Ex Parte Lundberg et al

Patent Trial and Appeal Board

Jan 29, 2014

11061383 (P.T.A.B. Jan. 29, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
__________

Ex parte STEVEN W. LUNDBERG, THOMAS F. BRENNAN,
JANAL M. KALIS, SHAL JAIN, and PRADEEP SINHA1
__________

Appeal 2011-009966
Application 11/061,383
Technology Center 2100
__________

Before DEMETRA J. MILLS, ERIC GRIMES, and TINA E. HULSE,
Administrative Patent Judges.

HULSE, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 involving claims relating to
electronically managing the citation of information disclosure documents to
patent offices. The Examiner has rejected the claims as anticipated under
35 U.S.C. § 102(b). We have jurisdiction under 35 U.S.C. § 6(b).
We reverse and enter a new ground of rejection.

1 Appellants identify the Real Party in Interest as FoundationIP, LLC.
(App. Br. 1.)
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STATEMENT OF THE CASE
Patent practitioners are typically involved in drafting and prosecuting
numerous applications. (Spec. at 2:23-25.) “Each of these must be carefully
tracked . . . so that important status information . . . [is] not overlooked.”
(Id. at 2:25-28.) Moreover, “patent attorneys have to meet the duties of
disclosure of prior art and other pertinent documents to the US and other
patent offices around the world.” (Id. at 3:1-3.) Accordingly, the claimed
invention relates to methods and systems for “electronically managing the
citation of information disclosure documents to one or more patent offices.”
(Id. at 3:6-7.)
Independent claims 1, 2, and 4 are the only claims on appeal. Claims
1 and 2 are reproduced below:
1. A method comprising:
maintaining a database that specifies prior art
documents that are associated with a first information
disclosure document related to a first patent application
file;
providing a second database comprising a second
information disclosure document that is related to a
second patent application file;
automatically determining whether the first
application file is one of priority related to the second
application file or subject matter related;
automatically determining whether key words
from one of the prior art documents are related to text of
the second application file; and
if the first application file is one of priority related
to the second application file or subject matter related,
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and if key words from one of the prior art documents are
related to text of the second application file, then
automatically relating prior art data from the information
disclosure document to the second information disclosure
document.
2. A method comprising:
keeping a database that specifies identifying data
for a plurality of information disclosure documents
related to a plurality of patent matters; and
automatically relating an information disclosure
document related to a first matter to a second matter and
recording the relation, wherein the automatic relating is
based on at least one factor selected from the group
comprising whether the disclosure document was cited
by a government patent agency, the frequency with
which the disclosure document was cited by a
government patent agency, and a categorization of the
disclosure document.
Claim 4 is directed to a “machine-readable medium having computer-
executable instructions for performing a method, comprising” the same steps
recited in claim 1.
The claims stand rejected under 35 U.S.C. § 102(b) as anticipated by
Grainger.2 (Ans. 3-5.)
DISCUSSION
The Examiner has rejected each of the claims as anticipated by
Grainger. Grainger teaches a “computer-implemented method of managing
invention disclosure statements (‘IDS’) associated with meeting the

2 Grainger et al., US 2002/0065675 A1, published May 30, 2002.
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disclosure requirements for patent applications in a patent office.” (Grainger
¶ 36.) The method disclosed in Grainger allows a user to search potentially
relevant prior art and “identify relevant electronic documents for disclosure
to a patent office.” (Id. ¶ 38.) Once the user has identified a relevant prior
art reference, embodiments of Grainger “automatically extract relevant
portions of the reference information from the electronic document into an
electronic [IDS].” (Id. ¶ 39.)
Grainger also allows a user to cross-reference electronic documents
between cases so that a user can “access related cases to examine the
electronic reference documents associated with the other cases.” (Id. ¶ 121.)
According to Grainger, “the first step in cross referencing related cases may
optionally be to search for related cases using case search page 1500. . . .
Additionally, a user may search using priority information 1520. A search
button 1530 is provided to activate the search.” (Id. ¶ 122.)
Appellants assert that Grainger fails to teach “automatically
determining whether the first application file is one of priority related to the
second application file or subject matter related,” recited in claim 1 (App.
Br. 8-10.) The Examiner relied on Grainger’s cross-referencing feature as
disclosing this limitation. (Ans. 5-6.) The Examiner concluded that “by
activating this cross referencing feature, the Grainger’s system is
determining all the related subject matter [e.g. common investors] or all the
priority related matter [e.g. parent cases having related continuations] and
displaying all the electronic reference documents associated with the first
case and the other case.” (Id. at 6, alterations in original.)
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We disagree with the Examiner’s characterization of Grainger. As
Appellants note, “the Grainger user identifies related patent cases based on
his or her discretion.” (App. Br. 10.) Consistent with that, Grainger teaches
that the cross-referencing feature “allows a user to access related cases to
examine the electronic reference documents associated with the other cases.”
(Grainger ¶ 121.) To determine which cases are related, the user must
initiate the cross-referencing feature by activating a search based on priority
information. (See id. ¶ 122.) Because the user must initiate the search, we
find that Grainger does not expressly or inherently teach “automatically
determining whether the first application file is one of priority related to the
second application file or subject matter related.” (Claim 1, emphasis
added.)
Accordingly, we reverse the Examiner’s anticipation rejection of
claim 1. Because the same limitation appears in claim 4, we reverse the
Examiner’s anticipation rejection for the same reason.
Regarding claim 2, Appellants argue that Grainger does not teach
“automatically relating an information disclosure document related to a first
matter to a second matter . . . , wherein the automatic relating is based on at
least one factor selected from the group comprising whether the disclosure
document was cited by a government patent agency.” (App. Br. 15-17.) In
addition to the cross-referencing embodiment of Grainger, the Examiner
found that Grainger “may relate a first case to another case with a list of
references included in a form 1449 and a form 892.” (Ans. 8-9) (citing
Grainger ¶ 113.)
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Once again, we do not find the Examiner’s reasoning persuasive. As
explained above, the cross-referencing feature is not “automatic,” as it
requires the user to initiate the search for related cases. Moreover, we agree
with Appellants that paragraph 113 of Grainger “merely mentions that a
table stores electronic references cited by a patent office for a particular
patent case.” (App. Br. 17.) That is, Grainger does not expressly or
inherently teach automatically relating a prior art reference from one case to
another based on citation by a patent office. Thus, we reverse the
anticipation rejection of claim 2.
NEW GROUND OF REJECTION
Pursuant to 37 C.F.R. § 41.50(b), we enter the following new ground
of rejection: Claim 4 is rejected under 35 U.S.C. § 101 as directed to
nonstatutory subject matter. Claim 4 recites: “A machine-readable medium
having computer-executable instructions for” carrying out specified steps.
The Federal Circuit has found that transitory, propagating signals are
not within any of the four statutory categories of patentable subject matter
identified in § 101—i.e., a process, machine, manufacture, or composition of
matter. In re Nuijten, 500 F.3d 1346, 1357 (Fed. Cir. 2007) (“A transitory,
propagating signal . . . is not a ‘process, machine, manufacture, or
composition of matter.’ [These] four categories define the explicit scope and
reach of subject matter patentable under 35 U.S.C. § 101; thus, such a signal
cannot be patentable subject matter.”). Moreover, “[a] claim that covers
both statutory and non-statutory embodiments . . . embraces subject matter
that is not eligible for patent protection and therefore is directed to non-
statutory subject matter.” MPEP § 2106(I) (8th ed., rev. 2012); cf. In re
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Lintner, 458 F.2d 1013, 1015 (CCPA 1972) (citation omitted) (“Claims
which are broad enough to read on obvious subject matter are unpatentable
even though they also read on nonobvious subject matter.”).
Appellants’ Specification is silent as to what constitutes a “machine-
readable medium.” The Specification therefore does not limit the claimed
“machine-readable medium” to non-transitory embodiments. Thus, giving
claim 4 its broadest reasonable interpretation in light of the Specification,
the claims do not preclude code delivered over a signal. Accordingly, we
conclude that claim 4 encompasses nonstatutory subject matter under § 101.3
SUMMARY
We reverse the rejection on appeal and enter a new ground of
rejection under 35 U.S.C. § 101.
This decision contains a new ground of rejection pursuant to
37 C.F.R. § 41.50(b) (2011), which provides that “[a] new ground of
rejection . . . shall not be considered final for judicial review.”
Section 41.50(b) also provides that the Appellant, 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:

3 The Office has suggested that “[a] claim drawn to such a computer
readable medium that covers both transitory and non-transitory
embodiments may be amended to narrow the claim to cover only statutory
embodiments to avoid a rejection under 35 U.S.C. § 101 by adding the
limitation ‘non-transitory’ to the claim.” David J. Kappos, Subject Matter
Eligibility of Computer Readable Media, 1351 OFF. GAZ. PAT. OFFICE
212 (Feb. 23, 2010).
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(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). See 37 C.F.R.
§ 1.136(a)(1)(iv).

REVERSED; 37 C.F.R. § 41.50(b)

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