Ex Parte Lundberg

Patent Trial and Appeal BoardAug 1, 2017

13253936 (P.T.A.B. Aug. 1, 2017)

United States Patent and Trademark Office 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. 13/253,936 10/05/2011 Steven W. Lundberg 2385.011US1 2445 21186 7590 08/03/2017 SCHWEGMAN LUNDBERG & WOESSNER, P.A. P.O. BOX 2938 MINNEAPOLIS, MN 55402 EXAMINER ALLEN, BRITTANY N ART UNIT PAPER NUMBER 2169 NOTIFICATION DATE DELIVERY MODE 08/03/2017 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): uspto@slwip.com SLW @blackhillsip.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte STEVEN W. LUNDBERG Appeal 2016-008030 Application 13/253,936 Technology Center 2100 Before JOHN A. JEFFERY, BRUCE R. WINSOR, and JUSTIN BUSCH, Administrative Patent Judges. JEFFERY, Administrative Patent Judge. DECISION ON APPEAL Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s decision to reject claims 12—20. We have jurisdiction under 35 U.S.C. § 6(b). Claims 1—11 were cancelled. We affirm. STATEMENT OF THE CASE Appellant’s invention maps concepts to patent claims. See generally Abstract; Spec. 85-87; Fig. 31. At least one source patent matter contained in a prior art portfolio is identified. Spec. 1 85. A prior art reference citation associated with or otherwise cited against the source patent matter is caused to “flow” to other patent matters in the prior art portfolio. Id. H 86-87. In a disclosed embodiment, an indication of the date on which the prior art reference citation is first associated with, or otherwise Appeal 2016-008030 Application 13/253,936 cited against, the source patent matter is provided. Id. 1 87. Claim 12 is illustrative with our emphasis: 12. A computer implemented method of managing prior art comprising: storing, on a storage device, a database of prior art portfolios and a database of patent matters, and a database of prior art reference citations; receiving a selection of patent matters in the database of patent matters; loading the selection of patent matters into a first prior art portfolio of the database of prior art portfolios; identifying a source patent matter in the first prior art portfolio and a prior art reference citation associated with the source patent matter; causing the prior art reference citation associated with the source patent matter to flow to and be associated with all other patent matters contained in the first prior art portfolio; and providing an indication of the date on which the prior art reference citation was caused to flow to the other patent matters and a flow level indication between the source patent matter and the other matters contained in the first prior art portfolio. RELATED APPEALS Appellant did not identify any related appeals. See App. Br. 3. However, there are at least twenty-eight (28) related appeals, which are: Anneal No. Annlication No. 2009-005709 10/128,141 2009-006404 10/874,486 2011-009966 11/061,383 2012-004166 11/061,312 2015-000319 13/309,080 2015-000321 13/309,127 Decided/Status Decision mailed Mar. 22, 2010 Decision mailed July 30, 2010 Decision mailed Jan. 29, 2014 Decision mailed Oct. 31, 2014 Decision mailed May 27, 2016 Pending 2 Appeal 2016-008030 Application 13/253,936 2015-003180 13/309,039 2015-007422 13/309,146 2016-000912 13/309,060 2016-001687 11/888,632 2016-002121 13/309,200 2016-002680 13/310,279 2016-002792 12/605,030 2016-006797 13/310,368 2016-007186 13/573,803 2016-007415 13/464,598 2016-007623 13/408,877 2016-007787 13/310,322 2017-000280 13/408,917 2017-000386 11/098,761 2017-002337 14/010,376 2017-003702 14/483,903 2017-003815 14/094,542 2017-004158 14/010,391 2017-004159 14/010,380 2017-004188 14/010,400 2017-006390 13/409,189 2017-006642 13/310,452 Decision mailed Sept. 21, 2016 Decision mailed June 1, 2016 Pending Decision mailed Jan. 17, 2017 Pending Pending Pending Pending Pending Pending Pending Pending Pending Pending Pending Pending Pending Pending Pending Pending Pending Pending 3 Appeal 2016-008030 Application 13/253,936 THE REJECTIONS The Examiner provisionally rejected claims 12, 14, 15, 19, and 20 on the ground of non-statutory obviousness-type double patenting over claims 1, 3, 6, 9, and 10 of Application No. 13/253,941. Non-Final Act. 3—6.1 The Examiner rejected claims 12—19 under 35 U.S.C. § 103(a) as unpatentable over Ashley (US 2011/0231449 Al; Sept. 22, 2011) and Germeraad (US 2002/0035499 Al; Mar. 21, 2002). Non-Final Act. 6—11. The Examiner rejected claim 20 under 35 U.S.C. § 103(a) as unpatentable over Ashley, Germeraad, and Lindh (US 2002/0022974 Al; Feb. 21, 2002). Non-Final Act. 11—12. THE PROVISIONAL DOUBLE PATENTING REJECTION Application No. 13/253,941 that the Examiner cites as the basis for the provisional double patenting rejection was abandoned on July 16, 2015—a date before that of the Examiner’s provisional rejection. Accordingly, the Examiner’s provisional rejection (Non-Final Act. 3—6) based on this application is moot and, therefore, not before us. THE OBVIOUSNESS REJECTION OVER ASHLEY AND GERMERAAD Regarding independent claim 12, the Examiner finds that Ashley causes a prior art reference citation associated with a source patent matter to flow to, and be associated with, all other patent matters contained in a first 1 Throughout this opinion, we refer to (1) the Non-Final Rejection mailed October 8, 2015 (“Non-Final Act.”); (2) the Appeal Brief filed January 8, 2016 (“App. Br.”); (3) the Examiner’s Answer mailed June 23, 2016 (“Ans.”); and (4) the Reply Brief filed August 23, 2016 (“Reply Br.”). 4 Appeal 2016-008030 Application 13/253,936 prior art portfolio. Non-Final Act. 7. According to the Examiner, Ashley’s cited prior art references propagate to related cases in paragraph 55. Id. Although the Examiner acknowledges that Ashley does not expressly provide an indication of the date on which the cited references propagate, the Examiner cites Germeraad’s Citation Frequency Graph as teaching this feature in concluding that the claim would have been obvious. Id. 8 (citing Germeraad Figure 24). Appellant argues that Ashley and Germeraad do not teach or suggest providing an indication of the date on which a prior art reference citation was caused to flow to the other patent matters as the Examiner alleges. App. Br. 6—8; see also Reply Br. 2—3. According to Appellant, Germeraad merely discloses the date a reference was cited as prior art. See id. Appellant adds that there is no proper motivation to combine Ashley and Germeraad as proposed, but rather the only such motivation appears to be from Appellant’s own specification. App. Br. 8—9. ISSUES I. Under § 103, has the Examiner erred in rejecting claim 12 by finding that Ashley and Germeraad collectively would have taught or suggested providing an indication of the date on which a prior art reference citation was caused to flow to other patent matters? II. Is the Examiner’s proposed combination supported by articulated reasoning with some rational underpinning to justify the Examiner’s obviousness conclusion? 5 Appeal 2016-008030 Application 13/253,936 ANALYSIS As noted above, claim 12 recites, in pertinent part, providing an indication of the date on which a prior art reference citation was caused to flow to other patent matters. Our emphasis underscores the fact that claim 12 does not recite indicating the date on which the reference citation actually flowed to the other patent matters, but rather the date on which the citation was caused to flow to those matters. Therefore, nothing in claim 12 precludes indications of dates with events that at least contributed to triggering this flow, even if the flow occurs on a later date. Turning to the rejection, we see no error in the Examiner’s obviousness rejection of claim 12. The Examiner relies on Ashley for teaching many elements of claim 12, including the recited (1) identifying a source patent matter in a first prior art portfolio; (2) causing prior art reference citations associated with the source patent matter to flow to, and be associated with, all other patent matters contained in the first prior art portfolio; and (3) providing a flow level indication between the source patent matter and the other patent matters contained in the first prior art portfolio. Non-Final Act. 7. According to the Examiner, Ashley’s cited references that propagate to related cases cause the cited references to flow to the related cases. Id. (citing Ashley 155); see also Ans. 3^4 (citing Ashley 1 54). We see no error in this undisputed finding. Ashley establishes linkages between patent applications so that references reported in a first patent application are reported to a related second patent application. Ashley, Abstract. Ashley allows a practitioner to add an Information Disclosure Statement (IDS) to a present case. Id. 1 54. Ashley also allows the practitioner to specify whether the IDS contains references cited in a 6 Appeal 2016-008030 Application 13/253,936 case possessing a priority relationship with the present case. Id. 1 55. To prevent migrating irrelevant material between related cases when the IDS is filed, for each reference in the IDS, Ashley automatically creates and assigns a “hops value” indicating whether cited references should propagate to related cases. Id. H 41, 55. Based on this functionality, Ashley at least suggests that the IDS has a filing date, and Ashley’s automatically-created hops values for each reference in the IDS are likewise created on that date. See Ashley 141 (“Generally, the assignment of a hops value may be automatic, e.g., created when a particular document (e.g., IDS submission) is created and filed.”) (emphasis added). Accordingly, cited references in an IDS with appropriate hops values propagate to related cases, thus at least causing those references to “flow” to those cases when the IDS is filed. In other words, filing an IDS in Ashley automatically creates associated hops values—a process that at least triggers propagating the cited references with appropriate hops values to related cases. See Ashley 1 55 (“[T]he hops count for all references should be set to zero, or any other value that signifies that cited references should propagate to directly related cases.”) (emphasis added). Notably, Ashley’s hops count is created on the date that the IDS is filed—an event that at least causes references with appropriate hop counts to flow to related cases as noted previously. See Ashley 141. Nevertheless, the Examiner acknowledges that Ashley does not expressly provide such a date-based indication, but cites Germeraad for this feature. See Non-Final Act. 8. We see no error in the Examiner’s reliance on Germeraad merely for this limited purpose. Accordingly, contrary to Appellant’s arguments (see 7 Appeal 2016-008030 Application 13/253,936 App. Br. 7—8; Reply Br. 2—3), the Examiner’s rejection is not based on Germeraad alone, but rather the collective teachings of Ashley and Germeraad—the former automatically assigning and creating hop values for each reference in an IDS upon filing. In short, indicating a date, such as that in Germeraad’s Figure 24, for filing an IDS in Ashley that automatically assigns and creates hops values would have been at least an obvious variation. Therefore, Appellant’s arguments regarding Germeraad’s individual shortcomings in this regard do not show nonobviousness where, as here, the rejection is based on the cited references’ collective teachings. See In re Merck & Co., Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986). Moreover, we see no error in the Examiner’s articulated and unrebutted reason to combine the cited references, namely to show due diligence. Ans. 4—5. On this record, we see no reason why providing an indication of the date on which the cited references were caused to flow to the related cases in the Ashley/Germeraad system would not at least contribute to showing due diligence as the Examiner proposes. On this record, then, the Examiner’s proposed combination of the cited references is supported by articulated reasoning with some rational underpinning to justify the Examiner’s obviousness conclusion. See KSR Int 7 Co. v. Teleflex, Inc., 550 U.S. 398, 418 (2007) (citing In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)). Therefore, we are not persuaded that the Examiner erred in rejecting claim 12, and claims 13—19 not argued separately with particularity. 8 Appeal 2016-008030 Application 13/253,936 THE OTHER OBVIOUSNESS REJECTION We also sustain the Examiner’s obviousness rejection of claim 20. Non-Final Act. 11—12. Because this rejection is not argued separately with particularity, we are not persuaded of error in this rejection for the reasons previously discussed. CONCLUSION The Examiner did not err in rejecting claims 12—20. DECISION The Examiner’s decision rejecting claims 12—20 is affirmed.2 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 2 We leave to the Examiner to determine whether claims 12—20 are directed to statutory subject matter under 35U.S.C. § 101. 9