Ex Parte Lundberg

Patent Trial and Appeal BoardMay 25, 2016

13309080 (P.T.A.B. May. 25, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 13/309,080 12/01/2011 Steven W. Lundberg 21186 7590 05/27/2016 SCHWEGMAN LUNDBERG & WOESSNER, P.A. P.O. BOX 2938 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. 3431.012US1 2429 EXAMINER BROWN, SHEREE N ART UNIT PAPER NUMBER 3649 NOTIFICATION DATE DELIVERY MODE 05/27/2016 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): 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 Appeal2015-000319 Application 13/309,080 Technology Center 3600 Before 1\1ICHi1~EL J. STRii~USS, HlJJ\.JG H. BUI, and il~1\1BER L. Hii~GY, Administrative Patent Judges. STRAUSS, Administrative Patent Judge. DECISION ON APPEAL Appeal2015-000319 Application 13/309,080 STATE~vfENT OF THE CASE Appellant appeals under 35 U.S.C. Â§ 134(a) from a rejection of claims 1-5. We have jurisdiction under 35 U.S.C. Â§ 6(b ). We affirm. THE INVENTION The claims are directed to a patent management system. Spec., Title. Claim 1, reproduced below with the disputed limitation emphasized in italics, is representative of the claimed subject matter: 1. A prior art date analyzer system for determining an effective date of a patent reference, the system comprising: a search engine to retrieve data from an external patent database, the data including at least one date for a patent reference stored in the database, the at least one date including one or more of a priority, filing, publication and grant date of the reference; and an analytics module, including one or more computer processors, to -receive input data relating to the qualification of the at least one date as an effective date of the patent reference based on at least one national prior art rule relating to such qualification, -analyze the data retrieved by the search engine to identify the at least one date of the reference relevant to qualify as an effective date of the patent reference, and - determine automatically, based on the input data, one or more of the priority, filing, publication and grant date as the effective date of the reference. REFERENCE The prior art relied upon by the Examiner in rejecting the claims on appeal is: Adler et al. US 2006/0173920 Al Aug. 3, 2006 2 Appeal2015-000319 Application 13/309,080 REJECTION The Examiner rejected claims 1-5 stand rejected under 35 U.S.C. Â§ 102(b) as being anticipated by Adler. Final Act. 5-7. APPELLANT'S CONTENTIONS 1. The filtering of Adler relates to the date of the innovation being assessed, not the date of the prior art, and does not disclose a prior art date analyzer system which uses prior art rules to analyze dates of a reference to determine which, of all these dates, is the effective date of the reference, as required by claim 1. App. Br. 8-9. 2. Adler's manual input of the filtering date by a user is not automatic and, therefore, fails to disclose the disputed limitation of determining automatically, based on the input data, one or more of the priority, filing, publication and grant date as the effective date of the reference as required by claim 1. App. Br. 9. 3. Adler's chartering engine 21 does not recognize the significance of extracted dates as effective prior art under a national prior art rule and, therefore, does not disclose the disputed limitation of claim 1. App. Br. 10. ANALYSIS We have reviewed the Examiner's rejections in light of Appellant's arguments the Examiner has erred. We disagree with Appellant's conclusions. We adopt as our own (1) the findings and reasons set forth by the Examiner in the action from which this appeal is taken (Final Act. 2-7) 3 Appeal2015-000319 Application 13/309,080 and (2) the reasons set forth by the Examiner in the Examiner's Answer in response to Appellants' Appeal Brief (Ans. 2---6) and concur with the conclusions reached by the Examiner. We highlight the following for emphasis. In connection with contention 1, Appellant argues Adler does not disclose a prior art date analyzer system that uses prior art rules to analyze dates of a reference to determine which, of all dates, is the effective date of the reference because, according to Appellant, the filtering date of Adler relates to the innovation being assessed, not the prior art. App. Br. 8. The Examiner responds by finding the patentability search, which eliminates documents that do not qualify as prior art based on the effective filing date of a patent application in accordance to 35 U.S.C. 102 (b) and (d), discloses determining automatically the effective date of a reference. Ans. 2-3. Appellant's argument that the filtering date of Adler relates to the innovation being assessed, not the prior art date, is unpersuasive of Examiner error because the argument is not commensurate in scope of the limitations. In particular, we find unpersuasive Appellant's argument that claim 1 requires determining which one of a plurality of prior art references dates is the effective date of the reference. Instead, claim 1 only requires analyzing data to identify at least one date of the reference qualifying as an effective date and determining that one or more of the dates is an effective date of the reference. There is no requirement for identifying a plurality of dates for each patent reference and then determining which of those plurality of dates is an effective date. Therefore Adler's disclosure of identifying prior art based on filing date or publication date (Adler i-f 99) discloses determining automatically, based on the input data, one or more of the 4 Appeal2015-000319 Application 13/309,080 priority, filing, publication and grant date as the effective date of the reference. In connection with contention 2, Appellant further argues Adler does not disclose "determining automatically, based on at least one national prior art rule one or more of the priority, filing, publication and grant date as the effective date of a reference" because Adler has a manual input of the filtering date by a user, rather than an automatic input. App. Br. 9. Examiner responds by finding Adler (i-f [0050], [0045]) recites a method that allows for the computer-automated handling of information without the interference of a person, which discloses automation of the process. Ans. 4. Appellant's argument that Adler's manual input of the filter date by a user, rather than an automatic input, does not disclose "determining automatically, based on at least one national prior art rule one or more of the priority, filing, publication and grant date as the effective date of a reference" (App. Br. 9-10) is unpersuasive of Examiner error because Appellant's argument again is not commensurate with the scope of claim 1. Claim 1 does not require the input of data be automatic, exclusively or otherwise, as argued, but only requires the determination of the effective date of the reference be automated. See In re Self, 671 F.2d 1344, 1348 (CCPA 1982) ("[A]ppellant's arguments fail from the outset because ... they are not based on limitations appearing in the claims."). Even if claim 1 did require automatic input of data, Adler discloses determining, automatically, the effective date of the reference based on automated input data; see, e.g. Adler i1 0050 describing automated handling of information without the intervention of a person applied to the patentability search described in i10099, the filtering automatically processing patent-related 5 Appeal2015-000319 Application 13/309,080 data to exclude references that do not qualify as prior art. Therefore, contrary to Appellant's argument, Adler teaches an automatic process and thusdiscloses the disputed limitation of claim 1 even if claim 1 were construed as Appellant argues. Furthermore, we note Appellant's argument is inconsistent with Appellant's own specification at i-f 46 disclosing an example of manual rather than automatic input, i.e., "input module 214 is configured to receive input from one or more user interface elements." Accordingly, for the reasons discussed supra, Appellants' contention 2 is unpersuasive of Examiner error. In connection with contention 3, Appellant further argues Adler does not disclose "automatic determination of one or more of the priority, filing, publication and grant date as the effective date of a prior art reference" because Adler's chartering engine 21 only extracts the title and dates from the prior art but does not analyze the significance of the dates as effective prior art under a national prior art rule. App. Br. 10. Examiner responds by finding Adler at i-fi-10050 and 0099 discloses computer-automated handling of information, such as a filtering process, which eliminates documents that do not qualify as prior art based on 35 U.S.C. Â§ 102(a), (d). Ans. 4--5. Appellant's argument is unpersuasive because, inter alia, Appellant fails to address the Examiner's findings in connection with Adler's disclosure at i-fi-1 99 and 100. In particular, in making only the naked assertion the disputed claim element is not found in the prior art. Appellant fails to provide sufficient evidence or argument in rebuttal to the Examiner's finding Adler's determination of whether a patent or patent publication is qualified as prior art in accordance with 35 U.S.C. Â§ 102(b) and ( d) discloses the disputed limitation. Final Act. 4. As the Examiner correctly finds, 6 Appeal2015-000319 Application 13/309,080 Adler's filter 17 eliminates documents that do not qualify as prior art against the innovation in accordance with 35 U.S.C. Â§ 102 or other statues and regulations in the United States. Id. Removing documents that are not prior art discloses determining, automatically, the effective date of the prior art reference because filtering must determine an effective date of a reference to compare with the filing date of the innovation in order to qualify or disqualify a reference as prior art. Accordingly, Appellant's contention 3 is unpersuasive of Examiner error. For the reasons supra, we sustain the rejection of independent claim 1 and, for the same reasons, the rejection of independent claim 5, which includes similar limitations, together with the rejection of dependent claims 2--4, which are not separately argued. DECISION The Examiner's decision to reject claims 1-5 is affirmed. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. Â§ 1.136(a)(l )(iv) (2009). AFFIRMED 7