Ex Parte Lundberg et al

Patent Trial and Appeal BoardAug 30, 2017

12605030 (P.T.A.B. Aug. 30, 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. 12/605,030 10/23/2009 Steven W. Lundberg 2385.008US1 9803 21186 7590 09/01/2017 SCHWEGMAN LUNDBERG & WOESSNER, P.A. P.O. BOX 2938 MINNEAPOLIS, MN 55402 EXAMINER DANG, THANH HA T ART UNIT PAPER NUMBER 2163 NOTIFICATION DATE DELIVERY MODE 09/01/2017 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 and THOMAS G. MARLOW Appeal 2016-002792 Application 12/605,030 Technology Center 2100 Before JOHN A. JEFFERY, BRUCE R. WINSOR, and JUSTIN BUSCH, Administrative Patent Judges. WINSOR, Administrative Patent Judge. DECISION ON APPEAL Appellants1 appeal under 35 U.S.C. § 134(a) from the final rejection of claims 1—8 and 10—20, which constitute all the claims pending in this application. We have jurisdiction under 35 U.S.C. § 6(b). Claim 9 is cancelled. We affirm and institute a new ground of rejection within the provisions of 37 C.F.R. § 41.50(b). 1 The real party in interest identified by Appellants is Schwegman Lundberg & Woessner, P.A.. App. Br. 3. Appeal 2016-002792 Application 12/605,030 STATEMENT OF THE CASE The Invention Appellants’ disclosed invention “permit[s] patent mapping.” Spec. Abstract. A database of patent portfolios and a database of patents associated with the portfolios are maintained. Id. Searching a patent portfolio generates results that include one or more patent claims that are then mapped to a patent concept. Id. Claim 1, which is illustrative, reads as follows: 1. A computer implemented method comprising: maintaining, using at least one processor, a database of patent portfolios and a database of patents, each patent stored in the database of patents associated with one or more patent portfolios stored in the database of patent portfolios; receiving, using the at least one processor, a regular expression search query associated with a first patent portfolio; searching, using the at least one processor, a plurality of patent claims in the first portfolio as a function of the regular expression search query; generating, using the at least one processor, search results, the search results including one or more patent claims associated with the regular expression search query resulting from the searching; and mapping, using the at least one processor, the one or more patent claims of the search results to a patent concept. The Rejections Claims 1—8 and 10—20 stand provisionally rejected for non-statutory obviousness-type double patenting over (1) claims 1—21 of Application 13/310,452; (2) claims 1—11 of Application 13/253,936; (3) claims 1—21 of 2 Appeal 2016-002792 Application 12/605,030 Application 13/310,368; (4) claims 1—22 of Application 13/309,200; (5) claims 1—21 of Application 13/310,322; and (6) claims 1—19 of Application 13/310,279. See Final Act. 2—5. The Examiner’s statement of rejection also provisionally rejected claims 1—8 and 10—20 over the claims 1, 4—13, and 16—25 of Application 13/310,417 (id. 2-4), now abandoned. Claims 1—8 and 10—20 stand rejected under 35 U.S.C. § 103(a)2 as being unpatentable over Lundberg et al. (US 2007/0198578 Al; Aug. 23, 2007) and Ashley et al. (US 2011/0231449 Al; Sept. 22, 2011). See Final Act. 6—10. The Record Rather than repeat the arguments here, we refer to the Briefs (“App. Br.” filed July 17, 2015; “Reply Br.” filed Jan. 19, 2016) and the Specification (“Spec.” filed Oct. 23, 2009) for the positions of Appellants and the Final Office Action (“Final Act.” mailed July 16, 2014) and Examiner’s Answer (“Ans.” mailed Nov. 19, 2015) for the reasoning, findings, and conclusions of the Examiner. Only those arguments actually made by Appellants have been considered in this decision. Arguments that Appellants did not make in the Briefs have not been considered and are deemed to be waived. See 37 C.F.R. § 41.37(c)(l)(iv) (2014). 2 All rejections are under the provisions of 35 U.S.C. in effect prior to the effective date of the Leahy-Smith America Invents Act of 2011. 3 Appeal 2016-002792 Application 12/605,030 Related Appeals Appellants did not identify any related appeals. See App. Br. 3. However, we note that 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 2015-000321 13/309,127 2015-003180 13/309,039 2015-007422 13/309,146 2016-000319 13/309,080 2016-000912 13/309,060 2016-001687 11/888,632 2016-002121 13/309,200 2016-002680 13/310,279 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. 23, 2010 Decision mailed Aug. 2, 2010 Decision mailed Jan. 31, 2014 Decision mailed Nov. 4, 2014 Decision mailed July 26, 2017 Decision mailed Sept. 23, 2016 Decision mailed June 1, 2016 Decision mailed May 27, 2016 Pending Decision mailed Jan. 19, 2017 Pending Pending Pending Decision mailed July 28, 2017 Decision mailed July 31, 2017 Pending Decision mailed Aug. 3, 2017 Decision mailed Aug. 3, 2017 Pending Pending Pending 4 Appeal 2016-002792 Application 12/605,030 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 PROVISIONAL OBVIOUSNESS-TYPE DOUBLE PATENTING REJECTIONS Because Application No. 13/310,417 was abandoned on October 26, 2016, the Examiner’s provisional double patenting rejection of claims 1—8 and 10-20 (Final Act. 2-4) based on this application is moot and, therefore, is not before us. Appellants “request consideration and reversal of the Examiner's rejections of the pending claims.” App. Br. 2. Appellants do not otherwise contest the provisional obviousness-type double patenting rejections. Accordingly, Appellants have waived appeal of the provisional obviousness- type double patenting rejections of claims 1—8 and 10-20, and we summarily sustain the provisional rejections over pending Applications 13/310,452, 13/253,936, 13/310,368, 13/309,200, 13/310,322, and 13/310,279. See Manual of Patent Examining Procedure (MPEP) § 1205.02 (9th ed. Rev. 07, Nov. 2015). 5 Appeal 2016-002792 Application 12/605,030 OBVIOUSNESS REJECTION Issues All the claims are subject to a single ground of rejection under § 103(a). See Final Act. 6—10. Appellants argue the patentability of all the claims together. See App. Br. 7—10. Therefore, we select independent claim 1 as the representative claim, pursuant to our authority under 37 C.F.R. § 41.37(c)(l)(iv). The issues presented by Appellants’ arguments are as follows: Does the Examiner err in finding Lundberg teaches or suggests generating search results including one or more patent claims, and mapping the one or more patent claims of the search results to a patent concept, as recited in claim 1? Does the Examiner err in finding Ashley teaches or suggests one or more patent claims associated with a regular expression search query, as recited in claim 1? Analysis We have reviewed Appellants’ arguments and contentions (App. Br. 7—10; Reply Br. 2) in light of the Examiner’s findings (Final Act. 6—13) and explanations (Ans. 2—8) regarding claim 1. We agree with the Examiner’s findings, conclusions, and explanations and, except as set forth below, we adopt them as our own. The following discussion, findings, and conclusions are for emphasis. The Examiner finds Figure 1 and paragraphs 24, 36, 50, and 64 of Lundberg teach mapping the one or more patent claims of generated search results to a patent concept. Final Act. 8. Appellants admit the Examiner’s 6 Appeal 2016-002792 Application 12/605,030 cited sections of Lundberg “do indeed discuss the ability to map a concept to a single claim, but [Appellants argue] these portions are devoid of any connection to a previously conducted search.” App. Br. 8. We disagree. We begin by construing claim 1. Claim 1 recites “[a] generating . . . search results, the search results including one or more patent claims associated with the regular expression search query resulting from the searching; and [b] mapping ... the one or more patent claims of the search results to a patent concept.” The phrases “the one or more patent claims” and “the search results” in step [b] have antecedent basis in step [a]. Accordingly, we agree with Appellants that the one or more patent claims of the search results mapped to a patent concept in step [b] are the one or more patent claims included in the generated search results in step [a]. Nevertheless, we are not persuaded of error. As pointed out by the Examiner, paragraph 23 of Lundberg teaches identifying a pool of patent documents to be mapped to a concept. Ans. 6. The Examiner further finds paragraph 24 of Lundberg teaches that the mapping includes assigning a reusable concept to a patent claim as a whole. Id.', see also Final Act. 8. We agree with the Examiner’s findings. Lundberg is generally directed to patent mapping. Lundberg, Title; Abstract. Patent mapping includes assigning a “concept” (i.e., a broadest possible reading) of a patent claim to the patent claim as a whole. Lundberg 124. Lundberg’s patent mapping involves first identifying a pool of patent documents to be mapped “by assignee, patent class, keyword searches, inventor information such as name or city and state of residence, title, or other information within patent documents or other source of data related to patent documents.” Id. 123. Lundberg’s independent claims in 7 Appeal 2016-002792 Application 12/605,030 the identified pool of patent documents are mapped to concepts. Id. 124. Accordingly, we agree with the Examiner that Lundberg maps the independent claims in the identified pool of patent documents (the claimed “search results”) to a concept. We do not address Appellants’ arguments regarding Ashley (App. Br. 10) for the reasons discussed below. Sua Sponte Reversal The Examiner cites the Ashley reference in the rejection under 35 U.S.C. § 103(a) of claims 1—8 and 10—20. But “[bjefore answering Graham’ s ‘content’ inquiry, it must be known whether a patent or publication is in the prior art under 35 U.S.C. § 102,—a legal question.” Panduit Corp. v. Dennison Mfg. Co., 810 F.2d 1561, 1568 (Fed. Cir.), cert, denied, 481 U.S. 1052 (1987) (citing Graham v. John Deere, 383 U.S. 1 (1966)). See also MPEP § 2141.01(111). The Ashley reference has a publication date (Sept. 22, 2011) after the filing date of the present application (Oct. 23, 2009). Ashley thus does not quality as prior art under 35 U.S.C. § 102(b), which requires Ashley to be published more than one year prior to the present application’s filing date. See 35 U.S.C. § 102(b). The present application claims priority to a provisional application (61/107,930), and thus the present application’s earliest filing date is October 23, 2008. Ashley’s filing date, however, occurs after the present application’s earliest filing date. Ashley, therefore, does not evidence the invention was described: (1) in a printed publication published in this or a foreign country before the invention by Appellants under § 102(a); or (2) in a patent or published patent application on an 8 Appeal 2016-002792 Application 12/605,030 application by another filed in the United States before Appellants’ invention under § 102(e). See 35 U.S.C. §§ 102(a), (e). For the foregoing reasons, the Ashley reference does not qualify as prior art under § 102. Accordingly, we conclude that the Examiner erred in rejecting claims 1—8 and 10-20 under 35 U.S.C. § 103(a). We, therefore, will not sustain the rejection of claims 1—8 and 10—20 under § 103(a) for reasons we raise sua sponte. This finding still begs the question: why wasn’t the fact that the Ashley reference does not quality as prior art raised by Appellants? We are frankly troubled by the fact that Appellants never presented this argument to the Examiner despite Ashley being cited by the Examiner in the rejection under 35 U.S.C. § 103(a) since Nov. 7, 2013. See Non-Final Rejection mailed Nov. 7, 2013. By not presenting this argument to the Examiner, Appellants would be provided an opportunity to belatedly argue that Ashley does not qualify as prior art regardless of whether the Board affirms or reverses the rejection made under § 103(a). But a belated argument of this sort is precisely the type of piecemeal prosecution the Office actively seeks to avoid. See, e.g., MPEP § 707.07(g) (“Piecemeal examination should be avoided as much as possible.”). As another panel of this Board noted in an Informative Opinion, belated arguments impose costs on the public (most directly, on other applicants and appellants, who must wait longer for consideration of their applications and appeals; and indirectly, on the general public, which must wait longer for the benefits provided by a healthy and vigorous patent system). Ex parte Borden, 93 USPQ2d 1473, 1477 (BPAI 2010) (informative). And as the 9 Appeal 2016-002792 Application 12/605,030 concurrence noted in another Board opinion involving a disqualified reference: [F]or us [, the Board,] to not consider such a blatant error on the part of the Examiner in relying on a disqualified reference would, in my view, jeopardize any deference we would receive upon appellate review, were we to affirm this rejection on the merits. Not only would such an affirmance lack the requisite substantial evidence to support our findings, but it would also impose costs on the Agency and the public in terms of postponing the inevitable discovery of this error later in another proceeding and the resulting costs imposed by that discovery. Ex parte Sonkin, No. 2009-006045, 2010 WL 1734355, at *4 (BPAI 2010) (non-precedential) (Jeffery, J., concurring) (emphasis added). See also Ex parte Konetski, No. 2009-007124, 2010 WL 5132679 (BPAI 2010) (non- precedential) (reversing the Examiner’s obviousness rejection based on disqualified reference despite Appellant’s failure to raise that issue). NEW GROUND OF REJECTION Claims 1—8 and 10—20 are rejected on a new ground of rejection under 35 U.S.C. § 103(a) as unpatentable over Lundberg and Prahlad et al., (US 2008/0228771 Al; Sept. 18, 2008). We agree with and adopt the Examiner’s findings (see Final Act. 6— 10) regarding the application of the teachings of Lundberg to the recitations of claims 1—8 and 10-20. In particular, as discussed above with respect to claim 1, paragraph 23 of Lundberg generates a pool of patent documents (the claimed “search results”) that includes independent claims associated with, e.g., keyword search or patent class. Lundberg teaches identifying patents 10 Appeal 2016-002792 Application 12/605,030 by performing Boolean queries using various search operators (e.g., by date, terms, document number, and patent classification). Lundberg 14. We find Lundberg and Prahlad are analogous art as both are directed to using search queries to search documents in a database, as is Appellants’ invention. See Lundberg, Abstract; Prahlad ]Hf 38—39, Figure 7. Prahlad teaches search requests may specify Boolean operations or regular expressions. Prahlad 138. It would have been obvious to one of ordinary skill in the art to substitute Lundberg’s Boolean operator with Prahlad’s regular expressions because, as evidenced by Prahlad, such a replacement is no more than “the simple substitution of one known element for another.” See KSR Int 7 Co. v. Teleflex, Inc., 550 U.S. 398, 417 (2007). DECISION The Examiner’s decision to provisionally reject claims 1—8 and 10—20 on the ground of non-statutory obviousness-type double patenting over Applications 13/310,452, 13/253,936, 13/310,368, 13/309,200, 13/310,322, and 13/310,279 is affirmed. The Examiner’s decision to reject claims 1—8 and 10—20 under 35 U.S.C. § 103(a) being unpatentable over Lundberg and Ashley is reversed. We enter a new ground of rejection for claims 1—8 and 10-20 under § 103(a) as being unpatentable over Lundberg and Prahlad. Regarding the affirmed rejection(s), 37 C.F.R. § 41.52(a)(1) provides “Appellant may file a single request for rehearing within two months from the date of the original decision of the Board.” 11 Appeal 2016-002792 Application 12/605,030 in addition to affirming the Examiner's rejection(s) of one or more claims, this decision contains new grounds of rejection pursuant to 37 C.F.R. § 41.50(h). Section 41.50( b) provides “[a] new ground of rejection pursuant to this paragraph shall not be considered final for judicial review;5 Section 41.50(b) also provides that Appellant, WITHIN TWO MONTHS FROM THE DATE OF THE DECISION, must exercise one of the following two options with respect to the new grounds of rejection to avoid termination of the appeal as to the rejected claims: (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. Should Appellant elect to prosecute further before the Examiner pursuant to 37 C.F.R. § 41.50(b)(1), in order to preserve the right to seek review under 35 U.S.C. §§ 141 or 145 with respect to the affirmed rejection, the effective date of the affirmance is deferred until conclusion of the prosecution before the Examiner unless, as a mere incident to the limited prosecution, the affirmed rejection is overcome. If Appellant elects prosecution before the Examiner and this does not result in allowance of the application, abandonment or a second appeal, this case should be returned to the Patent Trial and Appeal Board for final action on the affirmed rejection, including any timely request for rehearing thereof. 12 Appeal 2016-002792 Application 12/605,030 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). See 37 C.F.R. §§ 41.50(f), 41.52(b) (2015). AFFIRMED 37 C.F.R, $ 41.50(b) 13