Ex Parte Lundberg

Patent Trial and Appeal Board

Aug 23, 2017

13309060 (P.T.A.B. Aug. 23, 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.
13/309,060 12/01/2011 Steven W. Lundberg 3431.011US1 8361
21186 7590 08/25/2017
SCHWEGMAN LUNDBERG & WOESSNER, P.A.
P.O. BOX 2938
MINNEAPOLIS, MN 55402
EXAMINER
BROWN, SHEREE N
ART UNIT PAPER NUMBER
3649
NOTIFICATION DATE DELIVERY MODE
08/25/2017 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 2016-000912
Application 13/3 09,0601
Technology Center 3600
Before JOHN A. JEFFERY, BRUCE R. WINSOR, and
JUSTIN BUSCH, Administrative Patent Judges.
BUSCH, Administrative Patent Judge.
DECISION ON APPEAL
Appellant seeks our review under 35 U.S.C. § 134 of the Examiner’s
final decision rejecting claims 1—8, which are all the claims pending in the
application. We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.
STATEMENT OF THE CASE
Appellant’s invention is a patent management system that displays a
user interface with multiple user interface elements. See generally Abstract;
1 According to Appellant, the real party in interest is Black Hills IP
Holdings, LLC. App. Br. 2.
Appeal 2016-000912
Application 13/309,060
Spec. 84—89; Figure 4. In a disclosed embodiment, each user interface
element is a graphical or textual element that a user may interact with to
cause an application to perform an assigned action. Spec. 1 84. Claim 1 is
representative and reproduced below:
1. An interactive user interface for a patent management
system having access to at least one patent matter database and
at least one reference database, the user interface comprising:
at least one processor to implement a single interactive
user interface, the single interactive user interface comprising;
a first user interface element configured to present a
first user interface view to receive a selection of data
stored in the at least one patent matter database;
a second user interface element configured to
present a second user interface view to receive a selection
of data stored in the at least one reference database;
a third user interface element configured to present
a third user interface view to link at least one reference
stored in the at least one reference database with at least
one patent in the patent matter database;
a fourth user interface element configured to present
a fourth user interface view to receive a selection of
references for storage in the at least one reference
database, and
a fifth user interface element configured to present
a fifth user interface view to identify a bibliographic detail
of at least one of the linked references and keyword-based
content analysis of subject matter taught by at least one of
the linked references.
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Appeal 2016-000912
Application 13/309,060
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
2015-003180 13/309,039
2015-007422 13/309,146
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
2016-008030 13/253,936
2017-000280 13/408,917
2017-000386 11/098,761
2017-002337 14/010,376
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
Decision mailed July 26, 2017
Decision mailed Sept. 21, 2016
Decision mailed June 1, 2016
Decision mailed Jan. 17, 2017
Pending
Pending
Pending
Pending
Decision mailed July 28, 2017
Decision mailed July 31, 2017
Pending
Pending
Decision mailed Aug. 3, 2017
Pending
Pending
Pending
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Appeal 2016-000912
Application 13/309,060
2017-003702 14/483,903 Pending
2017-003815 14/094,542 Pending
2017-004158 14/010,391 Pending
2017-004159 14/010,380 Pending
2017-004188 14/010,400 Pending
2017-006390 13/409,189 Pending
2017-006642 13/310,452 Pending
REJECTION
Claims 1—8 stand rejected under 35 U.S.C. § 102(b) as being
anticipated by Speier (US 2007/0288256 Al; Dec. 13, 2007). Final Act. 3—
10.
CONTENTIONS
The Examiner finds that Speier discloses every recited element of
independent claim 1 including a single interactive user interface comprising
five user interface elements, each of the five user interface elements
presenting separate user interface views to perform separate functions.
Final Act. 4—7. According to the Examiner, Speier’s frames residing in a
graphical user interface correspond to the recited five user interface elements
that present a separate user interface view. Id. (citing Speier 177; Figures 8,
11). The Examiner further finds Speier’s frames in the graphical user
interface perform the separate functions as claimed. Id. (citing Speier || 47,
49-50, 53, 57-59, 61-62, 108; Figures 4, 21).
Appellant argues, among other things, that the Examiner provides no
explanation or description of which of Speier’s frames, or elements within
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Appeal 2016-000912
Application 13/309,060
the frames, correspond to each of the five user interface elements of claim 1.
App. Br. 6—7. Appellant further adds the Examiner fails to describe how the
various functions in Speier are associated with the frames of Speier’s
graphical user interface illustrated in Figures 8 and 11. Id.l. Appellant
concludes that a prima facie case of anticipation under § 102 has not been
established. Id. 12.
ISSUE
Has the Examiner met the basic requirements for establishing a prima
facia case of anticipation under § 102?
ANALYSIS
It is well settled that the burden of establishing a prima facie case of
anticipation resides with the U.S. Patent and Trademark Office (USPTO).
See In re Piasecki, 745 F.2d 1468, 1472 (Fed. Cir. 1984). That burden
includes pointing out where each and every element of the claimed
invention, arranged as required by the claim, is described identically in a
single prior art reference, either expressly or under the principles of
inherency. See generally In re Spada, 911 F.2d 705, 708 (Fed. Cir. 1990);
In re King, 801 F.2d 1324, 1326 (Fed. Cir. 1986); Lindemann
Maschinenfabrik GMBHv. American Hoist and Derrick Co., 730 F.2d 1452,
1458 (Fed. Cir. 1984).
We initially note the Examiner repeatedly points to Figures 8 and 11
of Speier as disclosing the five user interface elements configured to present
each respective user interface view, as claimed. See Final Act. 4—7; see also
Ans. 2. But Figures 8 and 11 of Speier are indicated as separate exemplary
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Application 13/309,060
embodiments. Speier || 13, 16. Further, we note the Examiner points to
various paragraphs in Speier as disclosing each of the five user interface
views’ own separate functions. See Final Act. 4—7; see also Ans. 3—5. For
example, the Examiner finds paragraphs 47, 53, 61, and 62 of Speier
disclose a first user interface view that receives a selection of data stored in
at least one patent matter database. See Final Act. 4—5; see also Ans. 3. But
paragraphs 47 and 53 of Speier (illustrated in Figure 4 of Speier and directed
to managing patent references) and paragraphs 61 and 62 of Speier
(illustrated in Figure 5 of Speier and directed to managing a patent reference
database) are separate exemplary embodiments. Speier || 9-10. It is well
settled that, to anticipate under § 102, the prior art reference “must not only
disclose all elements within the four comers of the document, but must also
disclose those elements arranged as in the claim.” Net Moneyln, Inc. v.
VeriSign, Inc., 545 F.3d 1359, 1369 (Fed. Cir. 2008) (citation and internal
quotation marks omitted). For this reason alone, the Examiner’s reliance on
different embodiments in Speier to anticipate claim 1 is problematic,
because Speier does not disclose every recited element as claimed, as part of
a single embodiment.
Moreover, the rigorous requirements of an anticipation rejection under
§102 require a one-for-one mapping of each claim limitation to the
corresponding portion of the reference, arranged as claimed, which the
Examiner must identify with particularity. “[Ajbsence from the reference of
any claimed element negates anticipation.” Kloster Speedsteel AB v.
Crucible, Inc., 793 F.2d 1565, 1571 (Fed. Cir. 1986) (citation omitted),
overruled on other grounds by Knorr-Bremse Systeme Four Nutzfahrzeuge
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Application 13/309,060
GmbHv. Dana Corp., 383 F.3d 1337 (Fed. Cir. 2004) (en banc). The Board
is a reviewing body and not a place of initial examination.
As discussed above, we find the Examiner merely points to Figures 8
and 11 as disclosing the five user interface elements configured to present
each respective user interface view. The Examiner has not identified which
frame maps to which user interface view to provide a clear, one-for-one
mapping of the limitations to Speier’s disclosure. As argued by Appellant
(see App. Br. 6—7), we are unable to identify which frames, or elements
within the frames, of Speier’s graphical user interface illustrated in either
Figure 8 or 11 correspond to which of the five user interface elements of
claim 1. Accordingly, we find the Examiner’s rejection leaves us to
speculate as to the precise details of how each argued claim limitation is
expressly or inherently described by the portions of Speier identified by the
Examiner. That we will not do here in the first instance on appeal. Nor is it
enough in an anticipation rejection that the prior art reference discloses part
of the claimed invention, which an ordinary artisan might supplement to
make the whole, or that it includes multiple, distinct teachings that the
artisan might somehow combine to achieve the claimed invention. Net
Moneyln, Inc., 545 F.3d at 1369.
For the reasons discussed above, we do not sustain the Examiner’s
rejection of claims 1—8 because we find the Examiner has not presented a
prima facie case that Speier anticipates Appellant’s claims. Because
Appellant has shown at least one error in the Examiner’s rejection, we need
not reach the merits of Appellant’s other arguments.
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CONCLUSION
We have reviewed Appellant’s arguments in the Appeal and Reply
Briefs, the Examiner’s rejection in the Final Action, and the Examiner’s
response to Appellant’s arguments in the Answer. We find Appellant’s
arguments that the Examiner erred persuasive and reverse the Examiner’s
rejections of claims 1—8.
DECISION* 1 2
For the above reasons, we reverse the Examiner’s decision to reject
claims 1—8.
REVERSED
2 We leave to the Examiner to determine whether independent claim 1 meets
the requirements of35U.S.C. § 112, first and sixth paragraphs. In
particular, we leave the following questions to the Examiner:
(1) Whether or not the phrase “at least one processor to implement” is
a generic placeholder for “means for” and invokes 35 U.S.C. § 112,
sixth paragraph. See Manual of Patent Examining Procedure (MPEP)
§ 2181(1) (9th ed., Rev. 07.2015, Nov. 2015).
(2) If the Examiner determines claim 1 does invoke 35 U.S.C. § 112,
sixth paragraph, whether claim 1 is a single means claim and subject
to an enablement rejection under 35 U.S.C. § 112, first paragraph.
See MPEP § 2164.08(a).
Although the Board is authorized to reject claims under 37 C.F.R.
§ 41.50(b), no inference should be drawn when the Board elects not to do so.
See MPEP § 1213.02.
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