Ex Parte Whitney et al

Patent Trial and Appeal Board

Apr 18, 2014

11595506 (P.T.A.B. Apr. 18, 2014)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
11/595,506 11/10/2006 Paul D. Whitney 14899-E (BA4-299) 7143
21567 7590 04/18/2014
Wells St. John P.S.
601 West First Avenue
Suite 1300
Spokane, WA 99201-3828
EXAMINER
AHLUWALIA, NAVNEET K
ART UNIT PAPER NUMBER
2166
MAIL DATE DELIVERY MODE
04/18/2014 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte PAUL D. WHITNEY, ALAN R. WILLSE,
CHARLES A. LOPRESTI, and AMANDA M. WHITE
____________________

Appeal 2011-012490
Application 11/595,506
Technology Center 2100
____________________

Before ANTON W. FETTING, MICHAEL C. ASTORINO, and
NINA L. MEDLOCK, Administrative Patent Judges.

MEDLOCK, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2011-012490
Application 11/595,506

2
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 1-50, 53, and 54. We have jurisdiction under 35 U.S.C.
§ 6(b).

STATEMENT OF THE DECISION
We REVERSE and enter a NEW GROUND OF REJECTION
pursuant to our authority under 37 C.F.R. § 41.50(b).

THE CLAIMED INVENTION
Appellants’ claimed invention “relates to text analysis methods, text
analysis apparatuses, and articles of manufacture” (Spec., para. [0002]).
Claim 1, reproduced below, is illustrative of the subject matter on
appeal:
1. A text analysis method comprising:
accessing information indicative of data content of a
collection of text comprising a plurality of different topics;
using a computing device, analyzing the information
indicative of the data content, wherein the analyzing comprises
comparing a number of occurrences of a text pattern in the
collection of text at one moment in time with numbers of
occurrences of the text pattern in the collection of text at other
moments in time; and
using results of the analysis, identifying a topical change
in the collection of text.

Appeal 2011-012490
Application 11/595,506

3
THE REJECTION
The following rejection is before us for review:
Claims 1-50, 53, and 54 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Holtzman (US 7,185,065 B1, iss. Feb. 27, 2007) and
Kurita (US 2008/0033587 A1, pub. Feb. 7, 2008).
ANALYSIS
Obviousness
As set forth below, pursuant to our authority under 37 C.F.R.
§ 41.50(b), we enter a new ground of rejection of claims 1-50, 53, and 54
under 35 U.S.C. § 112, second paragraph, as indefinite.
In light of this new rejection, we do not reach the merits of the
rejection of claims 1-50, 53, and 54 under 35 U.S.C. § 103(a) at this time.
Before a proper review of the rejection under § 103(a) can be made, the
subject matter encompassed by the claims on appeal must be reasonably
understood without resort to speculation. Because the claims fail to satisfy
the requirements under 35 U.S.C. § 112, second paragraph, we are
constrained to reverse, pro forma, the Examiner's rejections under 35 U.S.C.
§ 103(a). See In re Steele, 305 F.2d 859, 862 (CCPA 1962) (A prior art
rejection cannot be sustained if the hypothetical person of ordinary skill in
the art would have to make speculative assumptions concerning the meaning
of claim language).
It should be understood that our decision to reverse the rejection of
claims 1-50, 53, and 54 under 35 U.S.C. § 103(a) is based solely on the
indefiniteness of the claims, and does not reflect on the merits of the
underlying rejection.
Appeal 2011-012490
Application 11/595,506

4
New Ground of Rejection
We enter the following new ground of rejection pursuant to our
authority under 37 C.F.R. § 41.50(b).
Indefiniteness
Independent claim 1 is directed to a text analysis method, and recites
that the method comprises, inter alia, analyzing information indicative of the
data content of a collection of text, wherein the analyzing comprises
“comparing a number of occurrences of a text pattern in the collection of
text at one moment in time with numbers of occurrences of the text pattern
in the collection of text at other moments in time.” Independent claims 18,
30, and 43 include substantially similar language.
Appellants’ arguments in support of the patentability of claims 1-50,
53, and 54 focus on the failure of the prior art to disclose or suggest
comparing an actual numerical count of occurrences, i.e., “a number of
occurrences,” of a text pattern in a collection of text at one moment in time
with the actual numerical count of occurrences of the text pattern in the
collection of text at other moments in time. However, it is equally proper to
interpret the phrase, “a number of occurrences,” as the Examiner does, to
refer to an indefinite group of occurrences of a text pattern, e.g., some
occurrences or several occurrences of the text pattern that are compared at
different points in time based on some unspecified criteria.
Because the claim language is susceptible to two equally reasonable
interpretations, the claim language is ambiguous, and, thus, indefinite.
See Ex parte Miyazaki, 89 USPQ2d 1207, 1215 (BPAI 2008) (precedential).
Therefore, we will enter a new ground of rejection of claims 1-50, 53, and
54 as indefinite under 35 U.S.C. § 112, second paragraph.
Appeal 2011-012490
Application 11/595,506

5
DECISION
The Examiner’s rejection of claims 1-50, 53, and 54 under 35 U.S.C.
§ 103(a) is reversed pro forma.
A NEW GROUND OF REJECTION has been entered for
claims 1-50, 53, and 54 as indefinite under 35 U.S.C. § 112,
second paragraph.
37 C.F.R. § 41.50(b) provides that “[a] new ground of rejection . . .
shall not be considered final for judicial review.” 37 C.F.R. § 41.50(b) also
provides that the Appellants, 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:
(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)(iv).

REVERSED; 37 C.F.R. § 41.50(b)

rvb