Ex Parte Lundberg et al

Patent Trial and Appeal BoardAug 28, 2017

13310279 (P.T.A.B. Aug. 28, 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. 13/310,279 12/02/2011 Steve W. Lundberg 3431.018US1 2133 21186 7590 08/30/2017 SCHWEGMAN LUNDBERG & WOESSNER, P.A. P.O. BOX 2938 MINNEAPOLIS, MN 55402 EXAMINER HO, BINH VAN ART UNIT PAPER NUMBER 2152 NOTIFICATION DATE DELIVERY MODE 08/30/2017 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 LARS OLOF HUGO SVENSSON Appeal 2016-002680 Application 13/310,2791 Technology Center 2100 Before JOHN A. JEFFERY, BRUCE R. WINSOR, and JUSTIN BUSCH, Administrative Patent Judges. WINSOR, Administrative Patent Judge. DECISION ON APPEAL Appellants appeal under 35 U.S.C. § 134(a) from the final rejection of claims 1—22, which constitute all the claims pending in this application. We have jurisdiction under 35 U.S.C. § 6(b). We affirm-in-part. 1 The real party in interest identified by Appellants is Black Hills IP Holdings, LLC. App. Br. 2. Appeal 2016-002680 Application 13/310,279 STATEMENT OF THE CASE The Invention Appellants’ disclosed “patent management system includes tools to help the parties involved in the patenting process make decisions at each stage in the life of a patent.” Spec. 118. Claim 1, which is illustrative, reads as follows: 1. A computer implemented method for assessing a target subject matter comprising: maintaining 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; maintaining a database of ontologies, the ontologies including one or more patent concepts in defined groups; receiving a search query associated with a first patent portfolio; searching the first portfolio as a function of the search query; generating search results, the search results including one or more patent claims associated with the search query; mapping the one or more patent claims to a patent concept in a defined group to generate a mapping result; generating a claim similarity index based on an analysis of the mapping result; and providing the mapping result in a panoramic claim chart, the panoramic claim chart including color-coded indices representing instances of the identification of patent concepts in the target subject matter, and further including the claim similarity index. 2 Appeal 2016-002680 Application 13/310,279 The Rejections Claims 1—19 stand provisionally rejected for non-statutory obviousness-type double patenting over claims 1—23 of Applications 13/309,200, 13/253,936, 13/310,452, 13/310,322, and 13/310,368. See Final Act. 2—3. The Examiner’s statement of rejection also provisionally rejected claims 1—19 over the claims of Application 13/310,417 {id.), now abandoned. Claims 1—22 stand rejected under 35 U.S.C. § 103(a)2 as being unpatentable over Lundberg et al. (US 2007/0198578 Al; Aug. 23, 2007) (“the ’578 Publication”) and Lundberg et al. (US 2010/0131513 Al; May 27, 2010) (“the ’513 Publication”). See Final Act. 4—9. The Record Rather than repeat the arguments here, we refer to the Briefs (“App. Br.” filed Nov. 3, 2014; “Reply Br.” filed Jan. 4, 2016) and the Specification (“Spec.” filed Dec. 2, 2011) for the positions of Appellants and the Final Office Action (“Final Act.” mailed Dec. 3, 2013) and Examiner’s Answer (“Ans.” mailed Nov. 3, 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) (2013). 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 2016-002680 Application 13/310,279 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 2016-002792 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 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 4 Appeal 2016-002680 Application 13/310,279 2017-000386 11/098,761 Pending 2017-002337 14/010,376 Pending 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—19 (Final Act. 2—3) based on this application is moot and, therefore, not before us. Appellants “request[] consideration and reversal of the Examiner's rejections of the pending claims.” App. Br. 1. 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—19, and we summarily sustain the provisional rejections over Applications 13/309,200, 13/253,936, 13/310,452, 13/310,322, and 13/310,368. See Manual of Patent Examining Procedure (MPEP) § 1205.02 (9th ed. Rev. 07, Nov. 2015). 5 Appeal 2016-002680 Application 13/310,279 OBVIOUSNESS REJECTION Issue The dispositive issue3 presented by Appellants’ arguments is as follows: Has the Examiner supported the conclusion of obviousness by articulated reasoning with rational underpinning for the combination of the ’578 Publication with the ’513 Publication? Analysis The Examiner concludes it would have been obvious to incorporate the ’513 Publication’s panoramic claim chart including color-indices into the ’578 Publication’s mapping result, generated by mapping one or more patent claims to a patent concept. See Final Act. 4—6. Specifically, the Examiner concludes: [t]he skilled artisan would have been motivated to improve [the ’513 Publication] in order to provid[e] the mapping result in a panoramic claim chart, the panoramic claim chart including color-coded indices representing instances of the identification of patent concepts in the target subject matter, and further including the claim similarity index. Id. 5-6. Appellants contend the rationale to combine “is a blanket conclusory statement merely reciting [that] Appellants’ claim language would be obvious. There [is] no attempt or description of why the two Lundberg 3 Appellants’ arguments present additional issues. However, because the identified issue is dispositive of the appeal, we do not reach the additional issues. 6 Appeal 2016-002680 Application 13/310,279 references would be combined or where in the references a claim similarity index is present.” App. Br. 10. We agree with Appellants that the rationale stated by the Examiner (Final Act 5—6) is little more than a conclusory restatement of claim 1, and amounts to hindsight. Nor does the Examiner’s Answer offer any additional evidence or persuasive reasoning. “[Rejections on obviousness grounds cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.” KSRInt’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)). Therefore, we agree with Appellants that the Examiner has not articulated a reason with rational underpinnings to support the conclusion of obviousness. See KSR, 550 U.S. at 418. Accordingly, we do not sustain the rejections of (1) claim 1; (2) independent claims 10 and 19, which include a limitation substantially similar to the disputed limitation (compare App. Br. 14, with id. at 15—18) and was rejected “on the same basi[s] as claim 1” (Final Act. 8); and (3) claims 2—9, 11—18, and 20-22, which respectively depend from claims 1,10, and 19.4 4 We note in passing, and without reliance in rendering our decision, that although the Examiner finds the ’578 Publication does not disclose generating a claim similarity index as claimed (see Final Act. 5), as argued by Appellants, the Examiner does not explain where or how the ’513 Publication discloses a claim similarity index (see App. Br. 9—10; Reply Br. 2). 7 Appeal 2016-002680 Application 13/310,279 DECISION The Examiner’s decision to provisionally reject claims 1—19 on the ground of non-statutory obviousness-type double patenting over claims 1—23 of Applications 13/309,200, 13/253,936, 13/310,452, 13/310,322, and 13/310,368 is summarily affirmed. The Examiner’s decision to reject claims 1—22 under 35 U.S.C. § 103(a) is reversed. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. §§ 41.50(f), 41.52(b). AFFIRMED-IN-PART 8