Ex Parte Lundberg et alDownload PDFPatent Trial and Appeal BoardJan 29, 201411061383 (P.T.A.B. Jan. 29, 2014) Copy Citation 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.) Appeal 2011-009966 Application 11/061,383 2 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, Appeal 2011-009966 Application 11/061,383 3 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. Appeal 2011-009966 Application 11/061,383 4 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.) Appeal 2011-009966 Application 11/061,383 5 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.) Appeal 2011-009966 Application 11/061,383 6 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 Appeal 2011-009966 Application 11/061,383 7 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). Appeal 2011-009966 Application 11/061,383 8 (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) cdc Copy with citationCopy as parenthetical citation