Sigram Schindler Beteiligungsgesellschaft MBH

Patent Trials and Appeals BoardOct 7, 2021

2020005094 (P.T.A.B. Oct. 7, 2021)

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. 13/923,630 06/21/2013 Sigram SCHINDLER 2654-0014US01 5620 137713 7590 10/07/2021 Potomac Law Group, PLLC 8229 Boone Boulevard Suite 430 Vienna, VA 22182 EXAMINER SMITH, PAULINHO E ART UNIT PAPER NUMBER 2127 NOTIFICATION DATE DELIVERY MODE 10/07/2021 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): eofficeaction@appcoll.com patents@potomaclaw.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________________ Ex parte SIGRAM SCHINDLER1 ____________________ Appeal 2020-005094 Application 13/923,630 Technology Center 2100 ____________________ Before ROBERT E. NAPPI, CATHERINE SHIANG, and DAVID J. CUTITTA II, Administrative Patent Judges. NAPPI, Administrative Patent Judge. DECISION ON APPEAL Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s rejection of claims 31 through 60, which constitute all of the pending claims. Claims 1 through 30 have been canceled. 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). According to Appellant, SIGRAM SCHINDLER BETEILIGUNGSGESELLSCHAFT MBH is the real party in interest. Appeal Br. 2. Appeal 2020-005094 Application 13/923,630 2 CLAIMED SUBJECT MATTER The claimed subject matter relates generally to an innovation expert system to automatically prompt a user to see whether or not an invention meets the requirements stated in 35 U.S.C. §§ 101, 102, 103, and 112. Abstract. Claim 31 is reproduced below. 31. A computer-implemented method for updating a given data structure (“PTRCT_DS”), comprising all technical and legal facts alias relations between the pair of the technical teaching (“TT.0”) and a given reference set (“RS”) of prior art inventions most closely to the technical teaching (“PTR”) and a given context (“CT”) respectively (such as a legal system), by disaggregating the Binary Aggregated Disclosed inventive concepts (“BAD-X.0.n”) of a Binary Aggregated Disclosed knowledge representation (“BAD-KR of the technical teaching (“TT.O”), into a set of Binary Elementary Disclosed (“BED”) inventive concepts of said technical teaching (“TT.O”) called “BED-TT.0”, input by a user and by appended items to the BED-TT.0 and to the Binary Aggregated Disclosed knowledge representation (“BAD-KR”) for controlling an Innovation Expert System (“IES”), the method using a memory for storing the so updated data structure (“PTRCT_DS”), generated by executing this method on the technical teaching's (“TT.0’s”) Binary Aggregated Disclosed inventive concepts (“BAD- X.0.n”), representing their Binary Aggregated Disclosed predicates (“BAD-X.0.n”) of its elements (“X.O.n”), the method comprising: (d) writing the data structure(“PTRCT_DS”) in a given Binary Aggregated Disclosed knowledge representation (“BAD-KR”) into the memory; (e) automatically prompting the user to determine the Knowledge Representation Reach And Sequencing customization control Strategy (“KR_R&S_S”) to be obeyed during execution of one or more of 10 FSTP tests, wherein the strategy comprises reach customization controls for determining a set of potentially relevant variations of the one or more of the 10 FSTP tests and sequencing customization Appeal 2020-005094 Application 13/923,630 3 controls to enable sequencing the steps of execution of the one or more of the 10 FSTP tests, wherein the Reach and Sequencing customization controls Strategy (“KR_R&S_S”) is one of: (b).3 either given by the Innovation Expert System (“IES”) as a default Knowledge Representation Reach And Sequencing customization control Strategy (“KR_R&S_S”) for both strategies, based on the Binary Aggregated Disclosed knowledge representation (“BAD- KR”), (b).4 or a Knowledge Representation Reach And Sequencing customization control Strategy (“KR_R&S_S”) input, in a given notation, by the user additionally to the Binary Aggregated Disclosed knowledge representation (“BAD-KR”); (f) automatically identifying in the given data structure (“PTRCT_DS”) and the Knowledge Representation Reach And Sequencing customization control Strategy (“KR_R&S_S”), in given formats: (c).4 all prior art documents (“document.i’s”) in the reference set (“RS”) and all prior art document marked up items (“doc.i-MUIs”), (c).5 a context document (“document.CT”) in the disclosure document (“doc.0”), disclosing all context document marked up items (“doc.CT-MUIs”), and (c).6 all elements (“X.0.n”) and their Binary Aggregated Disclosed predicates (“BAD-X.0.n”), for any Binary Aggregated Disclosed knowledge representation (“BAD-KR”) in the Knowledge Representation Reach And Sequencing customization control Strategy (“KR_R&S_S”); (d) automatically performing, for any Binary Aggregated Disclosed knowledge representation (“BAD-KR”) in Knowledge Representation Reach And Sequencing customization control Strategy (“KR_R&S_S”), controlled by this Knowledge Representation Reach And Sequencing Appeal 2020-005094 Application 13/923,630 4 customization control Strategy (“KR_R&S_S”), the steps comprising: (d).7 prompting the user to input a set of Binary Elementary Disclosed creative concepts (“BED-cr- C.O.k’s”) in a given notation, of the technical teaching (“TT.O”) (d).8 prompting the user to disaggregate the Binary Aggregated Disclosed predicates (“BAD-X.O.n”), , into second sets of mirror predicates of Binary Elementary Disclosed creative concepts for each (Kn)-element (“{BED-cr-C.0.knl|1≤ kn≤Knl}”), which is a subset of the set of all (K)-mirror predicates of the Binary Elementary Disclosed creative concepts (“{BED-cr-C.0.kl|1≤ k≤K}”) such that it holds: any of the (n)-Binary Aggregated Disclosed predicates (“BAD-X.0.n”) is the same as the conjunction of the corresponding (Kn)-mirror predicates of the Binary Elementary Disclosed creative concepts (“1≤ kn≤Kn BED-cr-C.0. kn”). (d).9 prompting the user to input, in a given notation, for all of the -Binary Aggregated Disclosed predicates (“BAD- X.0.n”) a set of justifications (“SoJUSdagr(BAD-X.0.n)”) by disclosure document marked up items (“doc.0-MUIs”) and context document marked up items (“doc.CT-MUIs”) of this disaggregation into the set of Binary Elementary Disclosed mirror predicates of the creative concepts {BED-cr-C.0.kn|1≤ kn≤Kn}; (d).10 automatically appending any set of justifications for all (n)-Binary Aggregated Disclosed predicates (“SoJUSdagr(BAD-X.0.n)”) to the corresponding (n)Binary Aggregated Disclosed predicate (“BAD-X.0.n”); (d).11 automatically generating “BED-TT.O”, a set of Binary Elementary Disclosed inventive concepts of the technical teaching (“TT.O”), which is defined by a first set of all (K)-Binary Elementary Disclosed creative concepts {{BED- cr-C.0.k|1≤ k≤K}} joined with additional sets of Binary Elementary Disclosed creative concepts consisting of (Kn)- Binary Elementary Disclosed creative concepts (“{{BED-cr- C.0.kn|1≤ kn≤Kn}|l≤ n≤N}”); Appeal 2020-005094 Application 13/923,630 5 (d).12 automatically updating the data structure (“PTRCT_DS”) in the memory with the appended set of justifications according to (d).4 and the generated set of Binary Elementary Disclosed inventive concepts of the technical teaching (“TT.O”) according to (d).5. EXAMINER’S REJECTIONS2 The Examiner rejected claims 31 through 60 under 35 U.S.C. § 112(a) as failing to comply with the enablement requirement. Final Act. 5–7. The Examiner rejected claims 31 through 60 under 35 U.S.C. § 112(b) as being indefinite. Final Act. 8–9. The Examiner rejected claims 31 through 60 under 35 U.S.C. § 103 as being unpatentable over Szygenda (US 2008/0086507 A1; April 10, 2008); Manual of Patent Examining Procedure (MPEP). Final Act. 10–33. DISCUSSION Rejection under 35 U.S.C. § 112(a) The Examiner rejects claims 31 through 60 under 35 U.S.C. § 112(a) as Appellant’s originally filed Specification does not describe the subject matter in a manner that allows the skilled artisan to make or use the invention. Final Act. 5–7. The Examiner identifies that the claims recite numerous steps which are not adequately described in the Specification. Specifically, the Examiner states: 2 Throughout this Decision we refer to Appellant’s Specification filed June 21, 2013 (“Spec.”); Appeal Brief filed April 8, 2019 (“Appeal Br.”); Reply Brief filed June 29, 2020,(“Reply Br.”); Final Office Action mailed December 13, 2017 (“Final Act.”); and the Examiner’s Answer mailed April 27, 2020 (“Ans.”). Appeal 2020-005094 Application 13/923,630 6 The specification and claims are not enabled as they are not described in a way that would allow one of ordinary skill in the art to make or use the invention without undue experimentation. For example, with regards to the limitation “disaggregating the Binary Aggregated Disclosed inventive concepts (“BAD- X.0.n”) of a Binary Aggregated Disclosed knowledge representation (“BAD-KR”) of the technical teaching (“TT.0”), into a set of Binary Elementary Disclosed (“BED”) inventive concepts of said technical teaching (“TT.0”)”, there are no clear directions, explanation or examples of how a user or system identifies what is a binary aggregated disclosed inventive concept and/or a binary elementary disclosed inventive concept and also there are no clear directions, explanation or examples how a user or system goes about disaggregating the Binary Aggregated Disclosed inventive concept into a binary Elementary disclosed inventive concepts. Another step requires the use to input Binary elementary disclosed inventive concepts but as there are no directions or examples on how a user identifies these or what is considered a binary elementary disclosed inventive concept, a user cannot make or user the system. Final Act. 7. Appellant argues that: [T]he specification discloses, for example, “any element’s binary compound concept usually is straightforward disaggregatable into a conjunction of binary elementary concepts1): 9), each one being next-to-trivial. This disaggregation is indispensable for warranting that the elements’ inventive concepts meet the requirements explicitly and implicitly stated for them by § 112 and its interpretation by the Highest Courts.” See published Specification at [0081]. Appeal Br. 17. Appellant asserts: [T]he specification makes reference to disaggregation of a binary compound concept into binary elementary concepts as being “straightforward.” See published Specification at [0081]. Furthermore, disaggregation of compound inventive concepts Appeal 2020-005094 Application 13/923,630 7 into elementary ones is described in detail in section 11.4 of the specification. See published specification at [0117] ff.. That is, little direction is needed because operation is simple and the level of skill in the art is high. Accordingly, one of skill in the art would require a small amount of experimentation to develop this concept, based on the teachings of the Specification. Appeal Br. 17–18. The Examiner has provided a comprehensive response to Appellant’s arguments on pages 5 through 8 of the Answer. In this response, the Examiner considers paragraphs 81 and 117 of Appellant’s Specification (cited in Appellant’s arguments) and states: how to identify BED or BAD-X.0.n and how to convert from BAD-X.0.n. These two paragraphs only state that disaggregating the binary inventive concepts into elementary ones is critical based on the high court’s opinion and that disaggregating compound inventive concepts into elementary ones deal with a “level of abstraction”/” grain of mental resolution”. None of this addresses the issues. The only statement really provided by the appellant is that there is no direction provided as it is simple and straightforward to which the examiner disagrees. Ans. 7.3 The Examiner considers these findings to meet three of the Wands factors4. Ans. 7. Appellant’s arguments have not persuaded us of error in the Examiner’s rejection. The test for compliance with the enablement requirement under 35 U.S.C. § 112 first paragraph is whether the disclosure, 3 The Examiner and Appellant refer to paragraph numbers in the published version of this application US 2014/0012766. Paragraph 81 of the published application appears on page 10 of originally filed Specification and paragraph 117 appears on page 15 of the originally filed Specification. 4 See In re Wands, 858 F.2d 731, 737 (Fed. Cir. 1988). Appeal 2020-005094 Application 13/923,630 8 as filed, is sufficiently complete to enable one of ordinary skill in the art to make and use the claimed invention without undue experimentation. In re Wands, 858 F.2d at 737. The Federal Circuit in In re Wands set forth eight factors—not all of which are required—to be considered to evaluate whether a disclosure would require undue experimentation. Id.; In re Hillis, 484 F. App’x 491, 495 (Fed. Cir. 2012); see also MPEP § 2164.01(a). Here, contrary to Appellant’s arguments on pages 3 of the Reply Brief, the Examiner considered the Wands factors, specifically, the Examiner has shown that three of the factors set forth by the Wands court have been considered. See Ans. 7. We have reviewed Appellant’s originally filed Specification, in particular the disclosure on pages 10 and 15 cited by Appellant, on pages 17 and 18 of the Brief. 5 We concur with the Examiner’s findings that Appellant’s Specification does not provide sufficient explanation or examples of how to disaggregate the Binary Aggregated Disclosed inventive concepts. Additionally we note, the disclosure, on page 15 of the Specification, of the disaggregation dealing with “level of abstraction”/“grain of mental resolution” merely discuss an unquantifiable effect of the disaggregation. Further, we concur with the Examiner that Appellant’s statement “the specification makes reference to disaggregation of a binary compound concept into binary elementary concepts as being ‘straightforward’” is conclusory and attorney argument. Appeal Br. 17. It is well settled that mere attorney arguments and conclusory statements, which are unsupported 5 As identified above the Examiner and Appellant refer to paragraph numbers in the published version of this application; we refer to the pages of the originally filed Specification. Appeal 2020-005094 Application 13/923,630 9 by factual evidence, are entitled to little probative value. In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997); see also In re Pearson, 494 F.2d 1399, 1405 (CCPA 1974) (attorney argument is not evidence). Thus, we consider the Examiner to have demonstrated consideration of three of the Wands factors: the amount of direction provided by the inventor, the existence of working examples and the amount of experimentation required given the content of the disclosure, in concluding that practicing Appellant’s invention would require undue experimentation given Appellant’s disclosure. With regard to Appellant’s argument that the “examiner’s assertions regarding the level of ordinary skill in the art for the purpose of alleging the obviousness of the claimed invention stand in stark contrast to the examiner’s assertions regarding the alleged lack of enablement and written description.” Reply Br. 4. We are not persuaded of error, the analysis for obviousness is different from that of written description, and the Examiner has not made a written description rejection. Further, in as much as Appellant is arguing that the Examiner has not considered the level of skill in the art, that is only one of the Wands factors and as discussed above the Examiner need not address all of the Wands factors. As such, Appellant’s arguments have not persuaded us of error in the Examiner’s enablement rejection and we sustain the Examiner’s rejection. Rejection under 35 U.S.C. § 112(b) The Examiner rejects claims 31 through 60 under 35 U.S.C. § 112(b) as being indefinite as: a) In independent claims 31 and 46, the term “BAD” is indefinite as “there is no definition on what exactly ‘BAD’ or ‘BAD-KR’ is or Appeal 2020-005094 Application 13/923,630 10 encompasses. While what BAD (Binary^aggregated^disclosed) stands for is spelled out, what it actually is [is] still not clear.” Final Act. 8. b) Claim 46 recites BAD KR is comprising a level of abstraction but the Specification does not provide an explanation of the level of detailed required. Final Act. 8. c) Claims 31 through 60, as they recite numerous acronyms and they are “indefinite as they are not terms of the art and it[’s] not clear what exactly they encompass and the instant specification fails to clearly define them.” Final Act. 9 (listing exemplary acronyms). Appellant argues the Examiner’s indefiniteness rejection is in error as: The term “BAD-KR” is defined in the claims themselves as Binary Aggregated Disclosed Knowledge Representation on Page 15, lines 6-11 of the current application it is clearly defined that “KR” stands for Knowledge Representation and the prefixes “o/BAD/BED/BID” are defined as ““original, o”, “binary^aggregated^disclosed, BAD”, “binary ^independent^disclosed, BID” “binary^elementary^disclosed, BED”, whereby the different prefixes stands for different “level of abstractions” or different “grains of mental resolution”. Thus, all the terms of “a/BAD/BED/BID” are not only defined, but also the single terms are defined in several places in the application. Further, the mathematical symbol “^” is well known as the “and operator”. Appeal Br. 18. Further, Appellant argues that: Furthermore, to one of ordinary skill in the art it is clear what a knowledge representation means. Thus, it is clear that “BAD- KR” means the Knowledge Representation (“KR”) for the description of the technical teaching/claimed invention to be analyzed (“TT.0”) using the “level of Abstraction” of Binary Aggregated Disclosed (“BAD”) inventive concepts. Mutatis mutantis BED-KR and BID-KR respectively means the Appeal 2020-005094 Application 13/923,630 11 knowledge representation (“KR”) for the description of the technical teaching/claimed invention to be analyzed (“TT.0”) using the “level of abstraction” of Binary Elementary Disclosed (“BED”) and Binary Independent Disclosed (“BID”) inventive concepts respectively. Appeal Br. 19. Appellant’s arguments have not persuaded us of error in the Examiner’s indefiniteness rejection. With respect to the independent claims 31 and 46, we note the Examiner’s rejection based upon the term “BAD” and “BAD-KR” is not because the acronyms are not spelled out but rather that they are not defined, i.e. there is no metric to determine whether something is a “Binary^aggregated^disclosed” or a “Binary Aggregated Disclosed Knowledge Representation.” Ans. 9. We concur with the Examiner. Appellant has not shown the Specification provides clear definition or metrics upon which to assess the scope of these terms. Further, Appellant’s argument that it “is clear what a knowledge representation means” is mere attorney argument and also provides no metric. With respect to the other acronyms, Appellant asserts that “if an acronym isn’t spelled out in the claim, it doesn’t automatically render the claim indefinite.” Appeal Br. 19 (citing In re Paulsen, 30 F.3d 1475, 1480, (Fed. Cir. 1994). We are not persuaded of error by this argument as, the Examiner’s rejection is not because the acronyms are not spelled out but rather that they are not defined such that the scope of the terms can be ascertained. Ans. 9–11. Further, Appellant’s argument that an index of the terms was submitted by Appellant’s earlier in prosecution has not persuaded us of error. Final Act. 9, Reply Br. 4 (citing response filed January 22, 2014). These new arguments could have been presented in the Appeal Brief, Appeal 2020-005094 Application 13/923,630 12 are not prompted by the Examiner’s Answer, and are not based on any new arguments or grounds of rejection in the Examiner’s Answer. As a result, Appellant has waived these untimely arguments because Appellant has not shown good cause for belatedly raising the new arguments. See 37 C.F.R. § 41.41(b)(2) (2019). With respect to independent claim 46, which recites “the Binary Aggregated Disclosed knowledge representation comprising a level of abstraction describing the technical teaching.” As discussed above with respect to the enablement rejection, the Specification discusses the “level of abstraction”/“grain of mental resolution” as effect of the disaggregation and Appellant has not shown the Specification provides definition or metric by which to quantify a level of abstraction. Accordingly, the scope of this term is indefinite. We additionally note that independent claim 31 recites the limitation “automatically updating the data structure (“PTRct-DS”) in the memory with the appended set of justifications according to (d).4 and the generated set of Binary Elementary Disclosed inventive concepts of the technical teaching (“TT.O”) according to (d).5” which is indefinite as the claim does not recite steps “(d).4” or “(d).5.” For all of the above reasons, Appellant’s arguments have not persuaded us of error in the Examiner’s indefiniteness rejection. Rejection under 35 U.S.C. § 103 Appellant presents several arguments directed to the Examiner’s obviousness rejection of claims 31 through 60. Appeal Br. 21–23. We do not reach these arguments because as discussed above claims 31 through 60 Appeal 2020-005094 Application 13/923,630 13 are indefinite. As such, to consider the Examiner’s rejection would require speculation as to the scope of the claim. Our reviewing court has said that it is wrong to rely upon speculative assumptions as to the meaning of claims when considering a prior-art rejection. In re Steele, 305 F.2d 859, 863 (CCPA 1962). Accordingly, we do not sustain the Examiner’s rejection of claims 31 through 60 under 35 U.S.C. § 103 as to ascertain the scope of the claim would require speculation. CONCLUSION In summary: Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 31–60 112, (a) Enablement 31–60 31–60 112, (b) Indefiniteness 31–60 31–60 103 Szygenda, MPEP 31–60 Overall Outcome 31–60 Because we have affirmed at least one ground of rejection with respect to each claim on appeal, the Examiner’s decision is affirmed. See 37 C.F.R. § 41.50(a)(1). 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). See 37 C.F.R. § 41.50(f). AFFIRMED