Nicole Shanahan

Patent Trials and Appeals Board

Jun 24, 2020

2019005945 (P.T.A.B. Jun. 24, 2020)

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.
15/482,517 04/07/2017 Nicole Ann Shanahan 126263-001UT1 9817
27189 7590 06/24/2020
PROCOPIO, CORY, HARGREAVES & SAVITCH LLP
525 B STREET
SUITE 2200
SAN DIEGO, CA 92101
EXAMINER
ARAQUE JR, GERARDO
ART UNIT PAPER NUMBER
3689
NOTIFICATION DATE DELIVERY MODE
06/24/2020 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):
PTONotifications@procopio.com
docketing@procopio.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte NICOLE ANN SHANAHAN
Appeal 2019-005945
Application 15/482,517
Technology Center 3600

Before CAROLYN D. THOMAS, JAMES B. ARPIN, and
ADAM J. PYONIN, Administrative Patent Judges.

PYONIN, Administrative Patent Judge.

DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s rejection of claims 6–14. Final Act. 2. Claims 1–5 are
cancelled. Id. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42(a). Appellant identifies the real party in interest as
ClearAccessIP. Appeal Br. 3.
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Application 15/482,517

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STATEMENT OF THE CASE
Introduction
The claimed invention relates to “an interface of a software platform
for managing the creation, monitoring, sharing, distributing and aggregation
of information relating to intellectual property assets.” Spec. ¶ 7. Claims 6–
14 are pending; claims 6 and 12 are independent. Appeal Br. 29–32 (Claims
App.). Claim 6 is reproduced below for reference (emphases added):
6. A machine learning engine to manage digital assets in a
multi-phase management comprising:
a database to store digital assets, wherein the digital assets
can be associated with one or more phases of an asset lifecycle,
wherein the asset lifecycle comprises at least an asset generation
phase, an asset examination phase, an asset diligence phase, and
an asset transfer phase;
a processing device operatively coupled to memory
comprising instructions, wherein the processing device is
configured to:
generate a binary file for each digital asset based on a
machine learning model comprising a vector representation
based on paragraph vector classification using an unsupervised
learning model and an asset similarity metric based on
comparison of the vector representation with the other digital
assets; and
provide a multi-phase management interface to enable
different analytical analysis for each phase of the asset lifecycle,
wherein the analytical analysis for each phase comprises at least
a ranked set of results.
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References and Rejections2
Claims 6–14 are rejected under 35 U.S.C. § 112(a), as failing to
comply with the written description requirement. Final Act. 3; Ans. 4.
Claim 8 is rejected under 35 U.S.C. § 112(b), as indefinite. Final Act.
2; Ans. 4.3
Claims 6–13 are rejected under 35 U.S.C. § 103, as obvious over Van
Luchene (US 2007/0220041 A1; Sept. 20, 2007) and “Le et. al., Distributed
Representations of Sentences and Documents, Proceedings of the 31st
International Conference on Machine Learning (2014)” (“Le”). Final Act.
25; Ans. 3.
Claim 14 is rejected under 35 U.S.C. § 103, as obvious over Van
Luchene, Le, and “Wen et al., A Discriminative Feature Learning Approach
for Deep Face Recognition, ECCV 2016, Part VII, LNCS 9911, 499–515
(2016)” (“Wen”). Final Act. 36; Ans. 3.
ANALYSIS
We have reviewed the Examiner’s rejections in light of Appellant’s
arguments. Arguments Appellant did not make are waived. See 37 C.F.R. §
41.37(c)(1)(iv) (2018).
We disagree with Appellant that the Examiner erred and adopt as our
own the findings and reasons set forth by the Examiner, to the extent

2 The Examiner has withdrawn various rejections under 35 U.S.C. §§ 112(a),
112(b), and 103. See Ans. 4.
3 Appellant does not challenge the indefiniteness rejection. See Appeal
Br. 7. Accordingly, we summarily affirm this rejection.
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consistent with our analysis below. We add the following primarily for
emphasis.
Written Description
The Examiner presents two separate bases in rejecting independent
claim 6 for lack of written description support: (1) the Specification
includes “no disclosure for multiple phases” as claimed; and (2) “the
specification, as originally filed, fails to adequately disclose how the
[recited] model is being generated and intended to be trained.” Final Act. 5,
6.
Regarding the first basis:
Appellant submits the specification including the Figures (e.g.,
Figs. 2 of the system diagram and Figs. 3-17 depicting the
interfaces) and originally filed claims sufficiently describe the
portfolio management 201, invention disclosure front-end 210,
and virtual IP deal room front end 212 as parts of the multi-phase
lifecycle used with the machine learning analytics engine 214.
Appeal Br. 9. Regarding the second basis, Appellant contends the
“specification describes and depicts model training throughout with regard
to the machine learning analytics engine 214.” Id.
With respect to the first basis, the Specification makes no mention of
the term phase, and we agree with the Examiner that “the specification, as
originally filed, fails to disclose that the asset lifecycle is comprised of an
‘asset generation phase,’ an ‘asset examination phase,’ an ‘asset diligence
phase,’ and an ‘asset transfer phase,’ and, accordingly, fails to provide a
‘multi-phase’ management interface.” Ans. 4. Appellant refers to the
Application’s disclosure of “the portfolio management 201, invention
disclosure front-end 210, and virtual IP deal room front end 212,” but does
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not explain how these features show the inventor had possession of the
claimed phase-related terms at the time of filing. Appeal Br. 9; see
Examining Computer-Implemented Functional Claim Limitations for
Compliance with 35 U.S.C. 112, 84 Fed. Reg. 57, 61 (Jan. 7, 2019). Thus,
we are not persuaded the Examiner errs in finding a lack of written
description support for the particularly recited limitations. See Final Act. 4,
5. We sustain the rejection on this basis.
With respect to the second basis, we find reasonable the Examiner’s
analysis showing a lack of written description support for the claimed
models. See Final Act. 6–9; Ans. 5, 6. In contrast, Appellant merely
provides a conclusory assertion of written description support, along with
block quotations from the Specification. See Ans. 8–11. Such response to
the Examiner’s rejection is insufficient to show error. Cf. In re Lovin, 652
F.3d 1349, 1357 (Fed. Cir. 2011). Based on the record before us, we agree
with the Examiner that “the specification, as originally filed, fails to
adequately disclose how the model is being generated and intended to be
trained,” and thus the Specification does not show the inventor had
possession of the claimed models at the time of filing. See Final Act. 6; 84
Fed. Reg. at 62 (“It is not enough that one skilled in the art could
theoretically write a program to achieve the claimed function, rather the
specification itself must explain how the claimed function is achieved to
demonstrate that the applicant had possession of it.”). We also sustain the
rejection on this basis.

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Obviousness
Appellant argues the Examiner errs in rejecting claim 6 under 35
U.S.C. § 103, because “Van Luchene’s . . . general description of document
analysis fails to disclose the features and are not capable of simple
subst[itu]tion [with Le] as alleged.” Appeal Br. 20. Appellant contends
“Van Luchene relies on user inputted ratings and notes to curate a repository
rather than generating a binary file for a corpus of different types of
documents to perform train a machine-learning model as required by the
claims,” and “nothing in Le discloses machine learning on digital assets for
the multi-phase life cycle as claimed.” Id. at 20, 21.
Appellant’s argument is not responsive to the Examiner’s rejection,
and does not show error therein. The Examiner finds, and we agree, that
“Van Luchene discloses an online patent application submission,
assignment, and docketing system” and “Le teaches that when comparing
and analyzing textual documents using machine learning algorithms that it is
old and well-known in the art to perform vector analysis and, more
specifically, a machine learning model comprising vector representation
analysis based on paragraph vector classification using an unsupervised
learning model.” Final Act. 25, 27; Van Luchene ¶¶ 131, 767–771; Le,
Abstract. Appellant’s argument focuses on what each reference is not cited
for, rather than identifying potential errors in the Examiner’s specific
findings. See Appeal Br. 19–21; Ans. 8. Such argument is insufficient to
persuade us of Examiner error. Further, the Examiner finds, “Van Luchene
does, indeed, disclose providing a system and method with an interface to
allow for a multi-phase solution using machine-learning,” including the use
of “artificial intelligence (AI).” Ans. 7. Appellant does not challenge these
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findings, as no reply brief was filed. Accordingly, we see no error in the
Examiner’s rejection in light of Appellant’s arguments.
Appellant further contends the Examiner’s “rationale does not support
a conclusion of obviousness”:
Appellant submits the general hindsight, improve accuracy of
managed content, is too general because it could cover almost
any alteration contemplated of Van Luchene and does not
address why this specific proposed modification would have
been obvious. Additionally, there is nothing in either of
references that would suggest handling of differently formatted
documents from different phases of the lifecycle with the
machine-learning. Finally, although Le teaches a machine
learning scheme that uses vector representation, there is no
suggestion, other than Appellant’s disclosure, to employ this
scheme to promote, develop, and integrate the claimed machine
learning for the multi-phase lifecycle.
Appeal Br. 22.
Appellant’s combination contention is unpersuasive because these
arguments merely make conclusory statements, whereas we find the
Examiner’s analysis to constitute articulated reasoning with rational
underpinnings sufficient to justify the legal conclusion of obviousness.4 See
Final Act. 28; Ans. 8, 11. Combining Van Luchene’s teachings of managing
various intellectual property assets, with Le’s teachings of particular
machine learning techniques, was not “uniquely challenging or difficult for
one of ordinary skill in the art” or “represented an unobvious step over the
prior art.” Leapfrog Enters., Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1162

4 Appellant’s arguments for claim 6, moreover, are not commensurate with
the scope of the claim. Claim 6 does not recite “handling of differently
formatted documents from different phases of the lifecycle.” Appeal Br. 22,
29.
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(Fed. Cir. 2007). See Final Act. 25–28; Ans. 9. Further, Appellant does not
file a reply brief, and, thus, does not challenge the reasoning provided in the
Examiner’s Answer. See Ans. 11 (“Accordingly, one of ordinary skill in the
art would have found it obvious to look to Le . . . for the benefits that Le
taught.”); Le, Abstract (“Empirical results show that Paragraph Vectors
outperform bag-of-words models as well as other techniques for text
representations.”).
We are not persuaded the Examiner errs in finding the limitations of
claim 6 obvious in view of the combined teachings of Van Luchene and Le.
Appellant presents similar arguments for independent claim 125, which we
find similarly unpersuasive for the reasons discussed above. See Appeal Br.
24–27. We sustain the Examiner’s obviousness rejection of the independent
claims, and the rejections of the claims dependent therefrom, which are not
separately argued. See Appeal Br. 18, 27.
CONCLUSION
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
6–14 112(a) Written
Description
6–14
8 112(b) Indefiniteness 8
6–13 103 Van Luchene, Le 6–13
14 103 Van Luchene, Le,
Wen
14

5 Appellant’s arguments for claim 12, moreover, are not commensurate with
the scope of the claim. Claim 12 recites “wherein the repository comprise
digital assets in different formats,” but is silent regarding “handling of
differently formatted documents from different phases of the lifecycle.”
Appeal Br. 26 (emphasis added), 30.
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Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
Overall
Outcome
6–14

TIME PERIOD FOR RESPONSE
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.
§ 1.136(a)(1)(iv).
AFFIRMED