attributes corresponding to each of the plurality of categories; generating a Venn diagram for displaying the rankings, the Venn diagram including a circle for each criterion and at least one visual representation for each of the plurality of categories corresponding to at least one of the set of criteria, wherein each of the at least one visual representation comprises an emphasis corresponding to the ranking for the corresponding category and is visually associated with the circle for the corresponding criterion; and providing the Venn diagram for display to a user. References The prior art relied upon by the Examiner in rejecting the claims on appeal is: Szabo US 5,966,126 Oct. 12, 1999 Rawlings US 2007/0174252 A1 July 26, 2007 Appeal 2012-003175 Application 11/839,692 3 Rejections Claims 1–20 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Rawlings and Szabo (Ans. 5–15). Issue The dispositive issue raised by Appellants’ contentions is whether the combination of Rawlings and Szabo reasonably teaches or suggests that “each of the at least one visual representation comprises an emphasis corresponding to the ranking for the corresponding category and is visually associated with the circle for the corresponding criterion,” as recited in independent claims 1, 9, 15, and 20.1 ANALYSIS We have reviewed Appellants’ arguments in the Appeal Brief and Reply Brief, and have reviewed the Examiner’s response to Appellants’ arguments. Figure 5 of the application is reproduced below. 1 Appellants’ contentions raise additional issues. Because the identified issue is dispositive, we do not reach the additional issues. Appeal 2012-003175 Application 11/839,692 4 Figure 5 provides an example of a Venn diagram generated in accordance with the recitations of each of independent claims 1, 9, 15, and 20. In this illustration, the underscored labels “Severity,” “Comment Frequency,” and “Must Fix” provide an example of “a set of criteria” according to which categories of data are ranked. Spec. ¶ 35. The categories of data are indicated by the remaining words appearing in the Venn diagram, and their rankings based on particular criteria are identified with an emphasis indicated by font size. Id. at ¶ 34. When a particular category is ranked based on multiple criteria, it appears in the intersection region of those criteria with a font size that corresponds to its ranking according to the highest of a priority hierarchy of the multiple criteria. Id. at ¶ 38. Appeal 2012-003175 Application 11/839,692 5 Rawlings discloses using a Venn diagram to select exclusion or inclusion criteria in identifying potential subjects for a clinical trial. Rawlings ¶ 19. Appellants acknowledge that the Venn diagrams disclosed by Rawlings include partially overlapping circles, each of which corresponds to a unique criterion. App. Br. 9. But as Appellants contend, Rawlings’s Venn diagrams do not include visual representations for a plurality of categories that are distinct from the criteria. See id. at 9–10. Such distinction between criteria and categories is implicit in the claims’ requirement that the plurality of categories be ranked “for each criterion . . . based on the criterion” (emphasis added). The Examiner concedes that “Rawlings does not disclose the rankings being displayed in the Venn diagram.” Ans. 5. Instead, the Examiner relies on Szabo as disclosing the generation of a Venn diagram to display rankings. Szabo describes “a graphic interface method for manipulation of data sets in a database.” Szabo, col. 15, ll. 53–55. Included among the graphic-icon representations disclosed by Szabo are Venn diagrams used to express relationships between input data sets and “flexible output icons . . . employed to represent results ranked as to probable relevance.” Id. at col. 19, ll. 44–61. As shown in Figure 9 of Szabo, such output icons may take the form of concentric circles with the innermost circle having the greatest probable relevance. Id. at col. 20, ll. 1–4. The Examiner relies on such a graphical ranking display for the disputed limitation. Ans. 16. We disagree with the Examiner’s reasoning. As Appellants argue, “Szabo is not concerned with displaying rankings in a Venn diagram, but rather provides a graphic user interface method for representing a search of a database, which uses Venn diagrams.” App. Br. 10. The output icons Appeal 2012-003175 Application 11/839,692 6 disclosed by Szabo are not Venn diagrams and are distinct from the search representation. The Examiner has not identified a sufficiently clear teaching or suggestion of integrating these distinct portions of Szabo’s method in combination with Rawlings to reach the disputed limitation. Accordingly, we do not sustain the rejections of independent claims 1, 9, 15, and 20, nor do we sustain the rejections of the claims that depend therefrom. NEW GROUNDS OF REJECTION UNDER 37 C.F.R. § 41.50(b) Claims 9–14 Pursuant to 37 C.F.R. § 41.50(b), we enter new grounds of rejection against claims 9–14 under 35 U.S.C. § 112, first paragraph, as lacking enablement. Independent claim 9 recites a computer system having a single element, namely “at least one computing device including a component configured to manage data [by performing certain subfunctions].” The specification refers to “computing devices” generically, without description of specific structure: In any event, computer system 20 can comprise one or more general purpose computing articles of manufacture (e.g., computing devices) capable of executing program code installed thereon. Spec. ¶ 25 (emphases added). The generic term “at least one computing device including a component” acts as a placeholder that links to the functional recitation “to manage data” with the transitional phrase “configured to.” This generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function; accordingly, Appeal 2012-003175 Application 11/839,692 7 we construe this language under 35 U.S.C. § 112, sixth paragraph. See MPEP 2181. Because Appellants’ Specification does not enable every conceivable means, on a computing device, for achieving the stated purpose as claimed, we reject independent claim 9 and dependent claims 10–14 under 35 U.S.C. § 112, first paragraph, as lacking enablement. See In re Hyatt, 708 F.2d 712, 714–15 (Fed. Cir. 1983). Claims 15–19 Independent claim 15 recites “[a] computer program comprising program code stored on a computer readable medium” to enable a computer system to implement a method of managing data. The application provides the following examples of a “computer-readable medium”: “one or more portable storage articles of manufacture; one or more memory/storage components of a computing device; a modulated signal having one or more of its characteristics set and/or changed in such a manner as to encode information in the signal; paper; and/or the like.” Spec. ¶ 43 (emphasis added). We find that the term “computer readable medium” recited in claim 15 thus encompasses both non-transitory tangible media and transitory propagating signals, the latter of which are not statutory under 35 U.S.C. § 101. See In re Nuijten, 500 F3.d 1346, 1356–57 (Fed. Cir. 2007); Subject Matter Eligibility of Computer Readable Media, 1351 Off. Gaz. Pat. Office 212 (Feb. 23, 2010). Appeal 2012-003175 Application 11/839,692 8 Accordingly, we now reject independent claim 15 and dependent claims 16–19 under 35 U.S.C. § 101as directed to nonstatutory subject matter.2 DECISION The Examiner’s decision rejecting claims 1–20 is reversed. New grounds of rejection are entered pursuant to 37 C.F.R. § 41.50(b) rejecting claims 9–14 under 35 U.S.C. § 112, first paragraph, as lacking enablement, and rejecting claims 15–19 under 35 U.S.C. § 101 as directed to nonstatutory subject matter. 37 C.F.R. § 41.50(b) provides that “[a] new ground of rejection … shall not be considered final for judicial review.” This section also provides that the Appellants, WITHIN TWO MONTHS FROM THE DATE OF THE DECISION, must exercise one of the following two options with respect to the new ground of rejection to avoid termination of the appeal as to the rejected claims: 2 In the event of further prosecution, we also direct the Examiner’s attention to the framework articulated by the Supreme Court “for distinguishing patents that claim laws of nature, natural phenomena, and abstract ideas from those that claim patent-eligible applications of [these] concepts.” Alice Corp. Pty, Ltd. v. CLS Bank Int’l, 573 U.S. ___, 134 S.Ct. 2347, 2355 (2014). The first step of such analysis is to “determine whether the claims at issue are directed to one of those patent-ineligible concepts.” Id. If so, the analysis considers “whether there are additional elements that ‘transform the nature of the claim’ into a patent-eligible application.” Id. We leave it to the Examiner to determine whether the generation of a Venn diagram representation of data as recited in claims 1–20 is an abstract idea ineligible for patent protection under 35 U.S.C. § 101 within the Supreme Court’s framework. Appeal 2012-003175 Application 11/839,692 9 (1) Reopen prosecution. Submit an appropriate amendment of the claims so rejected or new Evidence relating to the claims so rejected, or both, and have the matter reconsidered by the examiner, in which event the proceeding will be remanded to the examiner. . . . (2) Request rehearing. Request that the proceeding be reheard under § 41.52 by the Board upon the same record. . . . 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). REVERSED 37 C.F.R. § 41.50(b) kme