Ex Parte Schmidtler et al

Patent Trial and Appeal Board

Nov 29, 2016

13655267 (P.T.A.B. Nov. 29, 2016)

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.
13/655,267 10/18/2012 Mauritius A.R. Schmidtler KFX1P018B 9877
28875 7590
Zilka-Kotab, PC
1155 N. 1st St.
Suite 105
SAN JOSE, CA 95112
12/01/2016 EXAMINER
ARJOMANDI, NOOSHA
ART UNIT PAPER NUMBER
2167
NOTIFICATION DATE DELIVERY MODE
12/01/2016 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):
zk-uspto@zilkakotab.com
chrisc @zilkakotab.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MAURITIUS A.R. SCHMIDTLER, JAN W. AMTRUP,
STEPHEN MICHAEL THOMPSON, and ANTHONY SARAH
Appeal 2015-007039
Application 13/655,267
Technology Center 2100
Before MICHAEL J. STRAUSS, CATHERINE SHIANG, and
JOHN F. HORVATH, Administrative Patent Judges.
STRAUSS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from a rejection of claims
1—21. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
Appeal 2015-007039
Application 13/655,267
THE INVENTION
The claims are directed to organizing data sets. Spec., Title. Claim 1,
reproduced below with a disputed limitation emphasized in italics, is
representative of the claimed subject matter:
1. A method for detecting limits to the quality in a dynamic
organization process, comprising:
receiving user input affirming, negating, or modifying
organization of a plurality of data elements during or after an
organization process;
determining a quality of the organization based on the
user input',
determining a stability in decisions made during the
organization of the plurality of data elements;
monitoring the quality and the stability;
determining that the organization has reached a limit
concerning at least one of the quality and stability of the
organization by evaluating the at least one of the quality and
stability of the organization over a period of time or number of
cycles; and
outputting an indication of the determination to at least one
of a user, a system and another process.
The prior art relied upon by the Examiner in rejecting the claims on
REFERENCES
appeal is:
Zhang
Shimogori
US 5,832,182
US 2006/0080299 A1
Nov. 3, 1998
Apr. 13, 2006
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Application 13/655,267
REJECTION
The Examiner rejected claims 1—21 under 35 U.S.C. § 103(a) as being
unpatentable over Shimogori and Zhang. Final Act. 3—8.1,2
APPELLANTS’ CONTENTIONS
1. “The Rejection of Claim 1 Fails to Allege and Establish the Third
Element of Prima Facie Obviousness, as the Record is Devoid of Any
Theory Why a Skilled Artisan Would Reasonably Expect the Proposed
Combination of the Art to Succeed.” App. Br. 7—9.
2. “Since the Rejection of Claim 1 Does Not Explain How Combining
Shimogori and Zhang Would Enable a Skilled Artisan to Determine
Useful Patterns In Resulting Clusters, No Skilled Artisan Would
Reasonably Expect to Achieve that Benefit.” App. Br. 9—12.
3. “The Rejection of Claim 1 Fails the First Element of Prima Facie
Obviousness Because the Art of Record Neither Teaches nor Suggests
All the Features of Appellants’ Claims.” App. Br. 12—18.
1 The rejection of claim 12 under 35 U.S.C. § 101 has been withdrawn.
Advisory Action mailed October 2, 2014.
2 Although the Examiner does not separately address independent claims 12
and 13 in the Final Office Action, because these claims stand rejected along
with independent claim 1 under 35 U.S.C. § 103(a) as being unpatentable
over Shimogori and Zhang (Final Act. 1 and 3) and because the limitations
recited in independent Beauregard claim 12 and apparatus claim 13 parallel
those recited in method claim 1, for purposes of this appeal we treat claims
12 and 13 as having been rejected for the reasons set forth in connection
with corresponding method claim 1.
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Application 13/655,267
ANALYSIS
We have reviewed the Examiner’s rejections in light of Appellants’
arguments the Examiner has erred. We disagree with Appellants’
conclusions. We adopt as our own (1) the findings and reasons set forth by
the Examiner in the action from which this appeal is taken (Final Act. 3—8)
and (2) the reasons set forth by the Examiner in the Examiner’s Answer in
response to Appellants’ Appeal Brief (Ans. 2—6) and concur with the
conclusions reached by the Examiner. We highlight the following for
emphasis.
In connection with contention 1, Appellants argue the rejection is
improper because the Examiner has failed to articulate a reason why the
skilled artisan would reasonably expect the proposed combination to result
in success. App. Br. 8. We disagree. Establishing prima facie obviousness
requires showing that one of ordinary skill in the art would have had a
reason or suggestion to modify or combine the prior art and either
predictability or a reasonable expectation of success. See KSR Int'l Co. v.
Teleflex Inc., 550 U.S. 398, 418 (2007). Here, because the relevant field of
endeavor is predictable, the Examiner was not required to make a specific
finding regarding a reasonable expectation of success. Furthermore, the
“determination of obviousness ‘does not require absolute predictability of
success .... [A]ll that is required is a reasonable expectation of success.’”
Brown & Williamson Tobacco Corp. v. Phillip Morris Inc., 229 F.3d 1120,
1125 (Fed. Cir. 2000) (quoting In re O'Farrell, 853 F.2d 894, 903—904 (Fed.
Cir. 1988)). Appellants do not present persuasive argument or objective
evidence to demonstrate that one with ordinary skill in the art would not
have had a reasonable expectation of success in combining the teachings of
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Shimogori and Zhang. Accordingly, contention 1 is not persuasive of
Examiner error.
In connection with contention 2, Appellants argue the Examiner’s
rationale for combining Shimogori and Zhang is deficient because it does
not include an “explicit analysis persuasively demonstrating why a skilled
artisan would be reasonably motivated to attempt the proposed combination
and/or modification of the art of record.” App. Br. 11. We find this
argument unpersuasive. The Examiner has provided a reason for combining
the references, i.e., to achieve, as disclosed by Zhang, “clustering of data
from large databases [functions] to determine useful patterns therein.” Final
Act. 5; see also Zhang, col. 1,11. 10-14. Appellants do not present
persuasive argument or objective evidence to demonstrate that one with
ordinary skill in the art would not have combined the teachings of Shimogori
and Zhang. Instead, Appellants merely provide attorney argument
challenging whether one skilled in the art would have understood “what
distinguishes ‘useful’ from ‘not useful’” with respect to datasets. App. Br.
11—12. We find such attorney arguments and conclusory statements, which
are unsupported by factual evidence, to be entitled to little probative value.
In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997); In re De Blauwe,
736 F.2d 699, 705 (Fed. Cir. 1984). Attorney argument is not evidence.
In re Pearson, 494 F.2d 1399, 1405 (CCPA 1974). Nor can such argument
take the place of evidence lacking in the record. Meitzner v. Mindick,
549 F.2d 775, 782 (CCPA 1977).
Furthermore, we observe that “[a]s long as some motivation or
suggestion to combine the references is provided by the prior art taken as a
whole, the law does not require that the references be combined for the
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reasons contemplated by the inventor” (In re Beattie, 974 F.2d 1309, 1312
(Fed. Cir. 1992)) and all the utilities or benefits of the claimed invention
need not be explicitly disclosed by the prior art references to render the
claim unpatentable under section 103 (see In re Dillon, 919 F.2d 688, 692,
696 (Fed. Cir. 1990) (en banc), cert, denied, 500 U.S. 904 (1991)). See also
In re Kemps, 97 F.3d 1427, 1430 (Fed. Cir. 1996) (“the motivation in the
prior art to combine the references does not have to be identical to that of the
applicant to establish obviousness”).
Contrary to Appellants’ contention 2, we find the Examiner has
provided articulated reasoning with rational underpinnings sufficient to
justify the legal conclusion of obviousness. Final Act. 4—5; see also In re
Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006). Therefore, Appellants’ assertion
the references were improperly combined is not persuasive of error and
accordingly, the Examiner has properly relied upon the combination of
Shimogori and Zhang in formulating the disputed rejections under 35 U.S.C.
§ 103(a).
In connection with contention 3, Appellants argue the prior art fails to
teach or suggest determining a quality of the organization based on user
input affirming, negating, or modifying organization of a plurality of data
elements. App. Br. 12—18. According to Appellants
[T]he broadest reasonable interpretation of “determining a
quality of the organization” as recited in claim 1 requires that the
“quality” include some measure describing performance [of] the
dynamic organization process, which may include any
reasonable measure of performance that would be understood by
one having ordinary skill in the art upon reading Appellant’s
descriptions.
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App. Br. 15. Appellants identify a number of possible metrics disclosed in
the Specification for measuring the performance of the organization process,
but nonetheless argue that claim 1 does not “requirfe! any of those specific
metrics.” Id. at 14—15.
The Examiner responds by finding
[T]he classification correction [according to Shimogori], if
needed, is being done based on the user input. The user operation
on the classification is being done to determine the correctness
of the property items. It is also understood that the “correctness”
or “correction instruction”, as thought [sic., taught] by
Shimogori, can be analogous to the “quality”. And also as shown
in Shimogori the correction is done based on the user operation
by the input device to add/delete the property item or change the
property item name. As it is being interpreted from the claim [1]
limitation, “determining the quality of an organization based on
the user input” is disclosed by the Shimogory reference.
Ans. 5.
We are not persuaded the Examiner’s interpretation is improper.
We decline to adopt Appellants’ interpretation that determining the
disputed quality of the organization limitation requires calculating
some measure describing performance of the dynamic organization
process. Such an interpretation would be based on non-limiting
examples disclosed in the Specification (see, e.g., Appeal Br. 153) and
adopting such a limited interpretation would improperly import those
limitations into the claims. E-Pass Techs., Inc. v. 3Com Corp., 343
F.3d 1364, 1369 (Fed. Cir. 2003) (claims must be interpreted “in view
of the specification” without importing limitations from the
3 “Appellant neither requests nor consents to reading claim 1 as requiring any
of those specific metrics [disclosed in the Specification].” App. Br. 15.
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specification into the claims unnecessarily.) Although Appellants
argue the Specification discloses determining the organizational quality
requires some measure describing performance of the dynamic
organization process, the Specification’s disclosure is permissive rather
than required: “In the context of the present description, the quality of
the organization may include any measure of performance of the
dynamic organization process.” Spec. 1 69 (emphasis added).
Accordingly, we find, under a broad but reasonable standard, the
Examiner’s interpretation of determining the disputed quality of
organization limitation is consistent with the Specification. Therefore,
we further agree with the Examiner in finding Shimogori’s correctness
or correction instruction teaches or suggests determining the disputed
quality of organization based on user input as required by claim 1.
Appellants do not persuasively argue or explain why Shimigori’s
acceptance of the data organization does not disclose determining the
organization is of a high quality, and Shimigori’s correction of the data
organization does not disclose determining the organization is of a poor
quality. Furthermore, we agree with the Examiner in finding the
determination is based on the user input. See Ans. 5—6.
For the reasons discussed supra, we are unpersuaded of Examiner
error. Accordingly, we sustain the rejection of independent claim 1 and, for
the same reasons, the rejection of independent claims 12 and 13 under 35
U.S.C. § 103(a) as being unpatentable over Shimogori and Zhang, together
with the rejection of dependent claims 2—11 and 14—21 which are not argued
separately.
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DECISION
We affirm the Examiner’s decision to reject claims 1—21.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED
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